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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Reexamination Filing Data – December 31, 2012
| January 29, 2013
Reexamination Filing Data – December 31, 2012 (PDF)
APJs Grant Inter Partes Review in BOS Case, Part I
| January 28, 2013
At the end of last month, we reported that the Patent Owner BOS GmbH had filed a Preliminary Response in Macauto USA v. BOS GmbH, IPR2012-00004, asking that the Patent Office decline to institute the requested inter partes review of U.S. Patent No. 6,422,291 (claiming a mechanism for car window shades).
BOS asserted that inter partes review should be denied under 35 U.S.C. § 315(b) because it had sued Macauto Taiwan, parent of Petitioner Macauto USA, more than one year before Macauto’s Petition was filed. Section 315(b) provides:
An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c).
APJs Define “Covered Business Method Patent”
| January 28, 2013
One of the new post-issuance proceedings created by the America Invents Act involves “covered business method” (CBM) patents. The AIA authorizes a party to challenge the validity of such a patent, according to the procedures created by the AIA for post-grant review proceedings. On Friday, in Liberty-Mutual v. Progressive Cas. Ins. Co., CBM2012-00002, the APJs addressed the issue of whether the challenged patent was an eligible CBM patent.
Section 18(d)(1) of the AIA defines a CBM patent as one
that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.
(Emphasis added). The PTO’s implementing rules provide guidance on what the AIA means by the “technological inventions” exception.
In determining whether a patent is for a technological invention . . . , the following will be considered on a case-by-case basis: whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; and solves a technical problem using a technical solution.
(37 CFR § 42.301(b)).
Gnosis Attacks Four Merck Folate Composition Patents, Week of January 21, 2013
| January 28, 2013
The Italian drug company Gnosis S.p.A. has counter-attacked Merck and its business partners last week, by requesting inter partes review of U.S. Patent Nos. 5,997,915, 6,011,040, 6,673,381 and 7,172,778 (see inter partes review Request Nos. (1)-(4)). The patents claim various folate and L-methylfolate compositions and methods of use, for treating vascular disease and neural tube deficiencies. Merck, South Alabama Medical Science Foundation, and Pamlab, which collectively own and license the four patents, have sued Gnosis for infringement, both in the U.S. International Trade Commission and the Eastern District of Texas. We will watch for interactions between the PTO’s reviews and the ITC’s investigation, since the two proceedings are likely to be completed at approximately the same time.
Using a strategy that will interest practitioners, LaRose Industries has filed two separate inter partes review requests, each based on a different interpretation of the claims (see inter partes review Request No. (5)). The two sets of claim interpretation are intended to correspond to the patent owner’s claim construction as presented in the infringement litigation, and during prosecution of the ‘558 patent. Petitioner alleges that the patent owner has offered two contradictory sets of claim construction.
Will “Assignor Estoppel” Derail Monsanto’s Petition for Inter Partes Review?
| January 25, 2013
Pioneer has filed a Preliminary Response opposing Monsanto’s Petition for inter partes review of U.S. Patent No. 5,518,989, arguing that the Petition is merely to avoid the consequences of the doctrine of assignor estoppel.
Two of the three inventors of the ‘989 patent assigned their rights to Pioneer, and then left Pioneer to work at Monsanto. Pioneer argues that Monsanto was able to infringe the ‘989 patent because of the knowledge and assistance of these inventors/workers.
In support of its position, Pioneer cites the CAFC’s decisions in Checkpoint and Intel. “The doctrine of assignor estoppel prevents a party that assigns a patent to another from later challenging the validity of the assigned patent.” Checkpoint Sys., Inc. v. All-Tag Sec. S.A., 412 F.3d 1331, 1336 (Fed. Cir. 2005). The doctrine encompasses challenges by the assignor himself (typically the inventor), as well as challenges by the assignor’s privies. See, Intel Corp. v. U.S. Int’l Trade Comm’n, 946 F.2d 821, 839 (Fed. Cir. 1991). Pioneer holds that Monsanto, the inventors’ employer, are the assignors’ privy, and thus, barred from challenging the validity of the ‘989 patent.
An Inter Partes Review Practice Tip
| January 23, 2013
The Patent Office has a policy of granting pro hac vice permission to individual lawyers, who are not members of the agency’s Patent Bar, to participate in particular inter partes review proceedings. Such “litigation lawyers” are needed to help address the litigation aspects of inter partes review practice: motions, discovery, etc.
