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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PTO Statistics
Litigation Stays Likely to be More Common with New AIA Post-Issuance Procedures
| December 28, 2012
Our expectation has been that trial judges would feel more comfortable staying infringement actions to allow for completion of the new AIA post-issuance PTO proceedings, than for completion of reexaminations. That expectation appears to be correct, if last week’s stay ruling in Semiconductor Energy Laboratory v. Chimei Innolux, et al. (8:12-cv-00021) is any indication of what is to come.
There, SEL sued Chimei Innolux and several other companies, including Acer, Viewsonic and VIZIO, in the Central District of California for infringement of six LCD patents. Chimei replied, inter alia, by filing petitions at the Patent Office for inter partes review of each of the six patents. Although the Patent Office has not yet ruled on those petitions, Chimei and the other accused infringers moved the trial court to stay the infringement action until completion of the expected IPR proceedings.
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BOS GmbH Files First Preliminary Response by Patentee in Inter Partes Review
| December 27, 2012
A Preliminary Response was filed yesterday (under 35 U.S.C. § 313) by the patent owner in Macauto USA v. BOS GmbH, IPR2012-00004. In September Macauto USA had requested inter partes review of BOS’s U.S. Patent No. 6,422,291 claiming a mechanism for car window shades. In yesterday’s Response, BOS asked that the Patent Office decline to institute the requested inter partes review.
BOS’s Preliminary Response will interest practitioners, first because it asks the APJs to consider the question of who is a “real party in interest.” More generally, the APJ’s analysis of BOS’s Response is likely to reveal how closely they will scrutinize IPR Requests to determine of whether there is “a reasonable likelihood” that the Petitioner would prevail in its challenge to at least one claim of the patent.
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Seventeen Inter Partes Review Requests Filed, Week of December 17, 2012
| December 26, 2012
That’s right, seventeen. Inter partes review, despite its high filing fee, certainly seems to be catching on, especially among the major electronics and Internet companies. Apple requested review of two information distribution patents owned by Achates Reference Publishing (see inter partes review Request Nos. (1) & (2)). The other requesters are EMC, Oracle, Sony/Axis, Motorola and Honeywell. Each of the patents is involved in an infringement action.
There were also a healthy number of ex parte requests filed, most notably an anonymous request filed against Apple’s U.S. Patent No. RE41,922 which is the subject of an ITC investigation pursued by Apple (see ex parte Request No (5)). The volume of filings appears to be returning to more normal levels, slowly recovering from the flood of requests filed the first two weeks of September to avoid the filing fee increases.
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Should I ask for Oral Argument in My Reexamination
| December 19, 2012
Once all the briefs have been filed, the Patent Owner has the option of requesting oral argument (with inter partes reexaminations, both the Patent Owner and the Requester have that option). So, should the Patent Owner ask for oral argument? Rule 41.73(a) reflects at least some ambivalence on the part of the Board:
An oral hearing should be requested only in those circumstances in which an appellant or a respondent considers such a hearing necessary or desirable for a proper presentation of the appeal. An appeal decided on the briefs without an oral hearing will receive the same consideration by the Board as an appeal decided after an oral hearing.
Thus, there should be some objective basis for believing that resolution of the issues on appeal would be facilitated by oral argument. Certainly, the Patent Owner should not ask for oral argument, only to repeat the arguments in its brief.
IBM Targets Data-Processing Patents in IPR Requests, Week of December 10, 2012
| December 17, 2012
IBM is the perennial winner in obtaining U.S. patents, but rarely appears in patent litigation. So it was noteworthy last year when Financial Systems Technology (Intellectual Property) Pty. Ltd. sued IBM in the Northern District of Illinois for infringement of two data-processing patents. IBM has now replied to that accusation by requesting inter partes review of those patents (see inter partes review Request Nos. (3) & (4)).
Chris Holman reports in his eponymous Holman’s Biotech IP Blog (http://holmansbiotechipblog.blogspot.com/2012/11/jury-finds-abis-sale-of-dna-sequencing.html) that Enzo Biochem won a $48,587,500 verdict last month against Applied Biosystems for infringement U.S. Patent No. 5,449,767. The ‘767 patent claims chemical compounds that are used in DNA analysis. An ex parte reexamination request (90/012,061) was filed against Enzo’s ‘767 patent at the end of last year. A non-final Action issued in July rejecting several of ‘767 claims as being anticipated by two prior art references. Enzo has replied to that rejection with a substantial expert declaration that challenges the PTO’s understanding of the prior art references. Last week a new reexamination request was filed against the ‘767 patent (see ex parte Request No. (4)). There is little detail yet available regarding the new request, but it might be an attempt by Enzo’s competitors to contradict Enzo’s arguments in the first reexamination.
Reexamination has not Saved Apple against MobileMedia Patents, So Far
| December 14, 2012
MobileMedia Ideas won an impressive victory in Delaware yesterday when a Federal jury returned a verdict that Apple’s iPhone 3G, 3GS and 4 infringe three MobileMedia patents: U.S. Patent Nos. 6,070,068, 6,253,075 and 6,427,078. The jury also found that none of the patents was anticipated or made obvious by the prior art. The first two patents claim certain call handling systems, and the third, camera technology.
