Featured Posts
- Facebook Loses Reexaminations of Pragmatus’ Patents
- How is Reexamination Treating Round Rock Research?
- Reexamination has not Saved Apple against MobileMedia Patents, So Far
- What is an “Involved Application” in IPR Practice?
- Apple Victorious over Affinity Labs of Texas’ Portable Audio Player Patent
- Think IP Strategy Offers 2011 News Almanac
- An Update on Oracle’s Infringement Case against Google
- PTO Requests Public Comment on Proposed Rules for AIA Post-Issuance Proceedings
- Microsoft-i4i, Oracle-Google & VirnetX-Apple-Cisco Updates
- Oracle Patent to Emerge from Reexamination
- VirnetX again Sues for Infringement, and again Faces Reexaminations
- How Strong are Google’s Requests for Reexamination of the Lodsys Patents?
- PTO Board Sides with NVIDIA on Two Rambus “Barth I” Patents
- Oracle ‘520 Moves toward Confirmation in Reexamination
- Google Gets Mixed Result against Oracle’s Seventh Patent
- Did Google Request Reexamination of Lodsys Patents?
- Two Updates
- Oracle v. Google Android® Update
- Rambus Wins Limited Exclusion Order at ITC against NVIDIA, despite Pending Reexaminations
- 最初が肝心：不備のない再審査請求書を作成するために
- That’s My Patent You’re Reexamining…
- “Why Wait for Oppositions?” by Scott Daniels, 47 IDEA 343 (Law Review of Franklin Pierce Law School)
- The Basics
Noteworthy Links
- "The Interplay between Reexaminations, Preliminary Injunctions and Stays of Litigation" - by Dennis Crouch at PATENTLYO.COM
Favorite Patent Blogs
- All Things Pros
- CAFC Alert
- FDA Law Blog
- IPWatchdog
- Patent Docs
- Patently-O
- PLI Patent Law Practice Center
- Think IP Strategy
- US Patent Post-Grant Opposition
Recent Requests
PTO Statistics
Attack on CareFusion Medication-Delivery Patent Among the Reexamination Requests Filed Week of July 23, 2012
| July 30, 2012
An as-yet unknown party has requested reexamination of CareFusion 303’s U.S. Patent No. 7,171,277 which claims system for controlling the delivery of medications to a patient (see inter partes Request No. (3)). CareFusion is pursuing separate actions against Hospira and Braun Medical for infringement of the ‘277 patent. CareFusion has also sued for infringement of a second related patent, U.S. Patent No. 7,835,927 which is the subject of an earlier reexamination, already on appeal to the Patent Office Board.
There were also requests filed against two Ronald Katz telephone-interface patents (see ex parte Request Nos. (2) & (5)).
Petitions to Revive a Terminated Reexamination Proceeding
| July 26, 2012
Petitions to revive a terminated reexamination give the patent owner a procedural safeguard if it accidentally misses a due date.
While it seems that such petitions are more frequently filed in ex parte than inter partes proceedings, petitions to revive are commonly granted in both types of proceedings.
Usually a patent owner files a petition to revive, asserting an unintentional delay under 37 CFR 1.137(b). The patent owner must also file the petition pursuant to 37 CFR 1.550(e) (for ex parte reexamination) or 37 CFR 1.958 (for inter partes reexamination).
Petitions to revive are relatively simple and straightforward. To file a successful petition, a patent owner must (1) file the late response along with the petition, (2) pay the petition fee as set forth in 37 CFR 1.17(m) ($810 for small entities; $1540 for non-small entities), and (3) include a proper statement under 37 CFR 1.137(b) that the “entire delay” from the response due date to the filing date of the petition was “unintentional.”
Stryker Attack on Six Hospital Bed Patents, among the Reexamination Requests Filed Week of July 16, 2012
| July 24, 2012
Last week featured two major reexamination filings. The first was a set of requests filed by Stryker against six hospital bed patents owned by Hill-Rom Services (see inter partes Request Nos. 14-15 and 17-19 and ex parte Request No. 4). Hill-Rom had sued Stryker for infringement of those patents in the Western District of Wisconsin.
The second major was a set of requests filed by Nest Labs Inc. against seven patents claiming thermostats and owned by Honeywell (see inter partes Requests Nos. (1) to (7)). The two companies are in an infringement action in Minnesota regarding those patents.
In both instances, we expect that the requester will now ask the trial judge for stay of the litigation pending completion of the reexamination.
Reexamination Requests against Univ. of Washington Medical Imaging Patent among those Filed Week of July 9, 2012
| July 16, 2012
NeuroGraphix has filed a series of infringement actions, including four last Wednesday, alleging infringement of U.S. Patent No. 5,560,360 that claims a medical imaging device and is owned by the University of Washington. NeuroGraphix is the exclusive licensee of the ‘360 patent. The accused infringers include the University of California, Philips, Tufts College, Boston University, Brigham and Women’s Hospital, Beth Israel Deaconess and the President and Fellows of Harvard College. Last Tuesday an anonymous party requested reexamination of the ‘360 patent (see ex parte Request No. (2)).
Cisco requested reexamination of a data redirection system patent owned by Linksmart Wireless Technology (see inter partes Request No. (1)). Linksmart has sued Cisco, T-Mobile and a number of others for infringement of the patent.
