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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Recent Requests
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NetApp Requests Reexamination of PersonalWeb, Week of July 22, 2013
| July 29, 2013
On Friday, NetApp requested ex parte reexamination of PersonalWeb’s U.S. Patent No. 5,978,791 (see ex parte reexamination No. (9)). The ‘791 patent claims a data processing system in which “the identity of a data item is independent of its name, origin, location, address, or other information not derivable directly from the data, and depends only on the data itself.” PersonalWeb Technologies has asserted the ‘791 patent in 18 separate infringement actions, including cases against Facebook (Case No. 5:13-cv-01356 (N.D. Cal.)), Google (Case No. 5:13-cv-01317 (N.D. Cal.)), IBM (Case No. 6:12-cv-00661 (E.D. Tex.)), Apple (Case No. 6:12-cv-00660 (E.D. Tex.)), Microsoft (Case No. 6:12-cv-00663 (E.D. Tex.)), Yahoo! (Case No. 6:12-cv-00658 (E.D. Tex.)), and Amazon (Case No. 6:11-cv-00658 (E.D. Tex.)).
At the request of EMC and VMware, the Patent Office instituted an inter partes review of most of the claims of the ‘791 patent on May 17th. NetApp’s stated goal in Friday’s reexamination request is to challenge one of the ‘791 claims not under consideration in the review proceeding. Given the advanced stage of the review, it seems unlikely that the Patent Office would merge the review and reexamination. Earlier in the week, the Board denied a petition by NetApp for inter partes review of the ‘791 patent, finding the petition was filed more than one year after PersonalWeb had served a complaint for infringement of the ‘791 patent on NetApp.
Inter Partes Review Requested for P&G Teeth Whitening Patents, Week of July 15, 2013
| July 22, 2013
Last year Procter & Gamble sued three companies – Clio USA, Inc., Team Technologies, Inc., and Brushpoint Innovations, Inc. – for using its patented method and system for whitening teeth. The three accused infringers have now requested inter partes review of P&G’s patents (see inter partes review Request No. (1) & (3)).
Healthcare Hero Network owns a series of patents related to “a networked system for remotely monitoring individuals and for communicating information to the individuals through the use of script programs.” Eight of those patents are now in reexamination. Cardiocom has now requested inter partes review of three other related Healthcare Hero patents (see inter partes review Request Nos. (2), (4) & (12)). The companies are involved in an infringement action in the Eastern District of Texas.
What Does Default Look Like in IPR Cases?
| July 18, 2013
As expected, the APJs have applied their rules very strictly to ensure compliance with the statutorily imposed deadlines for inter partes review and post-grant review proceedings. How will the APJs handle cases involving parties who are unfamiliar with those rules, particularly foreign companies?
So far, the answer has been that the APJs will treat such parties carefully, giving them a fair opportunity to participate to the proceeding. For instance, in UKing Universe, Inc. v. Chang-Kang Chu, IPR2013-00212, the challenger filed its petition at the end of March, asserting that each of the claims of the patent are unpatentable over the prior art. The APJs sent a notice to the patent owner, requiring it to submit mandatory notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of the Petition. The patent owner did not reply.
Three times – on April 19, 2013, April 29, 2013, and May 9, 2013 – the APJs contacted the patent owner, reminding it that its filing was overdue and notifying it that a mandatory telephone conference would occur on May 14, 2013. Soon thereafter, a representative of the patent owner sent the APJs an email which read: “Thank you for this notice [concerning the May 14, 2013 telephone conference]. The Patent Owner would like to abandon the patent. Thus, he will not give any response to the petition.”
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Toyota Goes After David Breed Auto-Monitoring Patents, Week of July 8, 2013
| July 15, 2013
American Vehicular Sciences (AVS) has filed patent infringement actions in June 2012 against numerous automobile makers, including two cases against Toyota in the Eastern District of Texas. Last week Toyota struck back, requesting inter partes review of eleven AVS patents (see inter partes review Request No. (1) to (11)). The patents all name David Breed as the inventor and all claim systems for monitoring functions in automobiles, essentially to identify and diagnose problems with those functions. Other auto-makers sued by AVS are BMW, Honda, Hyundai, Kia, and Mercedes. AVS is a subsidiary of Acacia Research Corporation. In February, Acacia reported that in its fiscal year 2012 it had acquired control of 55 patent portfolios and that it had revenues of $250,727,000.
The following inter partes review requests were filed:
(1) IPR2013-00412 & IPR2013-00413 (electronically filed) – U.S. Patent No. 6,738,697 entitled TELEMATICS SYSTEM FOR VEHICLE DIAGNOSTICS and owned by American Vehicular Sciences, LLC. Filed July 8, 2013 by Toyota. The ‘697 patent is currently the subject matter of litigations styled American Vehicular Sciences LLC v. Toyota Motor Corp., et al. (Case No. 6:12-CV-405 (E.D. Tex.)); American Vehicular Sciences LLC v. BMW Grp. A/K/A BMW AG et al. (Case No. 6:12-CV-412 (E.D. Tex.)); American Vehicular Sciences LLC v. Hyundai Motor Co. et al. (Case No. 6:12-CV-776 (E.D. Tex.)); American Vehicular Sciences LLC v. Kia Motors Corp. (Case No. 6:13-CV-148 (E.D. Tex.)); American Vehicular Sciences LLC v. American Honda Motor Co., Inc. et al. (Case No. 6:13-CV-226 (E.D. Tex.)); and American Vehicular Sciences LLC v. Mercedes-Benz U.S. Int’l Inc. (Case No. 6:13-CV-310 (E.D. Tex.)).