But how many pro hac vice lawyers does a party need? The answer, we learned last Thursday from the APJs in Apotex v. Alcon, IPR2013-00012, is two. The Patent Owner Alcon had moved for the admission of five lawyers, but the APJs denied that motion, asking Alcon to identify the two of those lawyers that it really wants.
The APJs’ order might not seem noteworthy, but it does reflect their firm intent to maintain limits on inter partes review cases so that they not expand into District Court-scale proceedings.
Short-But-Worthwhile Tip for Patentees in Inter Partes Review
| January 22, 2013
Should a patentee file an optional Preliminary Response, trying to persuade the APJs to deny a Petition for inter partes review?
In reexamination practice, patentees almost never file such a paper. They recognize the possibility that the Patent Office might not accept all (or even any) of the proposed grounds for rejection, and worry that a patent owner’s response to the reexamination request might create unnecessary prosecution history against the patent. Perhaps it is the low threshold for granting reexamination – establishing a substantial new question of patentability – that deters patentees from filing a response.
For inter partes review petitions, the practice has been the opposite. Most patentees have filed a detailed Preliminary Response, contesting each of the proposed grounds for rejection, often challenging the Petitioner’s right to pursue IPR.
Xilinx Seeks Inter Partes Review of Intellectual Ventures Video Projection Patent, Week of January 14, 2013
| January 22, 2013
The feud between Xilinx and Intellectual Ventures continued last week, when the former filed an inter partes review petition against U.S. Patent No. 5,779,334 owned by IV and claiming a system for enhanced video projection (see inter partes review Request No. (1)). The parent of the ‘334 patent, U.S. Patent No. 5,632,545, is the subject of an earlier petition for inter partes review (IPR 2013-0029), also filed by Xilinx.
Ex parte reexamination was requested for Apple’s U.S. Patent No. 8,245,924, related to podcasting (see ex parte Request No. (1)). Its main claim reads:
A portable media player, comprising: a communication port adapted for communication with an external device other than the portable media player; and a processor coupled with the communication port and adapted to update a podcast having episodes by accessing episode information for the podcast and then updating the podcast with a new episode if it is determined that there is a new episode of the podcast.
There was fair amount of comment on the Internet regarding this patent when it issued in August.
Facebook Loses Reexaminations of Pragmatus’ Patents
| January 14, 2013
On Friday the Patent Trial and Appeal Board dealt Facebook a double loss, by affirming the reexamination examiner’s decisions not to reject the claims of two real-time Internet communications patents owned by Pragmatus. An infringement action between Pragmatus and Facebook regarding the two patents in the Northern District of California has been stayed (5:11-cv-2168).
In the first reexamination (95/001,715), the Board affirmed the examiner’s decision not to reject the claims of Pragmatus’ U.S. Patent No. 7,421,470. The ‘470 patent claims a network method for real-time communication between multiple users. The ‘470 claims include the step of “maintaining a first association between a first user and corresponding addressing information of a first communication device used by the first user to log in.” The Board first construed the claim phrase “addressing information” in light of the specification to mean the “physical location of a communication device used by a prospective user to log in.” The Board then concluded that the prior art references relied upon by Facebook does not satisfy, either literally or inherently, the “maintaining” step limitation.
Did Motorola Mobility Comply with One-Year Deadline for Inter Partes Review Petitions?
| January 14, 2013
Patentee Michael Arnouse filed a Preliminary Response last week arguing, inter alia, that Google’s Motorola Mobility was late in filing its inter partes review Petition against his patent. Motorola Mobility LLC v. Michael Arnouse, IPR2013-00010. The relevant statutory provision is 35 U.S.C. § 315(b) that states:
An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.
(Emphasis added). Arnouse’ argument turns on what is meant by the phrase “served with a complaint.”
Arnouse’ first contact with Motorola regarding infringement of his patent was in early 2011. No agreement between the parties was reached and on June 11, 2011, Arnouse filed a complaint for patent infringement in the Disrtict Court of Vermont. On the same day, Arnouse sent a copy of the complaint to Motorola, but did not include the summons issued by the Court. Motorola acknowledged such receipt.
