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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Recent Requests
PTO Statistics
Attack on Helferich Patent Licensing/Wireless Science Patent, among the Reexamination Requests Filed Week of May 7, 2012
| May 7, 2012
Helferich Patent Licensing has been extremely aggressive and extremely successful in asserting its portfolio of mobile wireless communications patents against the world’s media and retail giants. According to the patent search outfit M-CAM, Helferich has sued licensed 42 companies, including Apple, Dell, Hitachi, LG, Microsoft, Motorola, NEC, Nissan, Nokia, Samsung, Sharp and Toshiba. In a case filed in 2010, Helferich sued CBS for infringement of 21 patents. This February, it obtained U.S. Patent No. 8,116,741, adding it to the CBS litigation and to six other infringement actions. On Friday CBS and the other defendants in those cases, requested reexamination of the ‘741 patent (see inter partes Request No. (1)).
This is by no means the first reexamination asserted against Helferich, who so far appears to have been quite adept at overcoming the prior art asserted against and adding numerous claims to its patents in reexamination.
Challenges on Intellectual Ventures Computer Circuit Patents among the Reexamination Requests Filed Week of April 23, 2012
| April 30, 2012
An undisclosed party requested reexamination of two computer circuits patents owned by Intellectual Ventures (see ex parte Request Nos. (13) & (14)). IV patents in this technology have come under attack by Xilinx in recent times, and it was quite possibly Xilinx that filed these requests. Incidentally, one of the IV patents was originally owned by LG Semicon and the other by Motorola.
Requests were also against four auto-navigation patents owned by Beacon Navigation (see ex parte Request Nos. (8) to (11)). Beacon has sued quite a few auto-makers in Delaware for infringement of those patents, including Honda, Porsche, BMW and Ford.
Bicycle Rental Station Patent, Subject of Reexamination Request Filed Week of April 16, 2012
| April 23, 2012
If you live in Washington D.C. or in any of a number of other places, you have undoubtedly noticed the bicycle stations scattered across town: with a credit card you can rent a bicycle to ride around town and return it at your convenience to the same or another bicycle station. Isabelle Bettez and Jean-Sebastien Bettez own a patent – U.S. Patent No. 7,898,439 – claiming a solar-powered station.
It is not yet evident from the Patent Office dockets who filed the request.
Google Attack on Computerized Menu Patent among the Reexamination Requests Filed the Week of April 9, 2012
| April 16, 2012
Last September, DietGoal Innovations sued a who’s-who of fast food companies (such as McDonalds and Burger King), plus Google, for infringement of a computerized menu patent: U.S. Patent No. 6,585,516 (see inter partes Request No. (1)). Last week, it was Google that requested reexamination of the ‘516 patent. DietGoal’s patented menu comprises a user interface, a database of food objects organized into meals, and a picture menus, so “that a user can select [a meal] to meet customized eating goal.”
Avery Dennison requested reexamination of two 3M patents for retro-reflective sheeting (see inter partes Request Nos. (8) & (9)). 3M has sued Avery in Minnesota for infringement of those two patents, as well as two other similar patents. Judge Michael Davis issued a claim construction order last month in that infringement action.
Finally, in what might be a first, the United States requested reexamination of a patent for neutralizing landmines (see inter partes Request No. (12)). The inventor-owner of the patent is pursuing an infringement action against the U.S. in the Court of Claims.
Attack on Two Applied Biosystems Nucleic Acid Probes among the Reexamination Requests Filed the Week of April 2, 2012
| April 10, 2012
Reexamination was requested last week of two patents owned by Applied Biosystems, claiming fluorescent probes for detected nucleic acid amplification (see ex parte Request Nos. (1) & (2)). Although the Patent Office records do not yet disclose the identity of the requester, it is likely to be Midland Certified Reagent that has been sued by Applied Biosystems for infringement of the two patents.
Reexamination was also requested for three RFID patents owned by Round Rock Research (see ex parte Request Nos. (8), (9) & (14)). Round Rock also received disappointing news last week when Judge Richard Andrews of Delaware stayed its infringement actions against Dole Food, GAP and Hanesbrands pending completion of the reexamination of the five patents-in-suit. Judge Andrews included an amusing comment in his decision: when dealing with the consideration of whether the stay motion had been filed for a “tactical reason,” he noted the obvious that “parties are constantly seeking tactical advantages.”
Two Quick Notes
| April 3, 2012
1. “Troll Buster” Requests Reexamination
Is it possible to file a reexamination request over the weekend? Of course, and Jeff Oster, aka, “Troll Buster” proved it by requesting reexamination of two nucleic acid probe patents on Sunday (April Fool’s Day, no less) – U.S. Patent Nos. 5,538,848 & 5,723,591.
