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
Preliminary Injunction Softened after Claims are Rejected in Reexamination
| February 15, 2011
The list of possible benefits from reexamination for an accused infringer grew a little longer last week. In Celsis In Vitro v. CellzDirect, (Case No. 1:10-cv-004053), Judge Milton Shadur modified a preliminary injunction to permit defendants, under certain circumstances, to sell products made by their accused methods, in light of the PTO’s rejection of the claims-in-suit in a copending reexamination proceeding.
Celsis sued CellzDirect and Invitrogen in June 2010, for infringement of U.S. Patent No. 7,604,929, and in September Judge Shadur preliminarily enjoined defendants from selling the products made by the accused method during the pendency of the case. On October 8, the patentee Celsis requested ex parte reexamination of the ‘929 patent, and on December 16, the examiner rejected the claims-in-suit over a series of prior art references. The defendants then argued to the court that this rejection justified revision of the preliminary injunction. Judge Shadur agreed and has now revised his earlier order to allow defendants “to fill any outstanding or repeat orders from prior purchasers.” Defendants are also allowed to use their existing inventory, for instance in their own comparison testing.
Read More/続きを読む
Judge Ward Refuses to Stay Permanent Injunction Despite Pending Reexaminations
| January 28, 2011
On Monday, Judge John Ward of the Eastern District of Texas rejected defendants’ argument in SynQor v. Artesyn, 2011 U.S. Dist. LEXIS 6439 that a permanent injunction against future infringement should be stayed because of pending reexaminations of the patents-in-suit.
Judge Ward had issued the injunction after a jury found that defendants had infringed each of the patents. A series of motions for judgment as a matter of law were pending. Defendants argued that developments in copending reexamination proceedings justified staying the injunction: the PTO had found a substantial new question of patentability for each of the claims asserted at trial; six of the ten asserted claims had received non-final rejections; none of the asserted claims were found to be patentable; and the claims of one of the patents were found to be entitled to priority only as of the patent’s actual filing date.
Read More/続きを読む
Patentee’s Recent Remarks in Reexamination do not Affect Claim Construction
| January 28, 2011
It is commonly held that a patentee’s remarks made during reexamination, like applicant’s remarks made during original prosecution, are relevant to a court’s construction of the claims. There are exceptions, however, such as where the patentee’s remarks are not directly related to pending rejections. (See post of October 28, 2010). Thus, a patentee’s remarks in reexamination, that do not appear to be necessitated by the examiner’s rejections, are suspect as being self-serving.
Another exception to the general rule occurred this Monday in Mondis Technology, Ltd. v. Hon Hai Precision Ind., 2011 U.S. Dist. LEXIS 7140, where the patentee supported its interpretation of several claim terms by citing its own remarks in a pending reexamination proceeding.
Read More/続きを読む
再審査でのクレーム補正に起因する損害賠償の免責
| January 24, 2011
再審査で特許権者が直面する大きな問題は、先行技術を克服するためにクレームを補正する必要が生じるかも知れないが、その反面そのようなクレーム範囲の変更によって、再審査以前の期間すべてについて損害回復の機会を失う可能性があることである。たとえイ号製品が元の特許クレームと補正後のクレームの双方の範囲内であっても、侵害者は「中用実施件（intervening right）」を有する。また時として、クレーム補正から再審査終了まで時間が経過する間に、侵害者に補正クレームを回避するデザイン変更の時間を許し、あるいは市場が別の技術の方向へ動き出すこともあるであろう。
先週、特許庁再審査で必要とされることと、後日訴訟で生じる不都合な結果の間のテンションが明白となった。
Read More/続きを読む
Claim Amendments in Reexamination Eliminate Patentee’s Right to Past Damages
| January 18, 2011
A major challenge facing patentees in reexamination is the dilemma that they may need to amend a claim to distinguish it over the cited prior art, and yet such a change in the scope of the claim eliminates the possibility of the patentee’s recovering damages for the entire period preceding conclusion of the reexamination. An infringer is entitled to such an “intervening right” even where the accused product falls within the scope of both the originally issued claim and the amended claim. In some cases, the length of time between the claim amendment and the end of the reexamination affords the patentee ample time in which to design around the amended claim, or perhaps the market simply moves on to a different technology.
This tension between what needs to be done at the PTO and the adverse consequences in a later court case was clearly in evidence last week.
