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
Judge Robinson Distinguishes Between Reexamination and Reissue
| September 24, 2012
Judge Sue Robinson of Delaware ruled last week that patentees Senju and Kyorin and their licensee Allergan were precluded from suing Apotex a second time for infringement of a single patent. The dispute between the parties began several years ago when the patentees filed a first action against Apotex for infringement of claims 1-3, 6-7 and 9 of U.S. Patent No. 6,333,045 that claimed compositions comprising gatifloxacin and methods of treating eye disorders with those compositions.
Apotex ultimately prevailed in that first litigation, when Judge Robinson ruled that the asserted claims of the ‘045 patent were invalid over certain prior art references and the CAFC later affirmed her judgment of invalidity. During the pendency of that first litigation, the patentees requested and pursued a reexamination of the ‘045 patent. (They did so, Judge Robinson notes with apparent annoyance, “without the court’s knowledge” or informing Apotex). In that reexamination, the PTO rejected the original ‘045 claims as obvious over the prior art, and the patentees amended their claims to distinguish over that art. Ultimately, the PTO issued a reexamination certificate cancelling claims 1-3 and 8-11 and allowing amended claim 6 and added claims 12-16. The surviving claims were narrower in scope than the original claims.
Old Era of Post-Grant Examination Ended and New Era Began Sunday Morning
| September 17, 2012
IP360 is reporting this morning that the first petition under the new post-grant examination provisions of the America Invents Act was filed Sunday – a petition for post-grant review filed by SAP challenging the validity of U.S. Patent No. 6,553,350 owned by Versata.
The petition includes an argument that certain claims are invalid as anticipated by a printed publication – an argument available under the old law. But the petition also includes a number of assertions that are possible only under the new provisions: that claims are invalid because they recite patent-ineligible subject matter, they lack written description support in the specification, they are indefinite, and they were known in the United States. There is even an argument that the claims invalid over “admitted prior art” based on the patentee’s infringement allegations.
LG Challenge to Four Lighting Patents among the Reexamination Requests Filed Week of September 4, 2012
| September 10, 2012
LG has frequently resorted to reexamination as part of its litigation strategy to defend against patent infringement allegations. So it was no surprise last week when LG requested reexamination of four patents related to LED and/or LCD technology (see inter partes Request Nos. (2) & (3) and ex parte Request Nos. (6) & (13)). The patents are owned by Industrial Technology Research Institute that has sued LG in New Jersey for infringement of the patents.
Research In Motion, also a frequent requester, sought reexamination of three wireless communications patents owned by Innovative Sonic (see inter partes Request Nos. (14), ((20) & (24)). The two companies are involved in an infringement action in Dallas.
CBS Interactive requested reexamination of a Microsoft information transmission patent that issued in July (see inter partes Request No. (8)).
Finally, our friends at Troll Busters were busy attacking two adenovirus patents (see ex parte Request Nos. (7) & ((8)).
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Nintendo Attack on Video Game Patents, Among the Reexamination Requests Filed Week of August 27, 2012
| September 6, 2012
Nintendo requested reexamination of two patents that claim handheld pointing systems for use with video games and that are owned by ThinkOptics (see inter partes Request Nos. (12) & (14). The companies are involved in an infringement action in the Easter District of Texas.
Apple requested reexamination of a caller-ID patent owned by ClassCo (see inter partes Request No. (7)). Classco has sued Apple for infringement in Illinois.
And Motorola Mobility has requests against three patents, two owned by Bandspeed and one owned by Effingo Wireless (see inter partes Request Nos. ((5), (6) & (9)).