The parallel infringement action in the Northern District of California, however, is a serious matter. There, Applied Biosystems and Life Technologies have sued Midland Certified Reagent, Biosearch Technologies and Bio-Synthesis in February for infringement of the ‘848 and ‘591 patents, plus three other patents claiming hybridization assay probes. Presumably, reexamination requests for the other three patents are on the way.
2. PTO Board Affirms Rejection of Genzyme’s Doxercalciferol Patent
Last Thursday, the Patent Office Board of Appeals affirmed the reexamination rejection of the claims of Genzyme’s U.S. Patent No. 7,148,211 as obvious over the prior art. The ‘211 patent, that has been the subject of several major infringement actions in Delaware and the Eastern District of Illinois, claims a parenteral formulation containing doxercalciferol with a specific antioxidant.
Ten days ago, Judge Robert M. Dow determined that a related Genzyme patent was valid and infringed by Pentech Pharmaceutical and Cobrek Pharmaceutical.
Challenge to Social Networking Patent among the Reexamination Requests Filed Week of March 26, 2012
| April 3, 2012
Earlier this year, Real Time Social Inventions sued ten companies, including Facebook and Oracle, for infringement of U.S. Patent No. 7,853,881. Now, RT Social Networks has requested reexamination (see inter partes Request No. (2)), stating that it is the only real party in interest, even though RT Social Networks is not one of the defendants named in those infringement actions.
An unidentified party has requested reexamination of an Intellectual Ventures voice recognition patent (see ex parte Request No. (8)). There does not appear to be a parallel District Court case, continuing a recent trend of reexamination being requested against “assertion entities,” even in the absence of litigation.
Apple was in the news, requesting reexamination of the VirnetX patent (see inter partes Request No. (3)) that was recently added to the infringement case involving the two companies (as well as Cisco) in the Eastern District of Texas.
Challenge to ObjectVideo Patent in ITC Case, among the Reexamination Requests Filed Week of March 19, 2012
| March 26, 2012
Last Friday a 916-page request for inter partes reexamination was filed against ObjectVideo’s U.S. Patent No. 7,613,424 (see inter partes Request No. (4)). The ‘424 patent is one of six patents that are the subject of an ITC investigation – Certain Video Analytics – instituted last July against Bosch, Samsung and Sony. Although the identity of the Requestor is not yet apparent from the PTO docket, it is likely one of these three Respondents in the ITC case. Reexamination has less impact on ITC investigations than on infringement actions in the District Courts because the ITC refuses to stay its cases. On the other hand, one wonders whether the ITC, given its focus on protecting the public interest, would be willing to maintain an exclusion order where the patent-in-question has been determined in reexamination at the PTO to be unpatentable. Perhaps the ObjectVideo case will present that issue.
In an unusual twist, an unidentified third party requested reexamination of U.S. Patent No. 6,307,955 last Monday, and on Friday, the ‘955 patentee, Topaz Systems, filed its own request (see ex parte Request Nos. (1) & (7)).
Challenges to Six Mad Dogg Exercise Bicycle Patents, among the Reexamination Requests Filed Week of March 12, 2012
| March 19, 2012
Mad Dogg Athletics has vigorously enforced its exercise bicycle patents against a host of exercise equipment makers, including Nautilus. Last Wednesday competitor BH North America struck back, requesting reexamination of six Mad Dogg patents (see ex parte Request Nos. (7) to (12)).
Boston Scientific filed another request against an Orbusneich intraluminal endoprosthesis patent, continuing the run of reexamination requests regarding medical devices (see inter partes Request No. (8)).
And a reexamination was requested, for the first time in my memory, of a plant patent – U.S. Plant Patent No. 17,637 entitled “Plum Tree Named ‘Constanza’” (see inter partes Request No. (10)).
The following inter partes requests were filed:
(1) 95/001,933 (electronically filed) – U.S. Patent No. 7,226,459 entitled RECIPROCATING ROTARY ARTHROSCOPIC SURGICAL INSTRUMENT and owned by Smith & Nephew, Inc. Filed March 12, 2012, by Hologic, Inc. The ‘459 patent is currently the subject of a litigation styled Smith & Nephew, Inc. v. Interface Medical, Inc v. Hologic, Inc., 1:11-cv-12064-RWZ (D. Mass.).
