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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Recent Requests
PTO Statistics
University of Michigan Bone Tissue Patent among those Challenged Week of November 5, 2012
| November 13, 2012
Last Friday St. Jude Medical requested inter partes review of a University of Michigan patent claiming a “calcification-resistant” material for prosthetics (see inter partes review Request No. (2)). The U of M has already sued St. Jude for infringement of the patent.
The following inter partes review requests were filed:
(1) IPR2013-00038 (electronically filed) – U.S. Patent No. 7,956,978 entitled LIQUID-CRYSTAL DISPLAY DEVICE HAVING A PARTICULAR CONDUCTIVE LAYER and owned by Semiconductor Energy Laboratory Co., Ltd. Filed November 7, 2012 by ChiMei Innolux Corp. The ‘978 patent is currently the subject of a litigation styled Semiconductor Energy Laboratory Co., Ltd. v. Chimei Innolux Corp., et al. (Case No. SACV12-0021-JST (C.D. Cal.)).
(2) IPR2013-00041 (electronically filed) – U.S. Patent No. 5,746,775 entitled METHOD OF MAKING CALCIFICATION-RESISTANT BIOPROSTHETIC TISSUE and owned by University of Michigan. Filed November 9, 2012 by St. Jude Medical, Inc. The ‘775 patent is currently the subject of a litigation styled University of Michigan v. St. Jude Medical, Inc. (Case No. 2:12-CU-12508-AC-LJM (E.D. Mich.)).
The following ex parte requests were filed:
(1) 90/012,716 (electronically filed) – U.S. Patent No. 6,436,135 entitled PROSTHETIC VASCULAR GRAFT and owned by Bard Peripheral Vascular. Filed November 5, 2012 by W.L. Gore. The ‘135 patent is the subject of infringement actions entitled Bard Peripheral Vascular v. W.L. Gore (Case No. 03-cv-597 (D. Ariz.); Bard Peripheral Vascular v. Atrium Medical (Case No. 2:10-cv-1694 (D. Ariz.))).
(2) 90/012,717 (electronically filed) – U.S. Patent No. RE 39,998 (reissue of U.S. Patent No. 6,399,176) entitled COMPOSITE WEAR COMPONENT and owned by Magotteaux International S.A. Filed November 8, 2012.
(3) 90/012,718 (electronically filed) – U.S. Patent No. 8,253,598 entitled LIGHT-EMITTING KEYBOARD and owned by Darfon Electronics Corp. Filed November 9, 2012.
Direct Competition between Parties does not Preclude Reexamination Stay
| November 9, 2012
At the risk of being boring, we continue to report trial court decisions on motions to stay infringement actions pending completion of parallel reexamination. We do so because of the significant consequence of such decisions: specifically, the transfer of a dispute from the court to the Patent Office. In most stay decisions, the considerations of “the stage of the litigation” and “possible simplification” favor a stay. It is the third consideration – potential prejudice to the patentee from a stay – that often weighs against the grant of such motions. In particular, trial judges have been quite reluctant to stay an action where the parties are direct competitors in the market for the patented product.
Of late, however, even this factor of direct competition between the parties often does not defeat reexamination stay motions. For instance, in Phil-Insul Corp. v. Airlite Plastics, 2012 U.S. Dist. LEXIS 159077 (D. Neb.), the patentee opposed a stay because it competed directly with the accused infringer who sought the stay. Magistrate Judge F.A. Gossett acknowledged the patentee’s argument, but was not persuaded.
First Plaintiff has itself delayed litigation with Defendants. Plaintiff waited over one and a half years since [an earlier reexamination], before commencing this infringement action. Plaintiff also chose not to include Defendants in the Reward Wall action, which was filed over a year before this suit. Second, Plaintiff decided not to seek a preliminary injunction against Defendants in this action, which tends to suggest that Plaintiff would not be unduly prejudiced by staying this litigation. Third, Plaintiff admits that it offered Defendants a license to the Patent before filing this suit.
(Emphasis added).
To be sure, there are many judges who remain reluctant to stay infringement actions. Still, a body of case law is developing rapidly, justifying reexamination stays. In particular, many judges now closely scrutinize the bona fides of a patentee’s allegations of prejudice.
