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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Must a Petition for Inter Partes Review Construe the Patent Claims?
| January 3, 2013
The Patent Owner in Micron Technology v. The University of Illinois, IPR2013-00008, has asked the APJs to reject the Requester’s Petition because it fails to construe the challenged claims.
The Patent Owner first cites the Patent Office Rules as requiring an explanation of “how the challenged claim is to be construed” and “how the construed claim is unpatentable.” 37 CFR 42.104(b)(3)(4). It then refers to the related passage from the PTO’s Trial Practice Guide
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BOS GmbH Files First Preliminary Response by Patentee in Inter Partes Review
| December 27, 2012
A Preliminary Response was filed yesterday (under 35 U.S.C. § 313) by the patent owner in Macauto USA v. BOS GmbH, IPR2012-00004. In September Macauto USA had requested inter partes review of BOS’s U.S. Patent No. 6,422,291 claiming a mechanism for car window shades. In yesterday’s Response, BOS asked that the Patent Office decline to institute the requested inter partes review.
BOS’s Preliminary Response will interest practitioners, first because it asks the APJs to consider the question of who is a “real party in interest.” More generally, the APJ’s analysis of BOS’s Response is likely to reveal how closely they will scrutinize IPR Requests to determine of whether there is “a reasonable likelihood” that the Petitioner would prevail in its challenge to at least one claim of the patent.
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Reexaminations Concurrent with IPR, Normally Not Stayed
| November 27, 2012
When the Patent Office institutes an inter partes review of a patent, should the APJs stay any concurrent proceedings, such as a co-pending reexamination of the same patent? In CBS Interactive v. Helferich Patent Licensing, IPR2013-00033, APJ Joni Chang answered that ordinarily, reexaminations would not be stayed – “because in the absence of good cause, reexaminations are conducted with special dispatch.”
The answer, however, was different because of the specific facts of in the CBS case. APJ Chang first acknowledged that there was no overlap of claims between the reexamination and the IPR – only the patent’s independent claims were challenged in the reexamination and only its dependent claims, in the IPR. On the other hand, there was substantial overlap between the two proceedings: the same grounds for unpatentability were asserted, the same prior art was applied, and four of the five petitioners in the IPR were also requesters in the reexamination.
APJs Need to Clarify the Pro Hac Vice Standard
| November 26, 2012
The APJs are taking very seriously motions by an attorney for pro hac vice permission to practice in an IPR or a CBM, as well the APJs should. Such an attorney is required to submit a declaration answering specific questions regarding his or her legal experience and character. Among those questions is whether the attorney has ever been denied permission to practice before any court or before any administrative agency.
Does such “denial” include instances where an attorney has failed to pass a bar exam or failed to pass the PTO’s patent agents’ exam? One would think not. But a very capable acquaintance of mine, who was required to file a declaration for pro hac vice permission and who had failed the patent agents’ exam, called the Patent Office to be sure. The answer was essentially “I-don’t-know-but-you-should-mention-that-failure-in-your-declaration.” And so my acquaintance complied with the advice and included the failure in the declaration.
Many of our colleagues, including some of the most capable, have at one time or another failed to pass an admissions test, and such failure in no way calls into question their ability or character. The APJs should therefore clarify their declaration requirements so that such failures need not become part of the public record in IPR and CBM proceedings.