(2) 95/001,934 (electronically filed) – U.S. Patent No. 6,742,161 entitled DISTRIBUTED COMPUTING DOCUMENT RECOGNITION AND PROCESSING and owned by Nuance Communications. Filed March 12, 2012, by Abbyy USA Software House, Inc. The ‘161 patent is currently the subject of a litigation styled Nuance Communications, Inc. v ABBYY USA Software House, Inc., et al, Case Nos. 08-0212-JSW, 08-04227-HJSW, 08-04942 (N.D. Cal.).
(3) 95/001,935 (electronically filed) – U.S. Patent No. 7,338,684 entitled VAPOR GROWN CARBON FIBER REINFORCED COMPOSITE MATERIALS AND METHODS OF MAKING AND USING and owned by Performance Polymer Solutions, Inc. Filed March 13, 2012, by University of Dayton Research Institute.
(4) 95/001,936 (electronically filed) – U.S. Patent No. 7,927,701 entitled VAPOR GROWN CARBON FIBER REINFORCED COMPOSITE MATERIALS AND METHODS OF MAKING AND USING and owned by Performance Polymer Solutions, Inc. Filed March 13, 2012, by University of Dayton Research Institute.
(5) 95/001,937 (electronically filed) – U.S. Patent No. 6,310,090 entitled PROCESS AND PRODUCT FOR ENHANCING IMMUNE RESPONSE IN COMPANION ANIMALS USING A COMBINATION OF ANTIOXIDANTS and owned by The Iams Co. Filed March 13, 2012, by Nestle Purina PetCare.
(6) 95/001,938 (electronically filed) – U.S. Patent No. 7,066,433 entitled ARM APPARATUS FOR MOUNTING ELECTRONIC DEVICES WITH CABLE MANAGEMENT SYSTEM and owned by Innovative Office Prods. Filed March 15, 2012, by SpaceCo Business Solutions. The ‘433 patent is currently the subject of two litigation styled Innovative Office Prods v. SpaceCo Business Solutions (Case No. 05-cv-4037 (E.D. Pa.)); and Office Prods. v. Smed (Case No. 07-cv-192 (C.D. Cal.)).
(7) 95/001,939 (electronically filed) – U.S. Patent No. 6,349,291 entitled METHOD AND SYSTEM FOR ANALYSIS, DISPLAY AND DISSEMINATION OF FINANCIAL INFORMATION USING RESAMPLED STATISTICAL METHODS and owned by InvestPic. Filed March 15, 2011, by Algorithmics, IBM and SAS Inst. The ‘291 patent is currently the subject of a litigation styled InvestPic v. Algorithmics et al. (Case No. 1:10-cv-1028 (D. Del.)).
(8) 95/001,940 (electronically filed) – U.S. Patent No. 6,821,292 entitled CRIMPABLE INTRALUMINAL ENDOPROSTHESIS HAVING HELICAL ELEMENTS and owned by Orbusneich. Filed March 16, 2011, by Boston Scientific. The ‘292 patent is currently the subject of a litigation styled Orbusneich v. Boston Scientific (Case No. 1:09-cv-10962 (D. Mass.)).
(9) 95/001,941 (electronically filed) – U.S. Patent No. 7,331,313 entitled CONTINUOUS STEAM GENERATOR WITH CIRCULATING ATMOSPHERIC FLUIDISED-BED COMBUSTION and owned by Alstom Technology. Filed March 16, 2012, by Foster Wheeler North America.
(10) 95/001,942 (electronically filed) – U.S. Plant Patent No. 17,637 entitled PLUM TREE NAMED ‘CONSTANZA’ and owned by Jose Domingo Godoy Huidobro. Filed March 16, 2012.
(11) 95/000,660 (paper filed) – U.S. Patent No. 7,711,857 entitled METHOD AND SYSTEM FOR DATA MULTIPLEXING and owned by Implicit. Filed March 2, 2012, by Juniper Networks. The ‘857 patent is currently the subject of four infringement actions.
The following ex parte requests were filed:
(1) 90/012,184 (electronically filed) – U.S. Patent No. 6,030,047 entitled CHILD VEHICLE SEAT WITH CHILD-RESTRAINT HARNESS ADJUSTMENT MECHANISM and owned by Cosco, Inc. Filed March 12, 2012.
(2) 90/012,185 (electronically filed) – U.S. Patent No. 8,008,804 entitled METHODS, SYSTEMS AND APPARATUS FOR REGULATING FREQUENCY OF GENERATED POWER USING FLYWHEEL ENERGY STORAGE SYSTEMS WITH VARYING LOAD AND/OR POWER GENERATION and owned by Beacon Power Corp. Filed March 12, 2012, by Temporal Power Ltd.
