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
Ricoh Seeks Reexamination of Four Facsimile Circuit Patents
| March 25, 2013
Infinity Computer Products has sued 13 computer/printer companies – Toshiba, Oki, Samsung, Lexmark, Canon, Konica, Panasonic, Xerox, HP, Epson, Dell, Brother and Ricoh – for infringement of four patents related to interface circuits for linking operation of a facsimile device to a computer, and now latter company, Ricoh, has requested reexamination of each of those four patents (see ex parte reexamination Nos. (9) to (12)).
SAP America has requested inter partes review of two patents owned by Pi-Net International. Inc., (see inter partes review Nos. (1) & (2)). Both patents relate to “methods and apparatus for providing real-time, two-way transactional capabilities on the Web.” Pi-Net has sued quite a number of financial and auto-rental companies, presumably SAP customers, for infringement of the two patents.
Kimberly-Clark diaper wars against First Quality opened a new front on Friday, when ex parte reexamination requests were filed against the former’s U.S. Patent No. 5,745,922 and 6,098,203 (see ex parte Request Nos. (7) & (8).
Kimberly Clark Loses “Broadened” Patent Claim
| March 20, 2013
With all the activity surrounding the new AIA inter partes review trials, it is easy to forget that accused infringers are still getting good results from traditional ex parte reexamination, even where the patent emerges from the Patent Office with patentable claims.
Yesterday, for instance, Judge William Caldwell of the Middle District of Pennsylvania granted summary judgment in Kimberly Clark v. First Quality Baby Prods., 2013 U.S. Dist. LEXIS 37493 (M.D. Pa. March 19, 2013), holding that claim 34 of U.S. Patent No. 5,496,298 was invalid because it had been broadened in reexamination. The Patent Statute states in part that “[n]o proposed amended or new claim enlarging the scope of a claim of the patent will be permitted in a reexamination proceeding under this chapter.” 35 U.S.C. § 305. To determine whether a claim has been impermissibly broadened, the courts “compare the scope of the original claim and the new claim [, and if] the new claim covers any subject matter that would not have fallen within the scope of the original claim, then the new claim is broader.”
Ranbaxy Obtains Inter Partes Review of HIV Prodrug Patent
| March 19, 2013
Traditionally, most reexamination proceedings have involved electronic or mechanical inventions, and relatively few have concerned pharmaceuticals. Thus far, that pattern has continued with the new AIA inter partes review trials.
There have, however, been a few requests challenging pharmaceutical patents, and earlier this month the APJs decided to institute a trial in Ranbaxy Labs. v. Vertex Pharmaceuticals, IPR2013-00024, involving U.S. Patent No. 6,436,989. The ‘989 patent claims a set of HIV aspartyl protease inhibitors, specifically derivatives of an inhibitor known as “VX-478.” Also claimed are treatment methods involving the administration of the protease inhibitors. The ‘989 patent is the subject of the infringement action ViiV Healthcare Co. v. Mylan, Inc., Case No. 12-cv-1065 (D. Del.)).
In finding “a reasonable likelihood that the petitioner would prevail with respect to at least” one claim, the APJs undertook the customary “lead compound” analysis. They determined that the primary reference relied upon by the Petitioner Ranbaxy disclosed a protease inhibitor similar those claimed, except that the prior art compound did not have a solubilizing salt. They also found that the disclosed protease inhibitors were known to have a solubility problem and that various salts, including the patent owner Vertex’s preferred phosphate ester salt were known to improve solubility.
Instructions from APJs on Rules of Evidence
| March 18, 2013
When the patent owner filed its Preliminary Response in LKQ Corp. v. Clearlamp, LLC, IPR2013-00020, it challenged three references, taken from the Internet and relied upon in the Request. These Internet references, the patent owner argued, were not authenticated, amounted to hearsay, and therefore should be excluded from the evidentiary record.
The APJs might simply have ignored the patent owners’ remarks, but chose instead to treat them as a motion to exclude the three references. That motion, the APJs found, was premature because it failed to follow the procedural steps required by the applicable rule. They explained:
When a party objects to evidence that was submitted during a preliminary proceeding, such an objection must be served within ten business days of the institution of trial. The objection to the evidence must identify the grounds for objection with sufficient particularity to allow correction in the form of supplemental evidence.
Microsoft Resists Discovery in Inter Partes Review
| March 18, 2013
The APJs continue to show their resolve to keep a narrow focus in inter partes review proceedings. Last week, in Microsoft v. Proxyconn, IPR2012-00026 & IPR2013-00109, the APJs denied a motion by the patentee Proxyconn for additional discovery on the issue of secondary considerations, again demonstrating their distaste for expansive, litigation-style discovery requests.
Inter partes review proceedings entail two types of discovery, “routine” and “additional.” The former is defined narrowly in Rule 41.51(b)(1):
(i) Unless previously served or otherwise by agreement of the parties, any exhibit cited in a paper or in testimony must be served with the citing paper or testimony.
(ii) Cross examination of affidavit testimony is authorized within such time period as the Board may set.
