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
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Another Reason to Choose Reexamination
| August 28, 2012
Reexamination practitioners are fond of listing the advantages that reexamination offers an accused infringer, as compared to defending an infringement action in District Court. Last month the list grew a little longer, at least for the handful of cases in which the enablement of an allegedly anticipatory reference is an issue.
It has long been recognized that an examiner in routine examination or in a reexamination may rely on a prior art patent, based on its disclosure alone – there is no need for the examiner to establish that the disclosure of the patent is enabling, because of a rebuttable presumption that the patent is enabled. This presumption applies to both the claimed and the unclaimed subject matter in the prior art patent. This principle is, of course, different from infringement actions and ITC investigations, where the initial burden is on the accused infringer to show that an allegedly anticipatory prior art patent is enabled.
Attack on Two Crocs Shoe Patents, Among the Reexamination Requests Filed Week of August 20, 2012
| August 27, 2012
Earlier this year, Crocs sued CVS Caremark for infringement of two patents claiming certain shoe designs. CVS has now requested reexamination of those patents (see inter partes Request Nos. (6) & (12)).
Motorola Mobility, now owned by Google, has requested reexamination of two Intellectual Ventures patents; this is in addition to the requests Motorola filed last week against two other IV patents. (see inter partes Request Nos. (5) & (7)). The four IV patents are the subject of an infringement action between the companies, now pending in Delaware.
Research In Motion has requested reexamination of two MobileMedia Ideas patents related to speech signal transmission (see ex parte Request Nos. (1) & (9)). MobileMedia is suing RIM for infringement of the patents in the Northern District of Texas. One of the patents was originally owned by Sony and the other, by Nokia.
The increase in the number of requests filed against medical device patents continued last week, with requests being filed against Bard, Delpor, and Zoll Medical patents.
Truth is not always a Complete Defense: an Update on the Press release Case
| August 22, 2012
Last week we reported on TASER International v. Stinger Systems et al., where Taser has accused its rival Stinger and its lawyer of various acts of unfair competition, including violation of Lanham Act, all centered around a series of press releases allegedly designed to mislead the public and thereby injure TASER. On Monday Judge Miranda Du denied a motion by Stinger’s lawyer for summary determination, giving us a better glimpse into the dispute.
The motion essentially argued that the defendants were entitled to judgment because the statements in the press releases were accurate. Judge Du wasn’t buying. First, she cited the basic case law that the requirement of “falsity within the meaning of the Lanham Act, a plaintiff may show that the statement was literally false, either on its face or by necessary implication, or that the statement was literally true but likely to mislead or confuse consumers.” (Emphasis added; citation omitted). Thus, the “literal truth of statements contained in the releases does not defeat the Lanham Act claim.”
Motorola Mobility Seeks Reexamination of Two Intellectual Ventures Portable Computer Patents, Week of August 13, 2012
| August 20, 2012
On Thursday Motorola Mobility requested reexamination of U.S. Patent Nos. 7,120,462 and 7,409,450 owned by Intellectual Ventures, that concern the transfer of files between computers, often for game devices (see inter partes Request Nos. (3) & (4)). IV has sued Motorola for infringing the two patents, plus four other patents.
Two paper-filed reexamination requests came to light last week. They challenge U.S. Patent Nos. 6,465,961 and 6,634,770 (see inter partes Request Nos. (17) & (18)) owned by the CAO Group and claiming semiconductor lighting systems. The requests were filed several weeks ago by GE Lighting who has been sued by CAO for infringement of the two patents. Reexamination requests filed by paper, rather than electronically, often do not appear on the Patent Office files for many days.
Some Courts Stay Infringement Actions even where Parties are Direct Competitors
| August 16, 2012
All trial judges apply the customary three-part test when ruling on a defendant’s motion to stay a patent infringement action pending completion of a reexamination proceeding at the Patent Office, specifically a balance of factors: (1) the stage of the litigation, (2) the likelihood that reexamination would simplify the issues for trial, and (3) whether the patent owner would be unduly prejudiced by the requested stay. Judges have been most inclined to deny a stay where the parties are direct competitors and delay of the infringement is likely to damage the patentee in a way that cannot be later cured by an award of damages, i.e., where there is prejudice to the patentee from potential loss of market share.
