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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APJs Reject Inter Partes Review Request on the Merits, Applying Rigorous Review
| March 5, 2013
The APJs have already shown that they insist on full compliance with the relevant rules for a party petitioning for inter partes review of a patent and for a patent owner opposing such a petition. The APJs have now shown, in Synopsys v. Mentor Graphics, IPR2012-00041, that they are willing to deny a petition, in toto, where they see such a failure.
Synopsys sought inter partes review of Mentor’s U.S. Patent No. 6,947,882. Synopsis’ petition acknowledged the requirement in the rules that the limitations of the claims be construed before being applied to the cited prior art, but asserted that each of the limitations could be understood according to its “plain meaning.” The patent owner did not dispute this point, but the APJs did, finding that the key limitation did require construction and proceeding to construe it without input from the parties.
Lawyers Need to be Very, Very Careful in IPR & Post-Grant Cases
| February 19, 2013
We have previously reported that the APJs are strictly applying the rules in inter partes review and covered business method post-grant review proceedings. Those rules require adherence by the parties to a very precise sequence of procedural steps. A number of lawyers, accustomed to the freer rein they enjoy in District Court cases, have already run afoul of those rules.
In Wowza Media v. Adobe Systems, IPR2013-00054, the Patent Owner filed a letter stating that it intended to file “a preliminary response in the inter partes reexamination.” The APJs pointed out that the “communication … does not comply with the rules” and expunged it from the record. The Patent Owner also appears to have failed to timely file its Mandatory Notice identifying the real party in interest, related matters, lead and back-up counsel, and service information, as required by § 42.14(a)(1). The APJs sua sponte granted an extension of time, and the required Notice has now been filed.
IPR Petitioners should Avoid Boilerplate Allegations
| February 8, 2013
It is common for lawyers to include generic allegations in their pleadings and motions, for instance the boilerplate plea for relief at the end of many complaints, “and such other relief as the Court might deem appropriate.” The notion is to invite the tribunal to consider other favorable possibilities not specifically identified in the pleading.
Such open-ended assertions, however, are not good practice in IPR proceedings, as shown by the APJs’ treatment of such a boilerplate plea in Oracle’s IPR Requests against patents owned by Clouding IP. Oracle has petitioned for IPR of 11 Clouding IP patents and in each Petition Oracle included the following paragraph:
The references addressed below each provide[s] the teaching believed by the Examiner to be missing from the prior art and variously anticipate or render obvious the claimed subject matter. It should be understood that rejections may be premised on alternative combinations of these same references.
APJ’s Enforce Ex Parte Communications Prohibition
| February 1, 2013
Once again the APJs have made clear that the new AIA post-issuance matters are not informal proceedings, this time chastising counsel for breaching the Patent Office’s prohibition against ex parte contacts in inter partes-type matters.
In IPR2012-00035 & 00037, both entitled Nissan North America v. Patent of Collins and Davanloo, Petitioner Nissan sent identical emails directly to APJ Sally Gardner Lane, advising her that the Preliminary Responses filed by Patent Owners Collins and Davanloo contained mathematical errors. These errors, Nissan said, could “materially impact” the proceeding. Specifically, in three instances, the Patent Owners had inaccurately calculated the diameter of modules disclosed in prior applications. According to Nissan’s email, which was not copied to the Patent Owners, this “basic and indisputable mathematical error” was “especially significant because the Patent Owner makes no arguments whatsoever other than those relating to [the] priority date of at least three of the prior art references.” Nissan’s email concluded with the request: “[w]e would like to know the proper procedure for requesting judicial notice of this false statement.”
In an Order seven days later, the APJs did in fact take notice, expressing concern about “the manner and content of the Nissan email.” “It is troubling that Nissan contacted the Board and included information to rebut the Collins Preliminary Response without authorization to do so.” The APJs continued that “[i]t is even more troubling that Nissan did so without providing Collins with a copy of the email.”
APJs Grant Inter Partes Review in BOS Case, Part I
| January 28, 2013
At the end of last month, we reported that the Patent Owner BOS GmbH had filed a Preliminary Response in Macauto USA v. BOS GmbH, IPR2012-00004, asking that the Patent Office decline to institute the requested inter partes review of U.S. Patent No. 6,422,291 (claiming a mechanism for car window shades).
BOS asserted that inter partes review should be denied under 35 U.S.C. § 315(b) because it had sued Macauto Taiwan, parent of Petitioner Macauto USA, more than one year before Macauto’s Petition was filed. Section 315(b) provides:
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).
