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
Apple Files Reexamination “RCE”
| February 25, 2013
An aspect of patent prosecution – much-discussed of late in some circles – is the Request for Continued Examination (RCE). An RCE allows a patent applicant, unhappy with the developments in its prosecution, to begin prosecution of its application anew. A similar phenomenon sometimes occurs in reexamination, where a Requester, dissatisfied with the progress of its reexamination, requests a new reexamination rather than acquiesce in an adverse ruling from the PTO. There was an example of such an “RCE” last week.
In 2007 MedioStream sued Apple and a number of others for infringement of U.S. Patent No. 7,009,655. Apple replied by requesting inter partes reexamination of the patent and was largely successful: the examiner rejected all the claims and the PTO Board affirmed the rejection, except for claims 10 and 11 which the Board found to be patentable over Apple’s prior art. Evidently, claims 10 and 11 are of some commercial significance because Apple requested that the Board reconsider its adverse decision, specifically, to find that claims 10 and 11 are inherently anticipated or made obvious by the prior art. Apple added that “[d]esignating a new ground of under 103 in this instance [would] also serve the interests of judicial economy as it [would] avoid the inefficiency of piecemeal appellate review that would result if Requester must institute a new reexamination proceeding to determine the obviousness of claims 10 and 11.” MedioStream opposed Apple’s reconsideration request, describing it an attempt to “assert[] new arguments not previously raised in the appeal.”
ZTE Challenges Six Phone Security Patents, Week of February 11, 2013
| February 19, 2013
Last week the Chinese telephone giant ZTE requested inter partes review of six patents owned by ContentGuard Holdings and covering systems for protecting telephone content (see inter partes review Request Nos. (1) through (6)). ContentGuard has sued ZTE for infringement of the six patents.
Three times, Veeam Software used the tactic of filing two inter partes review requests against a single patent, to avoid the length limitation on such requests (see inter partes review Request Nos. (7) through (10)). Veeam filed a total of seven requests against four patents owned by Semantec. Semantec has accused Veeam of infringing the patents.
Lawyers Need to be Very, Very Careful in IPR & Post-Grant Cases
| February 19, 2013
We have previously reported that the APJs are strictly applying the rules in inter partes review and covered business method post-grant review proceedings. Those rules require adherence by the parties to a very precise sequence of procedural steps. A number of lawyers, accustomed to the freer rein they enjoy in District Court cases, have already run afoul of those rules.
In Wowza Media v. Adobe Systems, IPR2013-00054, the Patent Owner filed a letter stating that it intended to file “a preliminary response in the inter partes reexamination.” The APJs pointed out that the “communication … does not comply with the rules” and expunged it from the record. The Patent Owner also appears to have failed to timely file its Mandatory Notice identifying the real party in interest, related matters, lead and back-up counsel, and service information, as required by § 42.14(a)(1). The APJs sua sponte granted an extension of time, and the required Notice has now been filed.
Trial Judge Permits Limited use of Reexamination Results before Jury
| February 19, 2013
Most trial judges do not allow the parties in patent infringement trials to disclose the results of a reexamination proceeding to the jury. Judges worry that the jury might misunderstand the meaning of the reexamination, causing unjustified prejudice to one party or the other. In Syntrix Biosystems, Inc., v. Illumina, Inc., 2013 U.S. Dist. LEXIS 20270 (February 14, 2013), however, Judge Benjamin Settle of the Western District of Washington determined that certain aspects of an earlier reexamination of the patent-in-suit could be presented to the jury, for two limited purposes. Interestingly, in both instances, the disclosure of the reexamination to the jury would help the patent owner, not the accused infringer.
First, Judge Settle found that the jury could be told that the prior art asserted by the accused infringer had already submitted to, and reviewed by, the Patent Office during the reexamination. The Judge believed that confirmation of the patentability of the claims by the PTO during reexamination could rightfully enhance the statutory presumption that the claims are valid over the prior art considered in the reexamination.
District Court Developments
| February 15, 2013
Two reexamination issues that frequently face District Court trial judges in patent infringement actions are (1) whether to stay the action pending completion of a parallel reexamination proceeding at the PTO and (2) whether to bar the patent owner’s litigation attorneys from participating in the reexamination. This week saw interesting examples of both.
STAYS
In Reiber v. TDK, 2013 U.S. Dist. LEXIS 19658, Judge William Shubb issued the tersest, yet most nuanced stay decision we have ever seen.
Considering the stage of the litigation, the potential simplification of the proceedings, and the potential for undue prejudice or tactical disadvantage to the plaintiffs should a stay issue … the court finds that the balance of the equities favors a stay as to dispositive motions, any Markman hearings, the final pretrial conference, and trial, but does not favor a stay as to discovery, discovery-related motions, and status (pretrial scheduling) conferences.