(3) 90/012,187 (electronically filed) – U.S. Patent No. 8,013,096 entitled PERFLUOROETHER MOIETY-CONTAINING POLYMER AND A SURFACE TREATING AGENT COMPRISING THE SAME and owned by Shin-Etsu Chemical. Filed March 12, 2012.
(4) 90/012,188 (electronically filed) – U.S. Patent No. 5,684,514 entitled APPARATUS AND METHOD FOR ASSEMBLING CONTENT ADDRESSABLE VIDEO and owned by Patent Harbor. Filed March 12, 2012, by Anchor Bay Entertainment. The ‘514 patent is currently the subject of ten infringement actions.
(5) 90/012,189 (electronically filed) – U.S. Patent No. 7,363,090 entitled BAND STOP FILTER EMPLOYING A CAPACITOR AND AN INDUCTOR TANK CIRCUIT TO ENHANCE MRI COMPATIBILITY OF ACTIVE IMPLANTABLE MEDICAL DEVICES and owned by Greatbatch, Ltd. Filed March 13, 2012, by Owner.
(6) 90/012,190 (electronically filed) – U.S. Patent No. 7,213,744 entitled REGULATED WIRE TRANSFER COMPLIANCE SYSTEMS AND METHODS and owned by The Western Union Company. Filed March 13, 2012.
(7) 90/012,191 (electronically filed) – U.S. Patent No. 5,423,728 entitled STATIONARY EXERCISE BICYCLE and owned by Mad Dogg Athletics. Filed March 14, 2012, by BH North America. The ‘728 patent is currently the subject of several litigations.
(8) 90/012,192 (electronically filed) – U.S. Patent No. 6,155,958 entitled STATIONARY EXERCISE BICYCLE HAVING A RIGID FRAME and owned by Mad Dogg Athletics. Filed March 14, 2012, by BH North America. The ‘958 patent is currently the subject of several litigations.
(9) 90/012,193 (electronically filed) – U.S. Patent No. 6,468,185 entitled STATIONARY EXERCISE BICYCLE and owned by Mad Dogg Athletics. Filed March 14, 2012, by BH North America. The ‘185 patent is currently the subject of several litigations.
(10) 90/012,194 (electronically filed) – U.S. Patent No. 6,881,178 entitled METHOD OF EXERCISING ON A STATIONARY EXERCISE BICYCLE and owned by Mad Dogg Athletics. Filed March 14, 2012, by BH North America. The ‘178 patent is currently the subject of several litigations.
(11) 90/012,195 (electronically filed) – U.S. Patent No. 7,455,627 entitled STATIONARY EXERCISE BICYCLE and owned by Mad Dogg Athletics. Filed March 14, 2012, by BH North America. The ‘627 patent is currently the subject of several litigations.
(12) 90/012,196 (electronically filed) – U.S. Patent No. 8,057,364 entitled STATIONARY EXERCISE BICYCLE and owned by Mad Dogg Athletics. Filed March 14, 2012, by BH North America. The ‘364 patent is currently the subject of several litigations.
(13) 90/012,198 (electronically filed) – U.S. Patent No. 7,149,625 entitled METHOD AND SYSTEM FOR DISTRIBUTED NAVIGATION AND AUTOMATED GUIDANCE and owned by WRE-HOL. Filed March 15, 2012.
(14) 90/012,199 (electronically filed) – U.S. Patent No. 6,296,022 entitled WOVEN FABRIC WITH MACHINE-READABLE CODE and owned by J&J Cash. Filed March 16, 2012.
(15) 90/012,200 (electronically filed) – U.S. Patent No. 6,223,190 entitled METHOD AND SYSTEM FOR PRODUCING AN INTERNET PAGE DESCRIPTION FILE ON A DIGITAL IMAGING DEVICE and owned by FlashPoint Technology. Filed March 16, 2012.
Attacks on Medtronic & OrbusNeich Medical Device Patents among the Reexamination Requests Filed the Week of March 5, 2012
| March 12, 2012
Edwards Lifesciences requested reexamination of a Medtronic prosthetic valve patent last week (see inter partes Request No. (1)). The companies are involved in an infringement action in the Central District of California regarding ‘281 patent. And Boston Scientific requested reexamination of an OrbusNeich helical stent patent (see inter partes Request No. (9)). OrbusNeich has sued Boston Scientific in the Eastern District of Virginia for infringement of that patent, as well as trade secret misappropriation.
The winner for filing the most requests last week, however, was Verizon that sought reexamination of seven Realtime Data patent claiming data storage and retrieval systems (see inter partes Request Nos. (2) to (8)). The parties are involved in litigation in the Eastern District of Texas.