Will “Assignor Estoppel” Derail Monsanto’s Petition for Inter Partes Review?
| January 25, 2013
Pioneer has filed a Preliminary Response opposing Monsanto’s Petition for inter partes review of U.S. Patent No. 5,518,989, arguing that the Petition is merely to avoid the consequences of the doctrine of assignor estoppel.
Two of the three inventors of the ‘989 patent assigned their rights to Pioneer, and then left Pioneer to work at Monsanto. Pioneer argues that Monsanto was able to infringe the ‘989 patent because of the knowledge and assistance of these inventors/workers.
In support of its position, Pioneer cites the CAFC’s decisions in Checkpoint and Intel. “The doctrine of assignor estoppel prevents a party that assigns a patent to another from later challenging the validity of the assigned patent.” Checkpoint Sys., Inc. v. All-Tag Sec. S.A., 412 F.3d 1331, 1336 (Fed. Cir. 2005). The doctrine encompasses challenges by the assignor himself (typically the inventor), as well as challenges by the assignor’s privies. See, Intel Corp. v. U.S. Int’l Trade Comm’n, 946 F.2d 821, 839 (Fed. Cir. 1991). Pioneer holds that Monsanto, the inventors’ employer, are the assignors’ privy, and thus, barred from challenging the validity of the ‘989 patent.
An Inter Partes Review Practice Tip
| January 23, 2013
The Patent Office has a policy of granting pro hac vice permission to individual lawyers, who are not members of the agency’s Patent Bar, to participate in particular inter partes review proceedings. Such “litigation lawyers” are needed to help address the litigation aspects of inter partes review practice: motions, discovery, etc.
But how many pro hac vice lawyers does a party need? The answer, we learned last Thursday from the APJs in Apotex v. Alcon, IPR2013-00012, is two. The Patent Owner Alcon had moved for the admission of five lawyers, but the APJs denied that motion, asking Alcon to identify the two of those lawyers that it really wants.
The APJs’ order might not seem noteworthy, but it does reflect their firm intent to maintain limits on inter partes review cases so that they not expand into District Court-scale proceedings.
Short-But-Worthwhile Tip for Patentees in Inter Partes Review
| January 22, 2013
Should a patentee file an optional Preliminary Response, trying to persuade the APJs to deny a Petition for inter partes review?
In reexamination practice, patentees almost never file such a paper. They recognize the possibility that the Patent Office might not accept all (or even any) of the proposed grounds for rejection, and worry that a patent owner’s response to the reexamination request might create unnecessary prosecution history against the patent. Perhaps it is the low threshold for granting reexamination – establishing a substantial new question of patentability – that deters patentees from filing a response.
For inter partes review petitions, the practice has been the opposite. Most patentees have filed a detailed Preliminary Response, contesting each of the proposed grounds for rejection, often challenging the Petitioner’s right to pursue IPR.
Did Motorola Mobility Comply with One-Year Deadline for Inter Partes Review Petitions?
| January 14, 2013
Patentee Michael Arnouse filed a Preliminary Response last week arguing, inter alia, that Google’s Motorola Mobility was late in filing its inter partes review Petition against his patent. Motorola Mobility LLC v. Michael Arnouse, IPR2013-00010. The relevant statutory provision is 35 U.S.C. § 315(b) that states:
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.
(Emphasis added). Arnouse’ argument turns on what is meant by the phrase “served with a complaint.”
Arnouse’ first contact with Motorola regarding infringement of his patent was in early 2011. No agreement between the parties was reached and on June 11, 2011, Arnouse filed a complaint for patent infringement in the Disrtict Court of Vermont. On the same day, Arnouse sent a copy of the complaint to Motorola, but did not include the summons issued by the Court. Motorola acknowledged such receipt.
First Covered Business Method Review and Inter Partes Review Instituted
| January 10, 2013
Yesterday the Patent Office “instituted” its first “Covered Business Method Review” and “initiated” its first “Inter Partes Review Trial.”
In SAP America v. Versata Development Group, CBM2012-00001, the APJs determined that the “challenged claims are more likely than not unpatentable under 35 U.S.C. § 101” as claiming “an unpatentable abstract idea.” In doing so, the APJs overruled the patentee’s objection that the post-grant review provision of the AIA does not authorize a § 101 challenge to a patent. 35 U.S.C. § 282(b)(2)&(3). The APJs explained that § 282(b)(2) allows a challenge based “on any ground specified in part II [of the Patent Statute] as a condition of patentability” and that patent eligibility under § 101 is such a condition. The APJs also cited portions of the AIA legislative history as support for their ruling.