In a single sentence Judge Shubb identified and analyzed each of the three factors required for determination of whether to stay his case. He then split the baby in half, suspending the substantive events of the litigation, but allowing discovery between parties to continue.
Volkswagen Takes on Five Norman IP Holdings, Week of February 4, 2013
| February 11, 2013
Volkswagen requested reexamination of five WiFi circuitry patents owned by Norman IP Holdings (see ex parte Request Nos. (1) & (3) to (6)). The patents were originally assigned to Advanced Micro Devices, but later transferred through a series of companies, among them RPX, to Norman IP Holdings.
RPX describes itself as “the industry leader in comprehensive patent risk management through our defensive acquisition, litigation insurance, patent intelligence and strategic advisory services. For our clients, the result is strong, broad-based defense against NPE litigation and dramatically lower operating costs and financial risk.” Bloomberg describes Norma IP as “an intellectual property licensing company[that] controls patents covering a variety of consumer devices, which include Bluetooth enabled devices, camcorders, cameras, cellular telephones, copiers, cordless telephones, data storage devices, desktop personal computers, home entertainment electronics, laptops, PDAs, portable MP3 players, printers, speech recognition, WiFi enabled devices, work stations.” Norman IP used to be Saxon Innovations, LLC and is located in Tyler, Texas.
IPR Petitioners should Avoid Boilerplate Allegations
| February 8, 2013
It is common for lawyers to include generic allegations in their pleadings and motions, for instance the boilerplate plea for relief at the end of many complaints, “and such other relief as the Court might deem appropriate.” The notion is to invite the tribunal to consider other favorable possibilities not specifically identified in the pleading.
Such open-ended assertions, however, are not good practice in IPR proceedings, as shown by the APJs’ treatment of such a boilerplate plea in Oracle’s IPR Requests against patents owned by Clouding IP. Oracle has petitioned for IPR of 11 Clouding IP patents and in each Petition Oracle included the following paragraph:
The references addressed below each provide[s] the teaching believed by the Examiner to be missing from the prior art and variously anticipate or render obvious the claimed subject matter. It should be understood that rejections may be premised on alternative combinations of these same references.
RIM Seeks Reexamination of MobileMedia Ideas’ Communication Terminal Patent, Week of January 28, 2013
| February 4, 2013
On Thursday RIM requested reexamination of U.S. Patent No. 6,070,068 for a communication terminal device, owned by MobileMedia Ideas (see ex parte Request No. (8)). In December MobileMedia Ideas won when a jury returned a verdict against Apple that its iPhone 3G, 3GS and 4 infringed three MobileMedia patent, the ‘068 patent and U.S. Patent Nos. 6,253,075 and 6,427,078.
The Patent Office ordered reexamination of the ‘078 patent in November, based on an ex parte request filed by RIM. MobileMedia has also sued RIM and HTC for infringement of these patents. MobileMedia is jointly held by MPEG LA LLC (50.2%), a Sony subsidiary (24.9%), and a Nokia subsidiary (24.9%). The ‘068 patent was originally owned by Sony and the ‘075 and ‘078 patents, by Nokia. MobileMedia is said to own 300 patents.
InvenSense, Inc. has asked for reexamination of four patents owned by STMicroelectronics, Inc. (see ex parte Request Nos. (4) to (7)). The companies are in an infringement action regarding the patents in the Northern District of California.
APJ’s Enforce Ex Parte Communications Prohibition
| February 1, 2013
Once again the APJs have made clear that the new AIA post-issuance matters are not informal proceedings, this time chastising counsel for breaching the Patent Office’s prohibition against ex parte contacts in inter partes-type matters.
In IPR2012-00035 & 00037, both entitled Nissan North America v. Patent of Collins and Davanloo, Petitioner Nissan sent identical emails directly to APJ Sally Gardner Lane, advising her that the Preliminary Responses filed by Patent Owners Collins and Davanloo contained mathematical errors. These errors, Nissan said, could “materially impact” the proceeding. Specifically, in three instances, the Patent Owners had inaccurately calculated the diameter of modules disclosed in prior applications. According to Nissan’s email, which was not copied to the Patent Owners, this “basic and indisputable mathematical error” was “especially significant because the Patent Owner makes no arguments whatsoever other than those relating to [the] priority date of at least three of the prior art references.” Nissan’s email concluded with the request: “[w]e would like to know the proper procedure for requesting judicial notice of this false statement.”
In an Order seven days later, the APJs did in fact take notice, expressing concern about “the manner and content of the Nissan email.” “It is troubling that Nissan contacted the Board and included information to rebut the Collins Preliminary Response without authorization to do so.” The APJs continued that “[i]t is even more troubling that Nissan did so without providing Collins with a copy of the email.”