Lately, however, a number of trial judges have concluded that a stay is justified even though the parties directly compete. In DuPont v. MacDermid, the patent owner opposed a stay motion, asserting, inter alia, that it and the accused infringer competed directly against one another in the market for the patented product and that it would lose market share during a stay, for which it could not later be adequately compensated. 2102 U.S. Dist. LEXIS 101678 (July 23, 2012). Magistrate Judge Tonianne Bongiovanni acknowledged the patent owner’s concern regarding “eroding … market share and … substantial loss of profits and goodwill.” But she determined that such loss could be compensated in the event that the patent owner ultimately prevailed on the merits. Her determination on this point seems to have been strongly affected by the fact that the patent owner had not sought a preliminary injunction – if loss of market were truly irreparable, why hadn’t the patent owner tried to stop as soon as legally possible?
Challenge to Suffolk Technologies “Snippet” Internet Search Patent Among the Reexamination Requests Filed Week of August 3, 2012
| August 13, 2012
Suffolk Technologies sued AOL and Google in June for infringement of U.S. Patent No. 6,334,132 that claims an apparatus for summarizing “data sets” for use in searching the Internet. On Friday, an undisclosed party requested reexamination of the ‘132 patent (see ex parte Request No. (9)). Companies such as AOL and Google typically choose inter partes reexamination, but only ex parte reexamination was available against the ‘132 patent because of its early filing date. The ‘132 patent and a second patent in Suffolk’s case, U.S. Patent No. 6,081,835, were originally assigned to British Telecommunication but later transferred to Suffolk. A request against the ‘835 patent is expected soon.
Sony Computer Entertainment requested reexamination of a Walker Digital patent concerning an on-line tournament system (see inter partes Request No. (2)). . Walker Digital has sued Sony and host of other software companies for infringing the patent.
CAN A PRESS RELEASE BE A TORTIOUS ACT?
| August 8, 2012
Press releases are a common feature of patent disputes, particularly patent disputes involving reexamination proceedings at the Patent Office. An accused infringer announces that its reexamination request has been granted, that the patent claims have been rejected, or that a rejection has been affirmed by the PTO Board. Or patent owner announces that its claims have survived reexamination. Often the author of the press release tells its story in “a favorable light.” Almost always, a party’s goal in issuing a release is to convince the public that it will ultimately prevail.
But can a press release, by itself, expose its author to potential civil liability? Yes it can. A story of such potential liability is now playing out in Taser International v. Stinger, (Case No. 2:09-cv-289 (D. Nev.)). Taser, the developer of the TASER weapon for use by law enforcement, originally sued Stinger Systems for selling devices that infringed a number of Taser patents. The infringement action lasted three years and ended with a judgment that Stinger infringed one of the patents and an injunction prohibiting future infringement of that patent.
Challenge to Immersion Touchpad Patent Among the Reexamination Requests Filed Week of July 30, 2012
| August 6, 2012
Immersion Corporation is currently suing HTC both in District Court in Delaware and at the U.S. ITC for infringement of six patents that claim “haptic feedback for touchpads.” The accused products are cellular telephones and smart phones. A third party, perhaps HTC, has now requested ex parte reexamination of one of those patents, U.S. Patent No. 7,969,288 (see ex parte Request No. (2)). Requests for the other five patents are likely to follow. Reexamination requests for patents of this type of technology are normally inter partes, especially with a requester such as HTC.
Patent disputes have a way of escalating dramatically if a good deal of money is involved, even where the technology is comparatively simple. A good example is the fight going on between Brass Smith and Advanced Design Manufacturing over U.S. Patent No. 6,588,863 which claims sneeze guards. Brass Smith sued ADM for infringement of the ‘863 patent, and two ex parte reexamination requests were subsequently filed against the patent. Most of the ‘863 claims were rejected, so Brass Smith added 125 more. And on Friday, an unidentified third party, presumably ADM, filed a 500 page reexamination against the original claims and the 125 new claims (see ex parte Request No. (8)).