Apple had followed its customary strategy for defending against claims of patent infringement – it filed substantial reexamination requests against each of the MobileMedia patents. But that strategy has not worked. The reexamination examiner confirmed the patentability of the specific claims of the ‘075 and ‘078 patents that Apple was found to infringe. And the claims of the ‘068 patent that were found to be infringed, were actually added to the ‘068 patent in the reexamination. So far at least, Apple’s reexamination approach has misfired.
Computer File Synchronization Patent among the Targets, Week of December 3, 2012
| December 11, 2012
Oracle, that is enmeshed in an infringement action brought by Clouding IP, has requested inter partes review of one of the patents in that action, U.S. Patent No. 6,738,799 (see inter partes review Request No. (4)). Oracle also indicated that review requests against the other patents in that case are on the way. Apple has also been sued for infringement of the ‘799 patent.
The following inter partes reviewrequests were filed:
(1) IPR2013-00069 (electronically filed) – U.S. Patent No. 7,663,061 entitled HIGH PERFORMANCE DATA CABLE and owned by Belden, Inc. Filed December 3, 2012 by Nexans, Inc.
(2) IPR2013-00071 (electronically filed) – U.S. Patent No. 6,218,930 entitled APPARATUS AND METHOD FOR REMOTELY POWERING ACCESS EQUIPMENT OVER A 10/100 SWITCHED ETHERNET NETWORK and owned by Network-1 Security Solutions, Inc. Filed December 5, 2012 by Avaya, Inc. The ‘930 patent is currently the subject of a litigation styled Network-1 Security Solutions, Inc. v. Alcatel-Lucent USA Inc., et al. (Case No. 6:11 cv492 (E.D. Tex.)).
(3) IPR2013-00072 (electronically filed) – U.S. Patent No. D617,465 entitled DRINKING CUP and owned by Luv n’ Care, Ltd. Filed December 5, 2012 by Munchkin, Inc. and Toys “R” Us, Inc. The ‘465 patent is currently the subject of a litigation styled Luv N’ Care, Ltd. v. Toys “R” Us, Inc. (Case No. 1:12-cv-00228-LLS (S.D.N.Y.)).
(4) IPR2013-00073 (electronically filed) – U.S. Patent No. 6,738,799 entitled METHODS AND APPARATUSES FOR FILE SYNCHRONIZATION AND UPDATING USING A SIGNATURE LIST and owned by Clouding IP, LLC. Filed December 8, 2012 by Oracle. The ‘799 patent is currently the subject of a litigation styled Clouding IP, LLC v. Oracle Corp. (Case No. 1:12-cv-00642 (D. Del.)); Stec IP v. Apple (Case No. 1:12-cv-00638 (D. Del.)). Ten other patents were asserted in the litigation, and Oracle indicated that petitions for inter partes reviews of these patents will be filed in the forthcoming weeks.
Specific Threat Required for Reexamination Prosecution Bar against Patentee’s Litigation Counsel
| December 10, 2012
In cases where a patent is simultaneously involved in litigation in District Court and reexamination at the Patent Office, it is common for the accused infringer to ask that the protective order bar the patentee’s litigation counsel from participating in the reexamination. Trial judges, however, are often reluctant to grant such a reexamination prosecution bar, unless the accused infringer identifies specific threats that would justify the bar. This reluctance was on display last week in Helferich Patent Licensing v. Phoenix Newspapers, 2012 U.S. Dist. LEXIS 172422 (D. Ariz.).
The case is a consolidation of four infringement actions, involving seven patents, each of which is now in reexamination. The accused infringers noted that the patentee is “currently pursuing additional claims” in the reexaminations, and asked Judge Neil Wake to bar the patentee’s litigation counsel from participating in the prosecution of the reexaminations. The accused infringers were evidently concerned that patentee’s litigation counsel might use confidential information, obtained under the protective order, to fashion new claims that would cover the accused infringer’s intended future products.
Micron Scores Victory over Rambus Patent at PTO Board
| December 7, 2012
The comparative strength of inter partes reexamination, over ex parte reexamination, was demonstrated anew today when the Patent Trial & Appeal Board rejected claims 1and 4 of Rambus’ U.S. Patent No. 6,751,696. (95/001,133). The ‘696 patent is one of the famous Farmwald patents that claim synchronous memory devices and that have been the subject of a number of ITC and District Court proceedings.
The examiner had initially confirmed the claims as being valid over a proposed combination of prior art references. Micron, one of the parties that had requested reexamination, appealed to the Board, and the Board has now found that those claims are invalid over the cited references, reversing the examiner. Of course, in an ex parte reexamination, the requester would not have been able to appeal the examiner’s initial confirmation of the claims.
In a bit of “inside baseball” that might interest reexamination practitioners, the Board rejected Rambus’ argument that Micron had no standing to pursue the appeal was not proper. Rambus correctly pointed out that Samsung, not Micron, had proposed the specific combination of prior art in a separate reexamination request that was merged with the reexamination requested by Micron.
What is an “Involved Application” in IPR Practice?
| December 6, 2012
The Petitioner in Chi Mei Innolux v. Semiconductor Energy Laboratory, IPR2013-00028, has tried an interesting gambit: it has asked that the prosecution of two applications that are related to the patent in inter partes review (IPR) be stopped.
SEL’s U.S. Patent No. 6,404,480 – that is the subject of the inter partes review – is also a member of a large family of patents, as shown by the following chart that appears in Chi Mei’s Petition.