(iii) Unless previously served, a party must serve relevant information that is inconsistent with a position advanced by the party during the proceeding concurrent with the filing of the documents or things that contains the inconsistency. This requirement does not make discoverable anything otherwise protected by legally recognized privileges such as attorney-client or attorney work product. This requirement extends to inventors, corporate officers, and persons involved in the preparation or filing of the documents or things.
Atrium Medical Files Six IPR Requests against Two Bard Patents, Week of March 11, 2013
| March 18, 2013
Another Infringement Action Stayed for IPR
| March 13, 2013
Initially, at least, trial judges appear to favor staying infringement actions to allow the Patent Office to resolve the prior art validity issues in the new AIA inter partes review proceedings. In earlier practice with reexamination, trial judges were often reluctant to stay an infringement case where the parties directly compete, i.e., where the patentee is at greater risk of suffering irreparable harm from a stay. With the shorter pendency promised by inter partes review, judges might be less concerned with the possibility of such prejudice.
That is certainly true for Judge Steven Merryday of the Middle District of Florida who on Monday stayed Capriola Corp et al. v. LaRose Indus. et al., (8:12-cv-2346), pending completion of an inter partes review requested by the accused infringer at the end of January. Judge Merryday acknowledged the fact that the parties are direct competitors for the patented product, but characterized the parties’ assertions on this and other points as “the usual array of accusations and counter-accusations.” He pointedly noted “the statutory arrangement [for inter partes review] promis[ing] an expeditious response from [the] PTO,” reasoning that “if the PTO declines inter partes review, little time is lost, but if [the] PTO grants inter partes review, the promise is greater for an important contribution by the PTO to resolution of the governing issues in the litigation.”
Hyundai Requests Second IPR Against Clear with Computers Patent, Week of March 4, 2013
| March 11, 2013
Clear With Computers’ U.S. Patent No. 8,121,904 claims an “electronic system for creating customized product proposals stores a plurality of pictures and text segments to be used as building blocks in creating the proposal.” Clear With Computers has sued Hyundai for infringing the ‘904 patent, and last week Hyundai replied by filing two inter partes review petitions against the patent (see inter partes review Request No. (3)). The current petition challenges claims 1-21 of the ‘904 Patent. Hyundai had previously requested reexamination of claims 22-40 the same patent (see IPR 2013-00104). Hyundai’s dual filings demonstrate the technique of sidestepping the page limit on petitions by requesting multiple IPR trials.
The following inter partes review requests were filed:
(1) IPR2013-00174 (electronically filed) – U.S. Patent No. 6,217,049 entitled BICYCLE SUSPENSION SYSTEM WITH SPRING PRELOAD ADJUSTER AND HYDRAULIC LOCKOUT DEVICE and owned by SRAM Corp. Filed March 4, 2013 by HBPSI – Hong Kong Ltd. The ‘049 patent is currently the subject matter of a litigation styled SRAM v. Hayes Bicycle Group, Inc. (Case No. 1:12-cv-03628 (N.D. Ill.)).
(2) IPR2013-00175 (electronically filed) – U.S. Patent No. 7,633,673 entitled SYSTEM AND METHOD FOR GENERATING INFRARED LIGHT FOR USE IN MEDICAL PROCEDURES and owned by Cheetah Omni, LLC. Filed March 4, 2013 by BAE Systems Information and Electronic Systems Integration, Inc. The ‘673 patent is currently the subject matter of a litigation styled Cheetah Omni, LLC v. U.S. (Case No. 1:11-cv-00255-FMA (Fed. Cl.)).
APJs Reject Inter Partes Review Request on the Merits, Applying Rigorous Review
| March 5, 2013
The APJs have already shown that they insist on full compliance with the relevant rules for a party petitioning for inter partes review of a patent and for a patent owner opposing such a petition. The APJs have now shown, in Synopsys v. Mentor Graphics, IPR2012-00041, that they are willing to deny a petition, in toto, where they see such a failure.
Synopsys sought inter partes review of Mentor’s U.S. Patent No. 6,947,882. Synopsis’ petition acknowledged the requirement in the rules that the limitations of the claims be construed before being applied to the cited prior art, but asserted that each of the limitations could be understood according to its “plain meaning.” The patent owner did not dispute this point, but the APJs did, finding that the key limitation did require construction and proceeding to construe it without input from the parties.
Zynga Patents Target of IPR Requests, Week of February 25, 2013
| March 4, 2013
Last week Personalized Media Communications requested inter partes review of three mass media programming patents owned by Zynga (see inter partes review Request Nos. (2), (3) & (8)). Zynga’s patents claim unified systems for programming mass communication, including uses for television, radio, broadcast hardcopy, and computer communications. The two companies are involved in an infringement action regarding the patents, in the Eastern Disrtict if Texas.
General Electric saw attacks by Vibrant Media, Inc. on two of its hypertext patents (see inter partes review Request Nos. (6) & (9)). GE has sued Vibrant and others for infringement of the patents.
