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
Nucleotide Sequencing Patent Dispute Escalates, Week of August 19, 2013
| August 26, 2013
The litigation heated up last week between Illumina Cambridge on the one hand, and Intelligent Bio-Systems (IBS) and its partner Columbia University, on the other, when IBS filed two inter partes review requests against Illumina’s U.S. Patent 7,566,537 (see inter partes review Request No. (1)). The ‘537 patent claims “nucleotides having a removable label and their use in polynucleotide sequencing methods.” IBS had previously requested inter partes reviews for two other Illumina patents that were asserted against IBS in the Delaware action (see IPR2013-00128 and IPR2013-00324 (US Patent No. 7,057,026); IPR2013-00266 (US Patent No. 8,158,346)). Meanwhile, Illumina has previously sought inter partes review of several of Columbia University’s patents (see IPR2012-00006; IPR2012-000007; IPR2013-00011).
Clouding IP was once again the target of a review request, this one filed by Rackspace Hosting against U.S. Patent No. 7,032,089 (see inter partes review Request No. (2)). Clouding IP has sued several companies for infringement of the ‘089 patent, among them Amazon, Apple, Google, and Microsoft.
IPO Hosts Two Post-Grant Webinars, this Wednesday and Next
| August 26, 2013
Pamela Sherrid, who hosts Intellectual Property Owners Association’s excellent series of legal webinars, is offering a session this week and one next week on post-grant proceedings and parallel infringement litigation. The fee is $120 per user per webinar and requires registration at ipo.org/IPChatChannel.
I will let her description of the events speak for itself:
Wednesday August 28 – 2 PM ET
Versata v. SAP and Fresenius v. Baxter:
Res Judicata and Estoppel in Post-grant Proceedings and Concurrent Litigation
Panelists
Bernard Knight, USPTO
Jeffrey Kushan, Sidley Austin
Scott Daniels, Westerman Hattori Daniels & Adrian
The panel on August 28 in Versata v. SAP and Fresenius v. Baxter: Res Judicata and Estoppel in Post-grant Proceedings and Concurrent Litigation, will examine what happens when the PTAB and the Federal Circuit come to different conclusions about the same patent at different times. Our panel will consider the procedural stance of the two named cases, enumerate other conflicting situations that are likely to emerge, and discuss what legal principles will prevail to solve the resulting conundrums.
Wednesday September 4 – 2 PM ET
Filing a Post-grant Proceeding
with Concurrent Litigation:
Strategic Considerations
Panelists
Erika Arner, Finnegan
Dion Bregman, Morgan Lewis
Juliana Mirabilio, Oracle
Figuring out all implications of Filing a Post-grant Proceeding with Concurrent Litigation, is no easy task, and being surprised by a twist or turn could result in a litigation disaster. For instance, claim construction arguments must be coordinated between the two venues. The panel of the September 4 webinar on Strategic Considerations will consider the key issues of stays, estoppel, claim construction and settlement.
Sleep Apnea is Big Business at Patent Trial & Appeal Board, Week of August 12, 2013
| August 19, 2013
The pace of new inter partes review requests continues to be brisk, on par with the number of inter partes reexamination requests filed last year, despite the PTO’s substantial increase in filing fees. The clear leader last week was Apex Medical that requested inter partes review of six Resmed patents claiming various types of masks and humidifiers for sleep apnea devices (see inter partes review Request Nos. (7) through (12)). Apex Medical and Resmed are locked in parallel District Court and ITC actions involving those patents.
Dandruff was also big business at the Patent Office – Unilever petitioned for inter partes review of three Procter & Gamble shampoo patents (see inter partes review Request Nos. (3), (5) & (6)). The companies do not yet appear to be in litigation over the patents.
An undisclosed party requested ex parte reexamination of MobileMedia Ideas’ U.S. Patent No. 6,427,078 for personal communications data collection (see ex parte Request No. (6). MobileMedia has sued a number of companies for infringement of the ’78 patent, among them Apple, HTC and RIM. The ‘078 patent has emerged unscathed from two earlier reexamination proceedings, but it is currently facing a non-final rejection in a third reexamination (90/012,637). Last week’s request might be an attempt by the opposition to bolster that non-final rejection in the pending reexamination.
Finally, Medtronic opened a new front in its long-standing patent battle with NuVasive by requesting inter partes review of two patents related spinal fusion (see inter partes review Request Nos. (2) & (4)).
Reexamination Sought for BMW Wheel Design Patents, Week of August 5, 2013
| August 12, 2013
LKQ, which describes itself as “the largest nationwide provider of alternative collision replacement parts and a leading provider of recycled engines and transmission and remanufactured engines,” has requested ex parte reexamination of three design patents that are owned by BMW and that claim “wheel and wheel cover” designs (see ex parte Request Nos. (3), (4) & (5)). Reexamination has proven over the years to be an extremely effective weapon in the hands of design patent challengers. It does not appear that there is a parallel infringement case.
Sony and Hewlett-Packard have requested inter partes review of an Ethernet access patent owned by Network-1 Security Solutions, Inc. (inter partes review Request No. (3)). The request is based on grounds identical to that asserted in two earlier IPR proceedings initiated by Avaya and Dell (see IPR2013-00071 and IPR2013-00385), and which the Board has already instituted. Sony and Hewlett-Packard seek joinder with the Avaya and Dell’s IPR proceedings – they expressly state that their request for inter partes review does not alter or expand arguments that were previously presented by Avaya and Dell and that were considered by the Board. In recent cases, the Board has not permitted joinder without such a statement by the petitioner.
Reexamination Requested of Apple “Double-Sided Touch-Sensitive Panel” Patent, Week of July 29, 2013
| August 5, 2013
An unknown party has requested ex parte reexamination of Apple’s U.S. Patent No. 7,920,129 that claims “double-sided touch-sensitive panel” (see ex parte Request No. (2)). Apple has sued HTC in Delaware for infringement of the ‘129 patent, as well as for three other patents. The request could have sought inter partes review, which is much more common than ex parte reexamination for such cell phone patents, but such a review request would have required disclosure of the filer’s identity. With an ex parte reexamination request, Apple is left to guess the filer’s name.
Ex parte reexamination was also requested for Apple’s U.S. Patent No. 7,663,607 (see ex parte Request No. (3)). Apple’s ‘607 patent was declared invalid over the prior art in an ITC investigation last year – such invalidity determinations by the ITC are not binding on the courts. As with the ‘129 patent, the identity of the filer is not shown in the Patent Office records.
Facebook, LinkedIn, and Twitter have requested inter partes review of a patent that is owned by Software Rights Archive, and that claims for a system for searching texts (see inter partes review Request No. (6)). Software Rights has sued those companies for infringement of the patent.
