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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)
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- "The Interplay between Reexaminations, Preliminary Injunctions and Stays of Litigation" - by Dennis Crouch at PATENTLYO.COM
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APJs Take Literal Approach in IPR Institutions
| June 28, 2013
Patent examiners, either considering original applications or reexamining issued patents, tend to operate with a certain amount of flexibility. For instance, where a reexamination request asserts that a claim is anticipated by a particular prior art reference, an examiner might conclude that the claim is not anticipated, but is obvious over the reference and reject the claim accordingly. The APJs in their inter partes review institution decisions, in contrast, rule on only the validity issues expressly presented to them.
Last week’s institution decision in Medline Industries v. Paul Hatrmann AG, IPR2013-00173, is exemplary. The petition asked for inter partes review, asserting that independent claim 1 and dependent claims 4-7, 10, 14 & 16 were anticipated by the Goates Patent.; it also asserted that several other dependent claims were obvious over Goates in combination with certain secondary references.
The APJs found that Goates met each limitation of claim 1 and the challenged dependent claims, except for the so-called “retaining forces” limitation in claim 1. The APJs therefore denied inter partes review of those claims based on Goates as an anticipatory reference. On the other hand, the APJs concluded that the secondary reference “Karami” did satisfy the “retaining forces” limitation and that there was a “reasonable likelihood” that the secondary reference would have motivated one skilled in the art to modify Goates to meet the requirements of claims 2-3 and 8-9. They therefore ordered inter partes review of dependent claims 2-3 and 8-9 on the issue of whether those claims would be obvious over Goates in combination with the secondary Karami reference.
Instructions from the APJs on Amending Claims in Inter Partes Review
| June 16, 2013
Last week in a Decision in Idle Free Systems v. Bergstrom, IPR 2012-00027, the APJs continued their effort to instruct practitioners on acceptable procedures in inter partes review proceedings, in this case the proper steps for amending claims. The specific outcome of the Decision – in essence to allow the patentee a second chance to amend its claims – is of little general interest. What is of interest is the APJ’s statement of their expectations of patent owners in future cases.
Guidance from the Board on Claim Amendments in Inter Partes Review
| June 4, 2013
In the earlier days of the new AIA post-issuance proceedings, the Patent Trial & Appeal has written a series of decisions, intended to explain to practitioners of the procedures to be followed in those proceedings.
Yesterday, in Nichia v. Emcore, IPR2012-00005 (Paper 27), the Board summarized what is required of a patent owner hoping to amend its claims. The Petitioner Nichia had initiated a conference call with the Board and the Patent Owner Emcore to clarify whether the latter had complied with its duty to “confer with the Board” before filing its motion to amend its claims.
The Board determined that Emcore had complied with that duty, noting (1) that Emcore had filed notice indicating that it intended to file a motion to amend, and (2) that the Board had issued an order from an earlier conference call in which the patent owner was cautioned that it “must explain how the proposed substitute claims obviates the ground of unpatentability authorized in this trial and clearly identify where in the written description support can be found.” In the present order, the Board also indicated that Emcore must avoid submitting “an unreasonable number of substitute claims … .”
Board Takes “Hard Line” with Patent Owners in IPR Institution Decisions
| May 6, 2013
We have previously commented that the Board has been strict with petitioners in its decisions on whether to institute inter partes review. Inter partes review is denied where the petition fails to abide by all the formal requirements prescribed by the PTO Rules, or where it fails to clearly explain and link the claim limitations to specific prior art disclosures. Proposed grounds for review are rejected, as well, where they appear to overlap other proposed grounds.
We also see that the Board is equally strict with patent owners. The Board’s decision last Tuesday instituting inter partes review in Innolux v. Semiconductor Energy Laboratory, IPR2013-00064 is a good example. In that case, the patent owner SEL filed a preliminary response asserting that the proposed combinations of prior art references did not justify review, but also asserting that review should not be instituted because of two other, “more procedural,” reasons. With the same rigor as it applies to petitioners’ arguments, the Board looked at the patent owner’s arguments and found them lacking.
First, the patent owner contended that the petition was improper under 35 U.S.C. § 325(d) because each of the cited references, except for a cumulative secondary reference, had been cited during the prosecution of the application leading to the patent. The Board was not persuaded – it explained that the fact that the references were considered in the original prosecution is a factor which the Board “may take into account” under 35 U.S.C. § 325(d). The patent owner, however, failed to show that the original examiner had considered “substantially the same . . . arguments,” as presented in the petition. “Absent a showing of ‘substantially the same . . . arguments,’ id., and considering that petition includes evidence not before the original patent examiner,” including the secondary reference, even if cumulative, and an expert declaration, the patent owner “does not show that the inter partes review of the ‘311 Patent would be improper under 35 U.S.C. § 325(d).”
Is the APJs’ Decision to Institute Design Patent IPR also their Final Decision?
| April 30, 2013
The APJs’ decision last week to institute inter partes review in Munchkin, Inc. et al. v. Luv’n Care, Ltd., IPR2013-00072 (involving Patent D617,465 for a baby’s drinking cup) has drawn a good deal of attention as the first IPR of a design patent, and rightfully so. If earlier experience with reexamination of design patents is any clue, inter partes review is likely to become a highly effective weapon for accused infringers to pursue validity challenges. Whereas original prosecution of design patents often resembles a registration system, reexamination of such patents is sometimes more like a killing field – the “kill rate” of design patents in both ex parte and inter partes reexamination being quite high.