APJs Issue another Ruling on One-Year Deadline to File IPR Requests
| July 11, 2013
Earlier this week, we reported a ruling by the APJs in The Scotts Company v. Encap, IPR2013-00110, regarding the AIA requirement that a party file a petition for inter partes review within one year of the date that party had been served with an infringement complaint. 35 U.S.C. § 315(b). The APJs have now issued another ruling on the § 315(b) one-year deadline, this time in BAE Systems v. Cheetah Omni, IPR2013-00175. Again, they found that the petition had been timely filed.
Here are the relevant facts:
- On November 12, 2010, Cheetah filed a patent infringement complaint in District Court against BAE Systems.
- On February 10, 2011, Cheetah voluntarily dismissed its infringement action.
- On April 22, 2011, Cheetah filed a complaint in the U.S. Court of Federal Claims against the United States, asserting infringement of the same patent and identifying BAE Systems’ Boldstroke™ system as an infringing product.
- On March 19, 2012, BAE Systems was served with a notice by the Federal Claims court requesting that BAE Systems appear and assert any claims or interest it may have in the Federal Claims litigation.
- On March 4, 2013BAE Systems filed the present IPR petition.
Microsoft Challenges Motorola Videogame Console Patent, Week of July 1, 2013
| July 9, 2013
Last Monday Microsoft requested ex parte reexamination of a Motorola videogame console patent (see ex parte Request No. (1)). Motorola’s patent was the subject of a major U.S. International Trade Commission investigation. That investigation concluded in early June when the ITC ruled that Motorola had failed to prove infringement. A parallel infringement action is underway in Wisconsin.
The number of pharmaceutical patents challenged in inter partes review proceedings continues to grow – most notable last week were requests filed by Apotex against three Alcon patents claiming “multi-dose, self-preserved ophthalmic compositions … [that] possess sufficient antimicrobial activity to satisfy USP preservative efficacy requirements” (see inter partes review Request Nos. (13), (14) & (15)).
APJs Rule on One-Year Filing Deadline for IPR Requests
| July 8, 2013
The AIA provides that a party may not file a petition for inter partes review if that party had been served with an infringement complaint more than one year previously. 35 U.S.C. § 315(b). Fine, but how does this provision apply to cases where the accused infringer waives service, i.e., where service never occurs?
In The Scotts Company v. Encap, IPR2013-00110, the patent owner Encap argued that the challenger Scotts Company had failed to file its petition before the one-year deadline because Encap had sued Scotts Company for infringement of the ’259 patent more than one year before Scotts Company filed its IPR petition.
The APJs disagreed with Encap, determining that Scotts Company’s petition was timely filed. They explained that the “mere notification of a complaint does not trigger the one-year statutory bar.” They cited Federal Rule 4(d)(4) for the nuance that “[w]hen the plaintiff files a waiver, proof of service is not required and these rules apply as if a summons and complaint had been served at the time of filing the waiver.” (Emphasis added.)
The APJs therefore held that where a petitioner waives service of a summons, the one-year time period begins on the date on which waiver is filed. Since Scotts Company waived service of a summons in the parallel infringement action no earlier than January 12, 2012, and had filed its petition on January, 10, 2013, Scotts’ petition was timely filed.
Baxter Loses $23.5 Million Judgment to Later Reexamination: Judgment not “Sufficiently Final”
| July 3, 2013
The power of reexamination was demonstrated once again in the CAFC’s decision yesterday in Fresenius v. Baxter Int’l. There, the Court vacated an infringement judgment and an award of damages, because of a later finding of invalidity by the Patent Office in a reexamination proceeding. For practitioners, the panel’s decision is consistent with the Court’s precedent since In re Swanson. Also, the decision might clarify the period of time in which judgments are vulnerable to later reexaminations. In the words of the panel majority, the answer is when the final judgment is “sufficiently final.”
The procedural history of the case is important:
- In 2003 Fresenius filed a declaratory judgment action against Baxter International, alleging that certain claims 26–31 of U.S. Patent No. 5,247,434 were invalid and not infringed.
- Baxter counterclaimed for infringement.
- In 2005 Fresenius requested reexamination of the claims.
- In 2007 the trial court entered judgment against Fresenius, finding that the ’434 claims were infringed and not invalid.
- On appeal, the CAFC affirmed the determination that the claims were not invalid, but remanded to the trial court to reconsider its injunction and post-verdict damages.
- In 2010, while the litigation was pending on remand, the PTO completed a reexamination of the ’434 patent, determining that all asserted claims were invalid.
- In 2012 the CAFC affirmed the PTO’s invalidity determination from the reexamination proceeding, and issued its mandate.
- In 2012 the trial court entered judgment against Fresenius in the pending infringement action, awarding Baxter $23.5 million. Both sides appealed.
Inter Partes Review Requests against Four VirnetX Patents, Week of June 24, 2013
| July 1, 2013
Last week saw four more inter partes review requests against VirnetX patent, this time filed by New Bay Capital (see inter partes review Request Nos. (1) through (4)). As we have previously reported, VirnetX has been quite successful in litigating and licensing these patents.
A number of universities – Stanford University, Boston University, University of Illinois – saw inter partes review requests filed against their patents (see inter partes review Request Nos. (8), (10) & (13)).
Sony filed its second inter partes review requests against U.S. Patent No. 6,218,903 owned by Network-1 Security Solutions, Inc. (see inter partes review Request No. (6)). Sony’s previous request for inter partes review of the ‘930 patent was denied (see IPR2013-00092). A request for rehearing of a portion of the Board’s decision not to institute review is currently pending.
