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- 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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Is the APJs’ Decision to Institute Design Patent IPR also their Final Decision?
| April 30, 2013
The APJs’ decision last week to institute inter partes review in Munchkin, Inc. et al. v. Luv’n Care, Ltd., IPR2013-00072 (involving Patent D617,465 for a baby’s drinking cup) has drawn a good deal of attention as the first IPR of a design patent, and rightfully so. If earlier experience with reexamination of design patents is any clue, inter partes review is likely to become a highly effective weapon for accused infringers to pursue validity challenges. Whereas original prosecution of design patents often resembles a registration system, reexamination of such patents is sometimes more like a killing field – the “kill rate” of design patents in both ex parte and inter partes reexamination being quite high.
Review of the text of the Munchkin decision itself, however, reveals what might be an even harsher outcome: that, at least in the case, the APJ’s decision to institute inter partes review is actually their final decision, holding the ‘465 patent invalid.
Sprint Challenges Two Comcast Patents, Week of April 22, 2013
| April 29, 2013
Last Wednesday Sprint requested ex parte reexamination of two Comcast patents that claim methods for accessing telecommunications data (see ex parte Request Nos. (3) & (4)). Comcast has sued Sprint in Delaware for infringement of the patents. Sprint’s choice of ex parte reexamination over inter partes review is noteworthy.
Also on Wednesday, InvenSense requested inter partes review of a tungsten-contact semiconductor patent owned by STMicroelectronics (see inter partes review Request No. (2)). The latter recently sued InvenSense for infringement of the patent, both in California and at the U.S. International Trade Commission.
Volkswagen Challenges Cruise Control Tech. Patent, Week of April 15, 2013
| April 22, 2013
Volkswagen has requested ex parte reexamination of U.S. Patent No. 6,324,463 that is owned by Cruise Control Technologies and claims cruise control indicators (see ex parte Request No. (3)). Cruise Control has sued VW, as well as BMW and Audi, for infringement of the ‘463 patent.
Ariosa Diagnostics requested a second inter partes review of Isis’ U.S. Patent No. 6,258,540 (see inter partes review Request No. (2)). The ‘540 patent claims methods that “enable[] non-invasive prenatal diagnosis including for example sex determination, blood typing and other genotyping, and detection of pre-eclampsia in the mother.” This request seeks review of claims that are not the subject of the earlier inter partes review.
APJs Deny Request to Add New Grounds to Inter Partes Review
| April 15, 2013
The APJs have shown a determination to enforce the inter partes review rules strictly, in order to prevent their dockets from becoming unmanageable.
Their recent decision in Research In Motion v. MobileMedia Ideas, IPR2013-00016, is a good example. In March the APJs instituted the review, finding that RIM had demonstrated a likelihood that it would prevail against the identified claims, based on two distinct combinations of prior art references. In the meantime, in a parallel infringement action in Delaware, the trial judge issued summary judgment that two of the identified claims were anticipated by a third prior art reference, one that had not been mentioned in RIM’s petition for review. RIM therefore asked the APJs to add to the review proceeding a new ground for rejection, specifically a ground based on the third reference.
Esoterix DNA Amplification Patents Challenged, Week of April 8, 2013
| April 15, 2013
On Friday Life Technologies requested ex parte reexamination of two Esoterix Genetic Labs patents, both entitled “Universal Primer Sequence For Multiplex DNA Amplification” (see ex parte Request Nos. (7) & (8)). An infringement action involving those patents is currently pending in North Carolina. Esoterix’ patents were originally owned by Genzyme Corporation.
Volkswagen seeks inter partes review of a luminaire patent owned by Light Transformation Technologies (see inter partes review Request No. (1)). Light Transformation has sued quite a number of lighting device manufacturers for infringement of that patent, among them General Electric.
A Tessera patent is the target of an inter partes review requested by Amkor Technologies (see inter partes review Request No. (5)). Tessera has sued Amkor in Delaware for infringement of that patent.
Samsung Seeks Inter Partes Review of Unifi Scientific Battery Charger Patent, Week of April 1, 2013
| April 8, 2013
Last year, Unifi Scientific Batteries (USB) sued a number of companies in the Eastern District of Texas for infringement of its U.S. Patent No. 6,791,298 that claims a battery charger. Among those sued by USB, whose principal place of business is in Longview Texas, are Amazon, RIM, HTC, Samsung, Sony and Texas Instruments. The accused products include the Kindle Fire and Samsung’s Galaxy Nexus.
Last month Texas Instruments also requested inter partes review of the ‘298 patent (see IPR 2013-00213), and on Thursday Samsung filed its own inter partes review request against the ‘298 patent (see inter partes review Request Nos. (8)).
On Wednesday Geico field a 391-page request for ex parte reexamination of MacroSolve’s U.S. Patent No. 7,822,816 (see ex parte Request No. (8)). According to MacroSolve, the ‘816 patent covers a wide variety of “mobile information collection systems.” MacroSolve has sued Geico, as well as ten other retail companies, in the Eastern District of Texas for infringement of the ‘816 patent.
Eighteen Inter Partes Review Requests Filed, Week of March 25, 2013
| April 1, 2013
The initial sticker shock, caused by the high filing fees for inter partes review requests, appears to be easing – last week, requests were filed against 18 patents, a weekly number quite comparable to the number of inter partes reexamination requests filed in the pre-AIA Era. Notable requesters included Dell (see inter partes Request No. (1)), NuVasive (see inter partes Request No. (3)), Covidien (see inter partes Request No. (4)), Texas Instruments (see inter partes Request No. (5)), Butamax (see inter partes Request Nos. (6) & (7)), Hewlett-Packard (see inter partes Request No. (10)), and Sony (see inter partes Requests Nos. (11) & (12)).
The following inter partes review requests were filed:
(1) IPR2013-00202 (electronically filed) – U.S. Patent No. 5,434,562 entitled METHOD FOR LIMITING COMPUTER ACCESS TO PERIHPERAL DEVICES and owned by NovelPoint Security, LLC. Filed March 25, 2013 by Dell, Inc. The patent owner has asserted the ‘562 patent in at least 31 litigations against a host of defendants, including Dell (Case No. 2:2012-cv-105 (E.D. Tex.)); Samsung (Case Nos. 2:2012-cv-100, 2:2013-cv-079 (E.D. Tex.)); Hewlett-Packard Co. (Case Nos. 2:2012-cv-104, 2:2013-cv-083 (E.D. Tex.)); and Hitachi (Case No. 2:2013-cv-081 (E.D. Tex.)).
