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
PTO Statistics
Attack by Honda & Others on Cruise Control Patent, Among the Requests Week of 23 December 2013
| December 30, 2013
Last Monday American Honda Motor requested inter partes review of U.S. Patent No. 6,324,463 (see inter partes review Request No. (4)) The ‘463 patent is owned by Cruise Control Technologies that has sued 15 car companies for infringement; the patent claims “a system for indicating the operational status and parameters of a cruise control system for use in a human operated vehicle.” Simultaneously, Nissan North America and six other automakers filed their own petitions for inter partes review of the ‘463 patent (see inter partes review Request No. (5)). These petitions come on the heels of two requests filed the previous week by Subaru and Toyota. Each of the four petitions proposes a different set of prior art rejections. This approach of multiple petitions against a single patent has become a common method for requestors to avoid the page limit on inter partes requests.
TRW Challenges 10 Car Headlight Patents, among the Requests Week of December 16, 2013
| December 23, 2013
Over a two-day period, TRW requested inter partes review of 10 Magna Electronics patents, filing two requests against three of those patents (see inter partes review Request Nos. (2) and (4) through (15)). The patents all relate to systems for controlling automobile headlights. Magna has sued TRW for infringement of the patents in the Western District of Michigan.
Subaru, Toyota and Ford each requested inter partes review of U.S. Patent No. 6,324,463 that claims a “system for indicating the operational status and parameters of a cruise control system for use in a human operated vehicle” (see inter partes review Request Nos. (24), (25) & (26)). The owner of the ‘463 patent, Cruise Control Technologies, has sued 15 car companies for infringement. Each of the three Requests proposes distinct prior art rejections of the claims. These filings follow Cruise Control’s amendment of the ‘463 claims in late October in a pending ex parte reexamination.
And Netflix filed requests against four OpenTV patents (see inter partes review Request Nos. (2), (16), (18) & (23)), Ford against two TMC Fuel Injection patents (see inter partes review Request Nos. (21 & (22)), and Apple against a WhitServe patent (see inter partes review Request No. (17)).
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Cisco Seeks Inter Partes Review of Networks Patent, Requests Filed the Week of December 9, 2013
| December 16, 2013
Cisco petitioned for inter partes review of U.S. Patent No. 7,724,879 which claims a method for determining “the availability of a called party before placing a communication from the calling party to the called party” (see inter partes review Request No. (5)). The ‘879 patent is owned by AIP Acquisition who has sued several large cable companies for infringement. The ‘879 patent is also the subject of a pending inter partes review, IPR2013-00296, filed by Level 3 Communications and instituted by the APJs on October 31, 2013.
The following inter partes review requests were filed:
- IPR2014-00243 (electronically filed) – U.S. Patent No. 7,303,992 entitled COPPER ELECTRODEPOSITION IN MICROELECTRONICS, which is owned by Enthone Inc. Filed by Moses Lake Industries, Inc. on December 10, 2013. The ‘992 patent is asserted in the patent infringement action styled Enthone Inc. v. Moses Lake Industries, Inc.(Case No. 1:13-cv-1054-TJM-RFT (N.D.N.Y.)).
- IPR2014-00244 (electronically filed) – U.S. Patent No. 5,793,302 entitled METHOD FOR SECURING INFORMATION RELEVANT TO A TRANSACTION, which is owned by Leon Stambler. Filed by Fifth Third Bank on December 9, 2013. The ‘302 patent is asserted in the patent infringement action styled Leon Stambler v. Fifth Third Bancorp and Fifth Third Bank (Case No. 2:12-cv-675-JRG (E.D. Tex.). The Federal Reserve had previously petitioned for inter partes review of the ‘302 patent in IPR2013-00341 and IPT2013-00409, to which the present request raises identical issues; and as well the Federal Reserve had previously challenged the other patent at issue in the infringement litigation, U.S. Patent No. 5,936,541, in IPR2013-00344 and IPR2013-00406.
