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
RPX Takes on Four VirnetX Patents, Week of November 18, 2013
| November 25, 2013
Last Monday we reported that RPX had petitioned for inter partes review of MacroSolve patent that had been the basis for 67 infringement actions against a wide range of financial and retail concerns. This past week, RPX filed seven inter partes review requests against four network protocol patents owned by VirnetX (see inter partes review Request Nos. (15), (16), (17) & (18)). The patents have been the source of an enormous flow of licensing revenue for VirnetX, resulting from a series of highly successful infringement actions in the Easter District of Texas.
At the same time, the four VirnetX patents have been involved in various reexaminations in which the claims are under either non-final rejection or final rejection. Apple and New Bay Capital LLC have also filed inter partes review petitions against the VirnetX patents. RPX explains “that the grounds presented in this petition closely parallel the grounds presented in the petitions filed by Apple and New Bay Capital.” RPX states that it “has established a Research & Development program (“RPX R&D”) through which it advances a variety of initiatives [with the goals of] increasing transparency by collecting information regarding enforcement activities of entities or patents, tracking patent sales, collecting and evaluating prior art, and compiling databases of this information, which RPX makes available to its clients. In addition, as part of its RPX R&D program, RPX contests patents of questionable validity by filing requests for post-issuance review with the PTO.”
Nintendo requested inter partes review of three patents related to methods for determining orientation in space of hand-held devices in video games (see inter partes review Request Nos (9), (10) & (11)). The owner of the patents, Motion Games, has sued Nintendo and three other companies in the Eastern District of Texas for infringement of the patents.
RPX Seeks Inter Partes Review of Data Management Patent, Week of November 11, 2013
| November 18, 2013
Since 2011 MacroSolve has filed suit in the Eastern District of Texas against 67 retail, financial, and social media companies – among them American Express, Bank of America, Chipotle, Comcast, Dropbox, Facebook, Home Box Office, Pandora Media, and United Airlines,– for infringement of its U.S. Patent No. 7,822,816. The ‘816 patent states that in one embodiment, it claims a method for collecting “survey data and making the responses to the survey available to a client in virtually real time over the Internet.” Last week RPX, who has not been sued, requested inter partes review of the ‘816 patent (see inter partes review Request No. (5)).
RPX is a patent-holding company that assists other companies in resisting infringement allegations. RPX explains that it uses “capital from annual subscription fees [from clients] to acquire dangerous patents and patent rights, with each RPX client receiving a license to every asset we own. We acquire those patents for defensive purposes, and we have committed to never assert these patents. As the network continues to grow and our service offerings expand, we are removing progressively more high-threat patents – and more high-cost risk – from the operating ecosystem.” RPX’s business model evidently also includes challenges at the Patent Office to the validity of adverse patents.
Bank of America and PNC Financial each requested post-grant review of four Intellectual Ventures patents related to Internet commerce (see covered business method post-grant review Request Nos. (1) through (4)). Each of the four petitions relies entirely on allegations that the patents claim mere abstractions that are patent-ineligible under 35 U.S.C. § 101. Six other post-grant review petitions were filed.
Omega-3 Composition Claims Challenged, Week of November 4, 2013
| November 13, 2013
Aker BioMarine AS has requested inter partes review of a patent claiming capsules that contain “an Antarctic krill oil extract” comprising specification phospholipids, the phospholipids including DHA and APA essential fatty acids derived from fish (see inter partes review Request No. (5)). the owner of the patent, Neptune Techs. & Bioressources, has sued Aker for infringement, both in Delaware District Court and at the U.S. International Trade Commission.
The steady stream of requests for post-grant review of covered business method patents continued last week with four new petitions. The invalidity grounds asserted go beyond the anticipation and obviousness allegations to which inter partes review requests are limited – two of last week’s CBM petitions included assertions that the claims were invalid under 35 U.S.C. § 101 because they recited only abstract ideas, and two others included assertions of indefiniteness under 35 U.S.C. § 112.
Two patent owners – Honeywell and ThermoLife – requested ex parte reexamination of their own patents (see ex parte Request Nos. (3) & (5)). Although this was common in the early years of reexamination, it is somewhat unusual today.
Apotex Tests Wyeth Anti-Bacterial Composition Patent, Week of October 28, 2013
| November 4, 2013
Most notable among the filings last week was an inter partes review request submitted by Sughrue’s Kenneth Burchfiel and Travis Ribar, on behalf of Apotex, against Wyeth’s U.S Patent No. 7,879,828 (see inter partes review Request No. (8)). The ‘828 patent claims a tigecycline composition having “improved stability in both solid and solution states.” According to the ‘828 patent, tigecycline is an antibiotic in the tetracycline family that “has been shown to work where other antibiotics have failed.” Wyeth sued Sandoz in 2009 for infringement of both the ‘828 patent and Reissue Patent No. 40,188, but the case was later dismissed based on a stipulation of the parties.
Medtronic filed two inter partes review requests against a patent for an aortic valve replacement owned by Troy Norred (see inter partes review Request No. (4)). Dr. Norred sued Medtronic for infringement of the patent earlier this year. Medtronic also requested inter partes review of a stent patent owned by Valentine Rhodes (see inter partes review Request No. (1)).
