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
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PTO Statistics
Accused Infringer Wins Absolute Intervening Rights but not Equitable Intervening Rights
| January 29, 2014
Ex parte reexamination and inter partes review offer an accused infringer a number of benefits, even where the patent survives its trial at the Patent Office. Most notable among those benefits is the possibility of the accused infringer obtaining intervening rights based on amendment of the claims during reexamination or review. Such rights are created by 35 U.S.C. § 307(b) which reads:
Any proposed amended or new claim determined to be patentable and incorporated into a patent following a reexamination proceeding will have the same effect as that specified in section 252 of this title for reissued patents on the right of any person who made, purchased, or used within the United States, or imported into the United States, anything patented by such proposed amended or new claim, or who made substantial preparation for the same, prior to issuance of a certificate under the provisions of subsection (a) of this section.
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Anonymous Ex Parte Reexamination Sought against Carnegie Mellon Signal Patents, Among the Requests Week of January 21, 2014
| January 27, 2014
An undisclosed party requested ex parte reexamination of Carnegie Mellon’s U.S. Patent Nos. 6,438,180 and 6,201,839 last Tuesday (see ex parte reexamination Request Nos. (1) & (2)). The ‘180 and ‘839 patents claim methods and receivers related to “signal detectors in magnetic recordings.” In 2012, a jury found the patents to be valid and willfully infringed by Marvell Technology, and awarded Carnegie $1.169 billion in damages.
Post-trial motions, of course, were filed, and earlier this month the trial judge denied a motion by Marvell based on a laches defense. The judge agreed with Marvell that Carnegie had waited too long to sue, but also found that the inequity of Marvell’s willful infringement offset the inequity of Carnegie’s nearly six-year delay in suing . The judge therefore denied Marvell’s motion, concluding with everyone’s favorite bromide from law school: “He who seeks equity must do equity.”
Marvell has promised to appeal the validity finding at the trial court level – and since a final judgment may be years away, Marvell may yet be saved from the billion dollar verdict by the reexamination requests.
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Amneal Pharma Challenge to Oxymorphone Patents, Among the Requests Week of January 13, 2014
| January 22, 2014
In 2012 Endo Pharmaceuticals sued Amneal Pharmaceuticals for infringement of U.S. Patent Nos. 8,309,122 and 8,329,216 that claim certain controlled-release oxymorphone compositions, i.e., pain relievers. This past Thursday Amneal replied by requesting inter partes review of both patents (see inter partes review Request Nos. (13) & (14)). Pharmaceutical patents of other companies as well were attacked last week (see inter partes review Request No. (12) & ex parte reexamination Request No. (5)).
Medical device patents also continue to be targeted at the Patent Office. Inter partes review requests were filed against a knee arthroplasty patent owned by Wright Medical, and a shape memory alloy stent patent owned by Medtronic (see inter partes review Request Nos. (10) & (17)). In both instances, the requester had been sued for infringement.
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Du Pont Attacks Five Monsanto Seed Patents, Among the Requests Week of January 6, 2014
| January 13, 2014
The highlight last week was a set of inter partes review requests filed by du Pont against five Monsanto patents related to automated methods for sampling seeds (see inter partes review Request Nos. (3) through (7)). There does not appear to be any litigation, as yet, regarding these Monsanto patents.
Last week also saw a challenge by Arthrex to a surgical method patent – Smith & Nephew’s U.S. Patent No. 5,601,557 (see ex parte reexamination Request No. (4)). S&N has sued Arthrex for infringement of the ‘557 patent.
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APJs Advise Patentees on Amending Claims
| January 8, 2014
While the APJs are strictly applying the inter partes review rules, they are also proactively advising parties on what is required to comply with those rules. For instance, in a conference call last week in Corning Gilbert v. PPC Broadband (IPR2013-00347), the APJs sua sponte addressed the requirements for a patent owner to amend its claims.
In particular, a proposed amendment is not authorized until the patent owner has shown that the substitute claims are patentable over the prior art.
A motion to amend claims is insufficient if it simply explains why the proposed substitute claims are patentable over the prior art references relied upon in the review. Thus, the patent owner must do more than simply state that none of the prior art references of record discloses the combination claimed, or that no such specific combination is known to the movant. The patent owner must also do more than state that the prior art of record would not have rendered the subject matter of the substitute claims obvious.
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APJs Reject Creative Arguments for not Applying § 315(b) Bar
| January 7, 2014
The APJs are rapidly developing an extensive body of case law applying the deadline under 35 U.S.C. § 315(b) for requesting inter partes review of a patent. That statutory provision states that an
inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c).
(Emphasis added). Last week, the APJs addressed two § 315(b) questions that some readers may not have previously seen.
In October Samsung Electronics petitioned for inter partes review of four patents owned by Fractus, S.A., that claimed multiband antennae useful in mobile telephones (IPR2014-00008, 00011, 00012, 00013). Fractus had served Samsung in February 2013 with a complaint alleging infringement of the four patents; but in May 2009, Fractus had served Samsung with an earlier complaint asserting infringement of a series of patents, including the four patents-in-issue here. Fractus cried foul, claiming that Samsung’s petitions were barred under § 315(b) and should be dismissed.
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Toshiba Attack on Intellectual Ventures IC Patents, Among the Requests Week of December 30, 2013
| January 6, 2014
This past March, Intellectual Ventures I and II sued Toshiba for infringement of ten circuits patents, most of them related to memory. This past week, Toshiba requested inter partes review of two of those ten patents, U.S. Patent Nos. 5,687,132 and 7,836,371 (see inter partes review Requests No. (2) & (9)). The ‘132 patent claims “multiple-bank memories and systems” and the ‘371 patent claims an integrated circuit for “testing and debugging of electronic systems, and, in particular, to on-chip circuits for the test and diagnosis of problems in an integrated circuit.” Toshiba has previously requested inter partes review of two other IV patents (IPR2014-00113, and -00201), and will likely be filing further requests against the other six remaining patents, as well.
Apple filed two petitions for inter partes review of a Rensselaer Polytechnic Institute patent (see inter partes review Request No. (10)). RPI’s patent relates “to user interfaces … that recognize natural language.” Apple asks that these new requests be joined with previously filed request IPR2014-00077. RPI has sued Apple for infringement of the patent.
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