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Fifty-Three Patents Challenged, Week of December 2, 2013
| December 9, 2013
The number of new patent challenges continues to accelerate – last week saw thirty-two requests for inter partes review, three for post-grant review, and eighteen for ex parte reexamination. Most notably, Apple, either alone or with one or more co-requesters, attacked six patents owned by either Arendi, THX, or VirnetX (see inter partes review Request Nos. (1), (4), (5), (25), (26), & (28)). In each instance, Apple is being sued for infringement of the respective patent now being challenged. Apple was also the target of an anonymous 180-page request for ex parte reexamination (see ex parte Request No. (7)) against its U.S. Patent No. 8,463,238 claiming a mobile device base station.
There is also an increasing pattern of companies filing joint requests. For instance, Samsung, LG and HTC teamed up to request inter partes review of two content delivery patents owned by Affinity Labs of Texas (see inter partes review Request Nos. (6) & (8)).
Toshiba Samsung Storage requested inter partes review of two LG recording media patents (see inter partes review Request Nos. (2) & (3)). The companies are involved in an infringement action in Delaware.
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Inter Partes Reexamination Estoppel Central in Sanctions Decision
| December 3, 2013
Judge Mitchell Goldberg’s decision yesterday in Bortex Industry v. Fiber Optic Designs (12-cv-4228, E.D. Pa.) – entering judgment against the accused infringer because of discovery misconduct – sheds light on the statutory estoppel faced by those who sponsor, but do not themselves file, inter partes reexamination requests. 35 U.S.C. § 315(c) (pre-AIA) (a similar provision applies to AIA inter partes review requests). Essentially, “a real party in interest” to an inter partes reexamination proceeding is estopped from later attacking, in any civil action, the validity of any claim determined to be patentable on any ground which that third party raised or could have raised during the reexamination.
The case began when Bortex Industry, a Chinese maker of LED Christmas lights, sued Fiber Optic Designs (FOD) for declaratory judgment (1) that Bortex’s LED lights did not infringe two patents owned by FOD, and (2) that the patents were invalid because they were obvious over the prior art and because Bortex’s chairman had previously invented the claimed LED lights. FOD counter-claimed for infringement of both patents and moved for preliminary relief further to the stipulated infringement of one of the patents.
Significantly, FOD had successfully sued NEP, a customer of Bortex, in Colorado for infringement of FOD’s patent. During that dispute, FOD’s patent survived an inter partes reexamination in which NEP was listed as the real party in interest. FOD asserted that Bortex had participated in that reexamination and indemnified NEP’s expenses. Accordingly, FOD argued, Bortex had been a real party in interest and would be estopped from asserting in the present litigation any prior art references that had been “raised or could have been raised during the reexamination.”
Inter Partes Review Requested for Two Planet Blue Lip Sync Patents, Week of November 25, 2013
| December 2, 2013
Video game-maker Naught Dog, Inc., a wholly owned subsidiary of Sony Computer Entertainment, has requested inter partes review of U.S. Patent Nos. 6,611,278 and 6,307,576 that claim methods for lip synching sound with the facial expressions of animated characters (see inter partes review Request Nos. (3) & (4)). The owner of the patents, Planet Blue, has sued Naughty Dog for infringement. Planet Blue’s infringement action has been consolidated, along with fourteen other cases, into McRO, Inc. v. Namco Bandai Games America, Inc. (Case No. 2:12-cv-10322-GW-FFMx (C.D. Cal.)). Planet Blue has also asserted the ‘278 and ‘576 patents against Sony Computer Entertainment in a patent infringement action styled McRO, Inc. d/b/a Planet Blue v. Sony Computer Entertainment America, LLC and SCE Santa Monica Studio, Inc. (Case No. 1:12-cv-01514-LPS (D. Del.)); and against Sucker Punch Productions in an action styled McRO, Inc. d/b/a Planet Blue v. Sucker Punch Productions, LLC (Case No. 1:12-cv-01515-LPS (D. Del.)). These infringement actions have not made much progress, and Respondents’ motions to stay pending completion of the inter partes reviews seem likely to be granted.
Inter partes review was also requested for another Intellectual Ventures II patent, this time by Toshiba (see inter partes review Request No. (7)). This past March, Intellectual Ventures I & II sued Toshiba for infringement of the patent, plus nine other patents, related to computer bus interfaces for use in hard disk drives.
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