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
Reexamination of Apple Speech Recognition Patent Sought, Week of January 7, 2013
| January 14, 2013
This past October Dynamic Advances sued Apple, alleging that the Siri personal assistant in iPads and iPods infringes U.S. Patent No. 7,177,798. The ‘798 patent claims a method for processing a natural language input provided by a user. Dynamic Advances, which identifies a suite in Tyler Texas as its principal place of business, obtained the ‘798 patent from Rensselaer Polytechnic Institute. In its Complaint, Dynamic Advances points out that the ‘798 patent was cited during Apple’s prosecution of a patent application that ultimately issued as U.S. Patent No. 8,289,283. Dynamic Advances appears to be relying upon the drawings of the ‘283 patent to illustrate Apple’s infringement of the ‘798 patent.
Dynamic Advances has now taken the additional step of seeking ex parte reexamination of Apple’s ‘283 patent (see ex parte Request No. (4)). The strategy behind the reexamination request might be to press Apple to make admissions regarding claim construction, the scope of the ‘798 claims, or the meaning of the prior art.
First Covered Business Method Review and Inter Partes Review Instituted
| January 10, 2013
Yesterday the Patent Office “instituted” its first “Covered Business Method Review” and “initiated” its first “Inter Partes Review Trial.”
In SAP America v. Versata Development Group, CBM2012-00001, the APJs determined that the “challenged claims are more likely than not unpatentable under 35 U.S.C. § 101” as claiming “an unpatentable abstract idea.” In doing so, the APJs overruled the patentee’s objection that the post-grant review provision of the AIA does not authorize a § 101 challenge to a patent. 35 U.S.C. § 282(b)(2)&(3). The APJs explained that § 282(b)(2) allows a challenge based “on any ground specified in part II [of the Patent Statute] as a condition of patentability” and that patent eligibility under § 101 is such a condition. The APJs also cited portions of the AIA legislative history as support for their ruling.
How is Reexamination Treating Round Rock Research?
| January 9, 2013
Round Rock Research LLC is one of those “Non-Practicing Entities” that some people love to hate but wish they owned. It describes itself as “a technology research and patent licensing company.” It is reputed to own 4,500 patents obtained from semi-conductor Micron Technology, Inc. and lists Apple, Sony, Samsung, Nokia, HTC, IBM, LG, RIM, Sharp and Oracle among its licensees.
Round Rock is currently involved in litigation against Facebook and Twitter, but it is best known for its law suits against a series of famous retailers – most notably, Amazon, PepsiCo and Macy’s – accusing them of infringing a long series of patents claiming RFID technology. These retailers appear to be customers of Motorola Solutions, Inc., that has sued Round Rock for declaratory judgment that the patents are invalid.
More interesting, though, is that many of Round Rock’s patents have been the target of anonymously filed ex parte reexamination requests. The chart below shows the results to date:
Global IP Convention in Bangalore
| January 8, 2013
I will be speaking January 23 on reexamination and review practice, at the “Global IP Convention” in Bangalore India ( http://www.iprconference.com/). Past Global IP Conventions, hosted by the ITAG’s Mr. Navin Agarwal, have been very successful and I am sure that the 2013 will be even better. Of course, I would be delighted to chat with any of our blog readers attending the Convention.
Sony Seeks Inter Partes Review of Data Vending Patent, Week of December 31, 2012
| January 7, 2013
Sony has requested inter partes review of a data vending patent owned by Benjamin Grobler (see inter partes review Request No. 1)). Grobler has sued Sony and Apple in California for infringement of the patent.
Inter partes review was also requested for a patent owned by the U.S. Government, that claims chemical composition for repelling pests (see inter partes review Request No. (3)).
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Must a Petition for Inter Partes Review Construe the Patent Claims?
| January 3, 2013
The Patent Owner in Micron Technology v. The University of Illinois, IPR2013-00008, has asked the APJs to reject the Requester’s Petition because it fails to construe the challenged claims.
The Patent Owner first cites the Patent Office Rules as requiring an explanation of “how the challenged claim is to be construed” and “how the construed claim is unpatentable.” 37 CFR 42.104(b)(3)(4). It then refers to the related passage from the PTO’s Trial Practice Guide
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Court Distinguishes between Original Patent and its Reissue Patent
| January 2, 2013
This is a good story.
It begins in 2003 when U.S. Patent No. 6,615,065 issued to Somanetics. Two years later, Somanetics filed a reissue application based on the ‘065 patent. In 2008 the Patent Office granted ex parte reexamination of the ‘065 patent based on a request filed by CAS, and the ‘065 reissue application and the ‘065 reexamination were merged into a single proceeding. Then in 2009, while the merged reissue/reexamination was pending, Somanetics sued CAS for infringement of the ‘065 patent.
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More Oracle Inter Partes Review Requests Filed, Week of December 24, 2012
| January 2, 2013
Oracle requested inter partes review of two more Clouding IP patents last week (see inter partes review Request Nos. (2) & (3)). This brings to eleven the number of inter partes review Requests filed by Oracle over the past month against Clouding IP patents.
On Monday an anonymous party requested ex parte reexamination of two Apple design patents – U.S. Design Patent Nos. 670,713 and 669,906 – claiming display screen images simulating page-turning (see ex parte Request Nos. (5) & (6)):
