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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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ZOLL Lifecor Seeks Inter Partes Review of Eight Philips Electrotherapy Patents, Week of September 23, 2013
| September 30, 2013
Almost exactly a year ago, Koninklijke Philips N.V. and Philips Electronics North America Corp. sued. ZOLL Lifecor Corp for infringement of eight patents claiming various electrotherapy methods. Last week, ZOLL retaliated by requesting inter partes review of each of those patents (see inter partes review Request Nos. (4) to (6), (9) to (10) & (12) to (14)). Presumably, ZOLL will also seek a stay of the litigation, and the dispute will shift to the Patent Office.
Dell, Hewlett-Packard and NetApp teamed up to request inter partes review of a network patent owned by Electronics and Telecommunication Research Institute (see inter partes review Request No. (23). the patent is the subject of 19 separate infringement actions, all in Delaware.
Unified Patents Adopts Earlier Inter Partes Review Requests, Week of September 16, 2013
| September 23, 2013
An interesting inter partes review request was filed by Unified Patents last week against Clouding IP’s U.S. Patent No. 6,738,799 (see inter partes review Request No. (2)). Oracle had filed two inter partes review petitions against the ‘799 patent, that were later terminated by the Patent Office on the basis of a settlement agreement Oracle and Clouding IP. On Monday Unified essentially refiled Oracle’s petitions against the ‘799 patent. Unified explained that the “instant petition challenges the same claims under the same grounds on which the PTAB instituted trial in the IPR-073 petition. The instant petition also includes an additional ground from the IPR-261 petition that directly refutes the arguments that the Patent Owner made to distinguish its claims in the IPR-073 petition.” (Emphasis in original).
Clouding IP has sued a number of Internet companies for infringement of the ‘799 patent, including EMC, Verizon, Amazon.com, and Google. Unified’s tactic of copying Oracle’s petitions is similar to the recent approach of major companies that have replied to infringement lawsuits by joining together in inter partes reviews of those patents. We expect to see this trend – of one company stepping into the shoes of another company in an inter partes review proceeding – to accelerate.
Inter Partes Review Sought for Honeywell Refrigerant Patent, Week of September 9, 2013
| September 16, 2013
Mexichem Amanco Holding requested inter partes review of Honeywell’s U.S. Patent No. 8,444,874 (see inter partes review Request No. (1)). The ‘874 patent claims a specific tetrafluoropropene used in heat transfer systems such as refrigerators. Such fluorocarbons are considered to be more environmentally friendly than traditional CFCs and have been the subject of intense litigation in recent years, though the ‘874 patent does not appear to be the subject of any infringement actions.
GSI Commerce Solutions requested post-grant review of a Clear With Computers patent (see CBM Request (2)). CWC has sued 17 companies for infringement of the patent.
And Fritsch of Germany filed for ex parte reexamination of a General Mills dough cutter patent (see ex parte Request No. (1)). The two companies are in litigation over the patent in Minnesota.
Samsung Requests Inter Partes Review of Five Multimedia Display Patents, Week of September 2, 2013
| September 9, 2013
This past Thursday, Samsung requested inter partes review of five patents, owned by Virginia Innovation Sciences, that claim methods and computer readable media for converting video signals on a mobile terminal so that they may be reproduced on other display terminals (see inter partes review Request Nos. (8) through (12). Virginia Innovation has sued Samsung in the Eastern District of Virginia for infringement of the patents. Last month, Samsung filed a motion for summary judgment that the Virginia Innovation patents were invalid over the prior art (“VIS accused Samsung’s products of infringing the asserted claims based on their supposed use of well-known industry standard specification, notwithstanding that these same industry standard specifications were prior art”; emphasis in original). The District Court is likely to move more quickly than the Patent Office, in this race of filings.
Microsoft requested inter partes review of two information storage and retrieval patents (see inter partes review Request Nos. (4) & (5)). The owner of the patents, Enfish, has sued Microsoft in the Central District of California for infringement.
The ex parte reexamination request filed Tuesday by Brookwood against a silicone coated web patent owned Nextec Applications (see ex parte Request No. (2)) is interesting because there is parallel infringement action pending against the United States in the Court of Federal Claims. How might the Court consider a stay request?
What May a Patentee Argue in its Preliminary Response?
| September 6, 2013
A patent owner’s first opportunity to challenge a request for inter partes review is by filing a “preliminary response.” The relevant portion of the AIA states:
[i]f an inter partes review petition is filed under section 311, the patent owner shall have the right to file a preliminary response to the petition, within a time period set by the Director that sets forth reasons why no inter partes review should be instituted based upon the failure of the petition to meet any requirement of this chapter.
(35 U.S.C. § 313: emphasis added). Are there any limits on what the patent owner may include? Is there anything that the patent owner must include?
Those questions were raised Tuesday in Athena Automation v. Husky Injection, IPR2013-00290. Petitioner asked for authorization to strike patentee’s preliminary response, arguing that it did not comply with 35 U.S.C. § 313 because it was directed solely to the doctrine of assignor estoppel. According to the petitioner, the patent owner’s preliminary response may include only arguments that the petition fails to meet one or more of the requirements recited in the inter partes review provisions in the AIA. Arguments unrelated to those provisions – such as assignor estoppel –are not permitted, the patentee contended.
Section 101 Eligibility Challenge to Versata Patent, Week of August 26, 2013
| September 3, 2013
