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
A Pointer from Reexamination Practice
| November 29, 2012
Not every grievance against an examiner in reexamination can be resolved through appeal to the Board. In fact, the Board’s appellate jurisdiction is limited to “final rejection[s] of any claim by the primary examiner … .” 35 U.S.C. § 134(b). Stated differently, a patent owner “may appeal … with respect to any decision adverse to the patentability of any original or proposed amended or new claim of the patent.” 35 U.S.C. § 315(a)(1).
In Weatherford Int’l v. Tesco, 95/000,418 decided yesterday, the patent owner found that it could not contest, by appeal to the Board, the examiner’s refusal during the prosecution of the reexamination to enter a claim amendment. The Board explained that the patent owner’s “recourse was to seek review of the Examiner’s decision via petition to the Director, not appeal to the Board.”
Nonetheless, the case ended happily for the patent owner – the Board reversed the examiner’s prior art rejection of the claims, based on the patent owner’s technical arguments and a § 131 Declaration removing one of the prior art references. Regarding the Declaration, the Board concluded that although “the Examiner takes the view that the evidence is insufficient [to show an earlier reduction of the claimed invention to practice], it is not apparent what claim features the Examiner considers absent or unaccounted for in connection with the Schneider Declaration and evidence submitted therewith.”
Reexaminations Concurrent with IPR, Normally Not Stayed
| November 27, 2012
When the Patent Office institutes an inter partes review of a patent, should the APJs stay any concurrent proceedings, such as a co-pending reexamination of the same patent? In CBS Interactive v. Helferich Patent Licensing, IPR2013-00033, APJ Joni Chang answered that ordinarily, reexaminations would not be stayed – “because in the absence of good cause, reexaminations are conducted with special dispatch.”
The answer, however, was different because of the specific facts of in the CBS case. APJ Chang first acknowledged that there was no overlap of claims between the reexamination and the IPR – only the patent’s independent claims were challenged in the reexamination and only its dependent claims, in the IPR. On the other hand, there was substantial overlap between the two proceedings: the same grounds for unpatentability were asserted, the same prior art was applied, and four of the five petitioners in the IPR were also requesters in the reexamination.
Three Belden Data Cable Patents, Targets of Inter Partes Review Requests in Week of November 19, 2012
| November 26, 2012
Last Wednesday Belden filed separate complaints for patent infringement against Hitachi Cable and Nexans, accusing them of infringing four patents claiming cables for transmitting data. In apparent anticipation of those suits, Nexans requested inter partes review of three of the Belden patents (see inter partes review Request Nos. (3), (4) & (5)). A request against the fourth patent might be on the way.
Google requested reexamination of an information filter patent owned by I/P Engine (see ex parte Request No, (1)). The companies are involved in an infringement action in the Eastern District of Virginia, where a jury has already determined that I/P’s patent is valid and infringed. A post-trial motion by Google asserting that the patent is obvious is pending before the trial judge.
APJs Need to Clarify the Pro Hac Vice Standard
| November 26, 2012
The APJs are taking very seriously motions by an attorney for pro hac vice permission to practice in an IPR or a CBM, as well the APJs should. Such an attorney is required to submit a declaration answering specific questions regarding his or her legal experience and character. Among those questions is whether the attorney has ever been denied permission to practice before any court or before any administrative agency.
Does such “denial” include instances where an attorney has failed to pass a bar exam or failed to pass the PTO’s patent agents’ exam? One would think not. But a very capable acquaintance of mine, who was required to file a declaration for pro hac vice permission and who had failed the patent agents’ exam, called the Patent Office to be sure. The answer was essentially “I-don’t-know-but-you-should-mention-that-failure-in-your-declaration.” And so my acquaintance complied with the advice and included the failure in the declaration.
Many of our colleagues, including some of the most capable, have at one time or another failed to pass an admissions test, and such failure in no way calls into question their ability or character. The APJs should therefore clarify their declaration requirements so that such failures need not become part of the public record in IPR and CBM proceedings.
A First Glimpse on the Scope of Discovery in the New Post-Issuance PTO Proceedings
| November 20, 2012
A major concern for practitioners contemplating the new post-issuance proceedings at the Patent Office has been the scope of discovery that the APJs would permit the parties. Would it be as expansive and expensive as discovery in the District Courts? In its various publications, the Patent Office indicated that it would not allow open-ended discovery, but that it would enforce narrow discovery requests that pin-point documents and information having a clear relevance to the case-determinative issues.
Last Thursday in SAP America v. Versata, CBN2012-00001, the Patent Office gave a concrete example of what it meant. Summarizing a conference call among the parties, three APJs, including Lead Administrative Law Judge Michael Tierney, ruled on a series of discovery requests.