Read More/続きを読む
Facebook Advances Inequitable Conduct Allegation Through Reexamination Request
| January 3, 2011
A company accused of patent infringement requests reexamination with the obvious goal of invalidating the patent. But requesting reexamination may produce certain collateral benefits, such as establishing the “materiality” of a prior art reference for an inequitable conduct defense. Facebook has demonstrated the possibility of this collateral benefit in the pending case, Tele-Publishing, Inc. v. Facebook, Inc., et al., (Case No. 1:09-cv-11686-DPW (D. Mass.)).
There, Tele-Publishing (TPI) sued Facebook in October 2009 for infringing U.S. Patent No. 6,253,216 entitled “Method and Apparatus for Providing a Personal Page.” The invention claimed is for a method and apparatus for providing a personal page over a computer network, so that users may securely display personal information to other computer network users. In December 2009, Facebook requested reexamination of the ‘216 patent, asserting that it was invalid over an earlier patent to de Hond. The PTO granted reexamination. An initial rejection of all claims issued in April, and a final rejection issued in August.
Facebook now relies upon the results to-date from the reexamination for a motion for summary judgment that the ‘216 patent is unenforceable because of applicants’ inequitable conduct during the original prosecution. To show materiality, Facebook argues that the “reexamination proceedings and the PTO’s conclusions confirm that de Hond would have been important (and therefore material) during the original prosecution.”
Read More/続きを読む
Court Finds Claim Construction in Reexamination at PTO to be “Merely One Factor” in Determining Claim Meaning
| December 20, 2010
Judge Ralph Erickson of the District Court of North Dakota was presented in Alien Technology Corp. vs. Intermec, Inc. with an unusual request: the patentee asked him to reconsider a two-year old summary judgment of non-infringement that had been based on a narrow claim construction, in light of a recent PTO reexamination certificate affirming the patentability of most of the claims, based on a broad claim construction. The patentee characterized the reexamination certificate as “new evidence” and asked the Judge to “’harmonize’ the Court’s rulings with the USPTO’s findings.”
The patentee’s motion was immensely complicated by the fact that Judge Erickson and the accused infringer had not been previously informed of the pending reexamination. The Judge therefore denied the motion, finding that the reexamination was not new evidence, and that the patentee had “demonstrated a lack of diligence and candor” by “covertly participating in the reexamination process before the USPTO…” The Judge then listed the occasions over the course of the case when the patentee might have informed the Court of the reexamination, but failed to do so.
Even without this complication, however, Judge Erickson indicated that he would not have granted the motion. The Judge explained his understanding that whereas the PTO is required to give claims their broadest reasonable construction, courts must give claims their “correct construction.” The PTO’s “construction is merely one factor to be considered in the court’s determination.” The Judge concluded, with a hint of tartness, that “’findings’ of the USPTO do not constitute persuasive and binding evidence of the meaning of the disputed terms warranting amendment of reversal of the” earlier claim construction and summary judgment orders.
Hindsight is 20-20, and it is difficult for those not involved in a particular case to appreciate fully its unique complexities. Still, it might have been better for the patentee to have brought the reexamination to the Court’s attention sooner. Also, it is a little surprising in this Age of PAIR that the accused infringer was unaware of the reexamination.
Reexamination Files Admitted for Issues of Willfulness, Estoppel & Inequitable Conduct, but not Validity
| November 18, 2010
Last week, Tesco won its trial in Texas against Weatherford Int’l and several tool companies with a jury verdict that Defendants had infringed at least some valid claims of Tesco’s two patents – U.S. Patent Nos. 7,140,443 & 7,377,324 – related to drilling rig pipes. What interests us, however, is Judge Keith Ellison’s pre-trial order granting in-part/denying in-part Defendants’ motion to strike “as summary judgment evidence” the PTO files for the reexamination of those two patents.
Prior to consideration of a series of summary judgment motions, Judge Ellison found that “the examiner’s rejections and confirmations of claims in the reexamination proceedings are inadmissible for purposes of proving invalidity of patents at the summary judgment stage.” He explained that PTO examiners follow standards different from those applied by the courts because the statutory presumption of validity and the requirement of clear and convincing evidence are not followed in reexamination. Accordingly, the examiner’s conclusions regarding validity “have no probative value.” Judge Ellison added that even if that they had some probative value, that value would be outweighed by the “serious risk that a jury would view the examiners as expert and authoritative.”
Read More/続きを読む