Can a Patentee Request Reexamination for an Improper Purpose?
| November 8, 2012
Reexamination of a patent is normally sought by a prospective infringer who wishes to invalidate the patent or to achieve one of the numerous collateral benefits of reexamination. Occasionally, though, it is the patentee who requests reexamination. Is it possible for a patentee to make such a request for an “improper purpose?” If so, does that improper purpose render the patent unenforceable?
The issue arose Tuesday in Exelis v. Cellco, 2012 U.S. Dist, LEXIS 158842 (D. Del.)). The patent-in-suit had been the subject of an initial patent infringement action that settled, but not before Judge Sleet had construed the claims. After that initial case was dismissed, the patentee Exelis requested reexamination of its claims. Over the course of the reexamination, Exelis amended certain claims, added new claims, and presented arguments distinguishing its claims from the prior art. The reexamination examiner at first rejected the claims, but later allowed them. After the conclusion of the reexamination, Exelis filed a second infringement action, the current case in which Cellco is of accused of infringement.
Judge Coffman Denies Preliminary Injunction Motion Because of Pending Reexaminations
| November 5, 2012
One of the collateral reasons for an accused infringer to pursue reexamination – to rebut a preliminary injunction motion – was on display last week in Transtex Composite v. Laydon Composite, 2012 U.S. Dist. LEXIS 155476 (W.D. Ken.).
There, the patentee, Plaintiff Transtex, moved for a preliminary injunction asserting that Defendant Laydon’s sales of infringing products caused it irreparable harm. Judge Jennifer Coffman applied the customary four-part test: the plaintiff’s likelihood of success, the harm to the plaintiff, the harm to the defendant, and the public interest. She found that the accused products infringed both of the asserted patents. She also found that the harm to the plaintiff from a denial of preliminary relief greatly outweighed the harm to the defendant from a grant of preliminary relief. And she found that the public interest would not be affected.
The decisive consideration for Judge Coffman’s analysis, however, was the fact the Patent Office was conducting reexaminations of both patents-in-suit and had rejected the claims of one as obvious. The Judge acknowledged that the rejection was non-final and that Transtex could still traverse and appeal the rejection, but she concluded that “fact that the PTO has rejected the entirety of the claims Transtex’s patent raises a substantial question as to the patent’s validity sufficient to justify the denial of a preliminary injunction.” (Emphasis added). She also acknowledged that the Patent Office had not yet determined whether to reject the claims of the second patent. Still, the PTO’s “grounds for rejecting the claims in the [first patent] would apply equally well to the claims in [the second patent], particularly those [claims] at issue n this case.”
British Telecommunications’ Internet Patent among those Challenged Week of October 29, 2012
| November 5, 2012
This past June, Suffolk Technologies sued AOL and Google in the Eastern District of Virginia for infringement of two Internet patents, U.S. Patent Nos. 6,334,132 and 6,081,835. Last Tuesday an anonymous party requested reexamination of the ‘835 patent (see ex parte Request No. (4)); reexamination has already been granted against the ‘132 patent. Patent Office assignment records show that the patents were originally owned by British Telecommunications and have passed through a number of hands over the past year to reach Suffolk. AOL and Google have moved to dismiss the infringement action, asserting that BT, not Suffolk, remains the real owner of the patents and that the Suffolk therefore lacks standing to sue. AOL and Google characterize the assignments are as “nothing more than a ‘hunting license.’”
Research in Motion requested inter partes review of a MobileMedia Ideas mobile device patent (see inter partes review Request No. (2)). The companies are involved in an infringement action in the Northern District of Texas.
Apple Victorious over Affinity Labs of Texas’ Portable Audio Player Patent
| November 1, 2012
Affinity Labs of Texas sued Apple in 2009, asserting that Apple’s iPods infringed a series of patents, among them U.S. Patent No. 7,486,926 that claims “content delivery systems.” Apple replied to the infringement allegations, as it frequently does, by requesting reexamination of each of the patents-in-suit. This morning the PTO’s Patent Trial and Appeal Board ruled for Apple, affirming the reexamination examiner’s final rejection of the ‘926 claims as being obvious over certain prior art references.
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