Extension of Time Petitions in Reexamination: More to Them than Some Might Think
| July 12, 2012
Petitions for extension of time are the most common type of petition filed in reexamination proceedings. Many patent practitioners, accustomed to the PTO’s practice of automatically granting extension of time requests in original prosecution, are sometimes surprised by extension of time practice in reexamination proceedings where it is not uncommon for a supervisory patent examiner to grant the petitioner only in-part or even to deny it.
We looked at a random pool of 150 petitions for extension of time, and found that 52% of the requests for extension of time were granted, 25% of requests, granted only in-part, and 23% denied. One petitioner requested a one-month extension of time due to an unexpected withdrawal of counsel. The examiner held that because the petitioner had been deprived of counsel for seven days, there was “sufficient cause” to afford the petitioner a corresponding seven day, not one-month, extension. Such partial grants of extensions might not seem problematic, but where a party assumes or worse, relies on a specific extension to file a timely response. While the median time-lag between a petition filing and decision is 6 days, it is sometimes two or three weeks before a decision is made. Thus, a petitioner could find itself in a tough spot if it presumed that its petition would be granted, only to find there weeks later that its petition is only granted-in-part.
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Update on Reexamination of LG Philips LCD Patents
| July 12, 2012
Yesterday we reported that the Patent Office Board of Appeals had affirmed a reexamination examiner’s rejection of certain claims LG Philips’ U.S. Patent No. 6,815,321, claiming a method for forming a thin film resistor for use in laptops, monitors and television sets. The Board has now affirmed eight distinct anticipation and obviousness rejections of a related LG patent claiming then film resistors, U.S. Patent No. 7,176,489.
LG Suffers Setback at PTO Board in LCD Dispute with Chi Mei
| July 11, 2012
The infringement action filed by LG Philips LCD against Chi Mei Optoelectronics and AU Optronics in Delaware is scheduled to go to trial at the beginning of November. LG sued Chi Mei and AU in 2006 for infringement of four LCD patents, including U.S. Patent No. 6,815,321, claiming a method for forming a thin film resistor. The resistors are used in laptops, monitors and television sets.
In the meantime, however, a reexamination against the ‘321 has been winding its way through the Patent Office. And this morning, the Patent Office Board of Appeals affirmed the examiner’s prior art rejections of certain ‘321 claims. Essentially, the Board found that the various declarations filed by LG attacking the rejections failed to address the relevant disclosure of the references or lacked corroboration.
Facebook Obtains Prosecution Bar against Pragmatus for Reexamination
| July 10, 2012
The issue of a prosecution bar – whether a lawyer who represents a patentee and who receives confidential information from an opposing party in an infringement action should be permitted to participate in a parallel reexamination – arose last week in the Northern District of California infringement action, Pragmatus v. Facebook (5:11-cv-2168).
Magistrate Judge Paul Grewal granted Facebook’s motion to prevent Pragmatus’ lawyers who had subscribed to the Protective Order in the case from also participating in parallel reexamination proceedings at the Patent Office. Magistrate Grewal first cited the CAFC’s decision in Deutsche Bank, 605 F.3d 1373 (Fed. Cir. 2010) to the effect that, in determining whether a particular lawyer may participate in a reexamination, a court must (1) consider the risk of inadvertent use in the reexamination of confidential information learned by the lawyer from the litigation, and then (2) balance the potential harm to the accused infringer from that risk of inadvertent use and the potential harm to the patentee from using separate counsel.
LG Reexamination Request against OSRAM LED Patent, one of those Filed Week of July 2, 2012
| July 9, 2012
Last June OSRAM GmbH filed an ITC complaint against LG Innotek and Samsung, accusing them of importing into the United States LEDs, LED monitors and LED television sets that infringe 12 patents, one of them being U.S. Patent No. 7,162,261 claiming a light-radiating semiconductor component with a luminescence conversion element. (Certain Light Emitting Diodes, 337-TA-785). The trial starts today, and the investigation has a February 11, 2013 deadline for completion. On Friday LG requested reexamination of the ‘261 patent (see inter partes Request No. (3)).
So far this is the first reexamination for any of the OSRAM patents in the case, but others might follow, especially for the ‘732, ‘500, 283 and ‘621 patents that concern technology similar to that of the ‘261 patent. If the PTO rejects the ‘261 claims in reexamination, and if the ITC finds that the ‘261 is valid and infringed, the ITC will again face the question of whether it should issue import relief based on a patent in reexamination.
Google Request for Reexamination of Walker Digital Patent, among those Filed Week of June 25, 2012
| July 2, 2012
Last year Walker Digital sued BMW, MapQuest, TomTom, Teleman, Blusens, NDrive, Samsung and Google for infringement of U.S. Patent No. 6,199,014 claiming a vehicle navigation system (see inter partes Request No. (2)). Last Tuesday Google requested reexamination of the ‘014 patent. A motion to stay the litigation is likely to follow.
Reexamination was requested for Ronald Katz’ U.S. Patent No. 5,898,762 claiming a telephone interface system (see ex parte Request No. (2)). Katz has sued Charter, Time Warner Cable, EarthLink, DIRECTV and U.S. Cellular for infringing the ‘762 patent.
Friday is the most popular day for filing reexamination requests, unless you are the Troll Buster Jeff Oster who filed two more requests on Saturday, these against two Life Technologies hybridization assay patents, on behalf of Bioresearch (see ex parte Request Nos. (9) & (10)).
