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
Amendment of Claims in Reexamination Precludes Award of Royalties for Pre-Issuance Infringement
| October 30, 2012
In certain circumstances, a patentee may recover for acts of infringement that occur before issuance of its patent. Section 154(d) states that a patentee may obtain a reasonable royalty for acts of infringement occurring between the patent’s publication date and its issuance date. The statute adds that a patentee may “obtain reasonable royalties for activities amounting to infringement of the [patent application’s claims] if: (1) the issued patent claims are substantially identical to the claims in the published application; and (2) [defendant] had actual notice of the published patent application.”
Read More/続きを読む
Challenge to Samsung White LED Patent, Among the After-Grant Filings Week of October 22, 2012
| October 29, 2012
Ex parte reexamination was requested for Samsung’s U.S. Patent No. 7,959,312 claiming white LEDs (see ex parte Request No. (2)). Samsung has sued OSRAM for infringing eight patents, including the ‘312 patent. Still, since the request is ex parte rather than inter partes, it is likely filed by a third party.
Vestcom requested inter partes review of Grandville Printing’s U.S. Patent No. 8,020,765 (see inter partes review Request No. (1)). This is Vestcom’s second run at the ‘765 patent – in August Vestcom requested inter partes reexamination, but the Patent Office denied the request, concluding that Vestcom had “failed to show that there is a reasonable likelihood that the requester would prevail,” essentially, the PTO found that Vestcom had failed to explain adequately why allowance of the claims in the original prosecution was wrong.
Read More/続きを読む
Monsanto’s Attack on Two Pioneer Hi-Bred Patents among the Post-Grant Challenges Filed Week of October 15, 2012
| October 22, 2012
Monsanto has requested inter partes review of two Pioneer Hi-Bred International patents claiming a method for increasing corn seed quality (see inter partes review Request Nos. (3) & (4)). The companies are involved in an infringement action over these patents in Iowa.
At the end of August ViiV Healthcare Co. and Vertex Pharmaceuticals Inc. sued Mylan in Delaware for infringing an aspartyl protease inhibitor patent. Ranbaxy has now requested inter partes review of the patent (see inter partes review Request No. (5)).
The feud between Intellectual Ventures and Xilinx deepened Friday when the latter requested inter partes review of an IV video projection patent (see inter partes review Request No. (9)).
Apotex Challenge to Alcon Ophthalmic Treatment Patent Among the Post-Grant Filings Week of October 8, 2012
| October 16, 2012
Apotex requested inter partes review of U.S. Patent No. 7,671,070, owned by Alcon Pharmaceuticals and claiming a composition for treating ophthalmic infections (see inter partes review No. (2)). The ‘070 patent has been the subject of infringement actions filed by Alcon against Apotex, Watson and Lupin.
Research in Motion filed a request against MobileMedia’s U.S. Patent No. 6,441,828 that claims an image display apparatus (see inter partes review No. (3)). The ‘828 patent was originally owned by Sony who assigned it to MobileMedia. MobileMedia has received quite a number of patents from Sony and Nokia, and then sought to enforce them.
Reexamination Stay Granted Despite Direct Competition between Parties
| October 9, 2012
Judge Josephine Staton Tucker’s recent decision, granting a reexamination stay motion in Inogen, Inc. v. Inova Labs, Inc. (2012 U.S. Dist. LEXIS 144598), strongly suggests a growing inclination among trial judges to stay infringement actions pending completion of reexamination proceedings at the Patent Office. Judge Tucker refers repeatedly to the “reasonable likelihood of success” now applied by the PTO to determine whether to grant either an inter partes reexamination or one of the new post-grant proceedings created by the AIA; she finds that this elevated standard at the PTO for institution of a proceeding, (as compared with the “substantial new question of patentability”), means that such proceedings, once begun, are more likely to result in amendment or cancelation of the patent claims.
Judge Tucker began her analysis of the accused infringer’s stay motion, by reciting the customary three-part test:
(1)whether discovery is complete and whether a trial date has been set; (2) whether a stay will simplify the issues in question and trial of the case; and (3) whether a stay would unduly prejudice or present a clear tactical disadvantage to the non-moving party.
Kyocera Attack on Two Scalable Display Patents, among the Post-Grant Requests Filed Week of October 1, 2012
| October 9, 2012
Last week Kyocera took advantage of the new post-grant provisions of the AIA by requesting inter partes review of two SoftView patents claiming systems for creating scalable displays of Internet content on mobile devices (see inter partes review Request Nos. (1) & (4). SoftView has sued Kyocera and Apple, among others, in Delaware for infringement of the patents. In May 2011, Apple initiated an inter partes reexamination of one of the two patents, U.S. Patent No. 7,831,926; though a non-final rejection is pending in that reexamination, the patentability of a majority of SoftView’s ‘926 claims has been confirmed. The PTO is likely to consider merging the new inter partes review with the earlier inter partes reexamination. An inter partes review request of a third SoftView patent in the litigation, U.S. Patent No. 7,028,257, might be in the offing.
Inter partes review was also requested by Micron of three semiconductor patents owned by the University of Illinois. The University and the company are involved in an infringement action in Illinois.
What to Know about Petitions for an Interview in Patent Reexamination
| October 3, 2012
First, ex parte reexamination. Interviews between a patent owner and the examiner on the merits of the proceeding are permitted. After an interview, a patent owner must provide an interview summary as required by 37 CFR 1.560(b). Under that provision, a patent owner must complete and separately file a written statement on the substance of the interview (and not simply an interview agenda). This statement must be filed within one month from the date of the interview.
Failing to file a timely statement will result in a termination of the reexamination (37 CFR 1.550(d)) (see Star Scientific, 90/009,372 & 90/009,375). A patent owner can file a petition to revive the reexamination proceedings for unavoidable or unintentional delay, but this is not optimal because such petitions are sometimes denied and the petitioner might again fail to comply with the procedural requirements of the petition for revival.
What about inter partes reexamination? Interviews are not permitted in inter partes proceeding (37 CFR 1.955). Even so, a patent owner can file a petition under 37 CFR 1.183 to waive or suspend 37 CFR 1.955 to permit an interview in the reexamination. Most often, a patent owner files the petition after a requester has withdrawn from the inter partes proceeding (typically when the parties have settled in a parallel litigation). When a requester has not officially withdrawn from the proceedings, it appears that the petition is rarely granted due to concerns over the substantive rights of the requester.
Intellectual Ventures Attack on Xilinx Patents among the Filings in the Two Weeks September 16-28, 2012
| October 1, 2012
The feud between Intellectual Ventures and Xilinx heated up last month when IV requested inter partes review of four Xilinx patents (see inter partes review Request Nos. (6) to (8) and (10)). Xilinx sued IV for declaratory judgment of invalidity and non-infringement last year, and has since requested reexamination of a number of IV patents.
Microsoft requested inter partes review of U.S. Patent No. 6,757,717owned by Proxyconn claiming a data access system (see inter partes review Request No. (11)). The two companies are involved in litigation in the Central District of California.