They granted requests for specific expert reports, deposition transcripts and a JMOL motion. On the other hand, they did not grant a request for the exhibits and appendices attached to these five documents; still, they suggested that the two parties discuss the relevance of these documents, and they invited the requesting party to renew its discovery requests if the parties could not agree. Finally, the APJs denied outright a broad request for “any documentation relating to the ‘R/3’ documentation.”
The message to the bar is to make specific discovery requests, explaining the relevance of the requested information to the case.
Apple will not Face Trial on MobileMedia Claims Amended in Reexamination
| November 19, 2012
MobileMedia Ideas’ infringement action against Apple was pared back a bit this week, when Judge Sue Robinson ruled that she would not permit certain claims of U.S. Patent No. 6,427,078 to go to trial. The ‘078 patent – that claims a camera-cell phone with “a means for transmitting image information processed by said processing unit to another location using a radio frequency channel” – emerged from reexamination in September. The Patent Office determined that the claims were valid over the prior art, but only after MobileMedia had made a substantial number of changes to claim 1 and therefore to claims 2 and 3 that depend on claim 1.
Citing these amendments, Apple asserted that it would be unfair for MobileMedia to assert claims 1-3 of the ‘078 patent at trial, and moved to exclude them. Judge Robinson granted Apple’s motion.
The Judge began her analysis by analogizing Apple’s “fairness” issue to an assertion of intervening rights where the patentee has amended its claims in reexamination or reissue.
Corning Files Eight Inter Partes Review Requests, Week of November 12, 2012
| November 19, 2012
Corning Inc. instantly became the new league leader in the number of inter partes review requests, when it filed against eight DSM IP Assets B.V. last week (see inter partes review Request Nos. (1) to (7)). Each DSM patent relates to curable coating compositions for optic fibers. It is not yet clear whether there is litigation between the companies, and as late as last year, Corning and DSM appeared to be partners, announcing a “more than 30 year supply relationship and track record [between the companies] in providing telecom operators with world-leading optical fiber products.”
An as yet undisclosed party requested reexamination of U.S. Patent No. 5,641,805 for ophthalmic compositions (see ex parte Request No. (2)). The ‘805 patent was the subject of a CAFC decision last year and is owned by Kyowa and Alcon.
APJs Refuse to Consider Redundant Proposed Grounds for Rejection in Covered Business Method Petition
| November 16, 2012
A panel of eight APJs, including Chief APJ Smith, ordered withdrawal of redundant grounds for rejection in the Petition filed in Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., CBM2012-00003.
Writing for panel, APJ Jameson Lee stated that “numerous redundant grounds would place a significant burden on the Patent Owner and the Board, and would cause unnecessary delays.” A Petitioner “has the burden of proof to establish that it is entitled to the requested relief” and must draw a “meaningful distinction between” its proposed rejections. “A petitioner who does not state the differences between a challenged claim and the prior art, and relies instead on the Patent Owner and the Board to determine those differences based on the rest of the submission in the petition risks having the corresponding ground of obviousness not included for trial for failing to adequately state a claim for relief.”
APJs Deny Pro Hac Vice Admission of Litigation Attorney to PTO Bar
| November 14, 2012
Because the new post-grant proceedings resemble infringement litigation in a number of ways, the PTO Rules provide for the pro hac vice admission of lawyers not licensed to practice before the Patent Office, i.e., litigators. 37 C.F.R § 42.10(c). Such admission to the “Patent Office Bar,” however, is by no means automatic, as was demonstrated last week by an order in SAP America v. Versata Development Group, CBM2012-00001.
There, the Patent Owner moved for pro hac vice admission of the lawyer who was its lead counsel in a parallel infringement action. The Patent Owner made the assertions normally sufficient to secure such admission in District Court cases: working on the instant case, bar admissions and absence of a criminal record. The Petitioner opposed the admission, stating that the participation of the Patent Owner’s litigation counsel at the PTO could effectively circumvent the restrictions of the underlying District Court’s protective order in the parallel infringement action. The Petitioner also noted findings by the District Court judge that there had already been violations of the protective order. The District Court judge’s comments were quoted by the APJ’s
Page Limits – the APJs Send a Message to the Bar
| November 13, 2012
Page limits, yes, page limits. A petition seeking to initiate an inter partes review of a patent is limited by the PTO Rules to 60 pages. Rule 42.24(a)(1)(i). Waiver of the rule is possible (Rule 42.24(a)(2)), but only after a showing that such a waiver would be in the interests of justice.
But the grant of a waiver, permitting a party to exceed the 60-page limit on petitions, is not automatic, as the parties discovered last Friday in Illumina v. Columbia University, IPR2012. There, the Petitioner requested waiver, stating essentially that it needed an extra 24 pages because there were so many reasons that the claims were invalid