Review of the text of the Munchkin decision itself, however, reveals what might be an even harsher outcome: that, at least in the case, the APJ’s decision to institute inter partes review is actually their final decision, holding the ‘465 patent invalid.
APJs Deny Request to Add New Grounds to Inter Partes Review
| April 15, 2013
The APJs have shown a determination to enforce the inter partes review rules strictly, in order to prevent their dockets from becoming unmanageable.
Their recent decision in Research In Motion v. MobileMedia Ideas, IPR2013-00016, is a good example. In March the APJs instituted the review, finding that RIM had demonstrated a likelihood that it would prevail against the identified claims, based on two distinct combinations of prior art references. In the meantime, in a parallel infringement action in Delaware, the trial judge issued summary judgment that two of the identified claims were anticipated by a third prior art reference, one that had not been mentioned in RIM’s petition for review. RIM therefore asked the APJs to add to the review proceeding a new ground for rejection, specifically a ground based on the third reference.
Ranbaxy Obtains Inter Partes Review of HIV Prodrug Patent
| March 19, 2013
Traditionally, most reexamination proceedings have involved electronic or mechanical inventions, and relatively few have concerned pharmaceuticals. Thus far, that pattern has continued with the new AIA inter partes review trials.
There have, however, been a few requests challenging pharmaceutical patents, and earlier this month the APJs decided to institute a trial in Ranbaxy Labs. v. Vertex Pharmaceuticals, IPR2013-00024, involving U.S. Patent No. 6,436,989. The ‘989 patent claims a set of HIV aspartyl protease inhibitors, specifically derivatives of an inhibitor known as “VX-478.” Also claimed are treatment methods involving the administration of the protease inhibitors. The ‘989 patent is the subject of the infringement action ViiV Healthcare Co. v. Mylan, Inc., Case No. 12-cv-1065 (D. Del.)).
In finding “a reasonable likelihood that the petitioner would prevail with respect to at least” one claim, the APJs undertook the customary “lead compound” analysis. They determined that the primary reference relied upon by the Petitioner Ranbaxy disclosed a protease inhibitor similar those claimed, except that the prior art compound did not have a solubilizing salt. They also found that the disclosed protease inhibitors were known to have a solubility problem and that various salts, including the patent owner Vertex’s preferred phosphate ester salt were known to improve solubility.
Instructions from APJs on Rules of Evidence
| March 18, 2013
When the patent owner filed its Preliminary Response in LKQ Corp. v. Clearlamp, LLC, IPR2013-00020, it challenged three references, taken from the Internet and relied upon in the Request. These Internet references, the patent owner argued, were not authenticated, amounted to hearsay, and therefore should be excluded from the evidentiary record.
The APJs might simply have ignored the patent owners’ remarks, but chose instead to treat them as a motion to exclude the three references. That motion, the APJs found, was premature because it failed to follow the procedural steps required by the applicable rule. They explained:
When a party objects to evidence that was submitted during a preliminary proceeding, such an objection must be served within ten business days of the institution of trial. The objection to the evidence must identify the grounds for objection with sufficient particularity to allow correction in the form of supplemental evidence.
Microsoft Resists Discovery in Inter Partes Review
| March 18, 2013
The APJs continue to show their resolve to keep a narrow focus in inter partes review proceedings. Last week, in Microsoft v. Proxyconn, IPR2012-00026 & IPR2013-00109, the APJs denied a motion by the patentee Proxyconn for additional discovery on the issue of secondary considerations, again demonstrating their distaste for expansive, litigation-style discovery requests.
Inter partes review proceedings entail two types of discovery, “routine” and “additional.” The former is defined narrowly in Rule 41.51(b)(1):
(i) Unless previously served or otherwise by agreement of the parties, any exhibit cited in a paper or in testimony must be served with the citing paper or testimony.
(ii) Cross examination of affidavit testimony is authorized within such time period as the Board may set.
(iii) Unless previously served, a party must serve relevant information that is inconsistent with a position advanced by the party during the proceeding concurrent with the filing of the documents or things that contains the inconsistency. This requirement does not make discoverable anything otherwise protected by legally recognized privileges such as attorney-client or attorney work product. This requirement extends to inventors, corporate officers, and persons involved in the preparation or filing of the documents or things.
Another Infringement Action Stayed for IPR
| March 13, 2013
Initially, at least, trial judges appear to favor staying infringement actions to allow the Patent Office to resolve the prior art validity issues in the new AIA inter partes review proceedings. In earlier practice with reexamination, trial judges were often reluctant to stay an infringement case where the parties directly compete, i.e., where the patentee is at greater risk of suffering irreparable harm from a stay. With the shorter pendency promised by inter partes review, judges might be less concerned with the possibility of such prejudice.
That is certainly true for Judge Steven Merryday of the Middle District of Florida who on Monday stayed Capriola Corp et al. v. LaRose Indus. et al., (8:12-cv-2346), pending completion of an inter partes review requested by the accused infringer at the end of January. Judge Merryday acknowledged the fact that the parties are direct competitors for the patented product, but characterized the parties’ assertions on this and other points as “the usual array of accusations and counter-accusations.” He pointedly noted “the statutory arrangement [for inter partes review] promis[ing] an expeditious response from [the] PTO,” reasoning that “if the PTO declines inter partes review, little time is lost, but if [the] PTO grants inter partes review, the promise is greater for an important contribution by the PTO to resolution of the governing issues in the litigation.”
