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
Apple Reexamination Requests of Two VirnetX Patents, among those Requested Week of October 17, 2011
| October 24, 2011
Apple has requested reexamination of two more VirnetX network protocol patents – U.S. Patent Nos. 7,418,504 and 7,921,211 (see inter partes Request Nos. (2) & (3)). VirnetX has sued Apple and several others for infringement of the ‘504 and ‘211 patents, as well as four other related patents. Three of the other VirnetX patents-in-suit are in reexamination, and a fourth emerged from reexamination earlier this year with the validity of its claims confirmed.
CSR Technology has requested reexamination of two Bandspeed patents claiming methods for selecting communications channels based on use, in products such as computers and mobile telephones. (see inter partes Request Nos. (5) & (6)). Bandspeed has sued 38 companies for infringement of the patents, among them Acer, Dell, HP, HTC, Kyocera, LG, RIM and Samsung.
Facebook Request for Reexamination of Data Review Patent among those Requested Week of October 10, 2011
| October 17, 2011
A Markman hearing is currently scheduled for the beginning of November in Indacon’s case against Facebook for infringement of two patents related to storing and reviewing data. But on Friday Facebook requested reexamination of one of the Indacon patents (see inter partes Request No. (9)) and on the same day, asked Judge Orlando Garcia of the Western District of Texas to stay the infringement action “until Indacon files its response to the PTO’s first Office Action in the reexamination.” At that time, Facebook says, Judge Garcia could assess the effect that the reexamination might have on the case and whether the case should be stayed pending completion of the reexamination. Facebook focused on the imminent Markman hearing, noting that the reexamination could provide additional evidence that might affect Judge Garcia’s claim construction of both patents-in-suit. “No matter what the outcome of the reexamination, claim construction will surely be affected.”
In 2007 the U.S. International Trade Commission (ITC) issued a general exclusion order prohibiting the entry into the United States of ink cartridges that infringed any of ten Seiko Epson patents, plus a cease and desist order stopping the sale of infringing ink cartridges already in the United States. The principal target of these orders was Ninestar Technology. In March Ninestar asked the ITC for an advisory opinion whether its R-Series ink cartridges infringe any of the ten Seiko Epson patents. Ninestar has now expanded its challenge to the Seiko Epson patents by requesting reexamination of the ‘053 patent (see inter partes Request No. (1)). It will be interesting to see how Ninestar coordinates its challenges to that patent at the ITC and at the PTO, respectively.
Challenge to Intel Data Evaluation Patent, among Reexamination Requests Filed Week of October 3, 2011
| October 11, 2011
Intel obtained a patent last year for a method for sifting through data on “a support vector machine” to obtain certain information. The method appears to have diverse applications, including the identification of disease-causing genes. A request for reexamination of Intel’s patent was filed last Monday (see ex parte Request No. (1)). Though PTO documents do not disclose the identity of the Requester, it might be Health Discovery Corporation which is now attempting to provoke an interference with the Intel patent.
IBM requested reexamination of an Acqis computer security patent (see inter partes Request No. (3)). Acqis won a judgment against IBM earlier this year for $12 million in damages and $18.5 million in costs after a jury verdict of infringement of three other patents. On Thursday IBM filed a declaratory judgment action against Acqis regarding the ‘814 patent.
Sony Attack on Walker Digital Patent
| October 3, 2011
Earlier this year Walker Digital (of Priceline.com fame) sued Sony and others for infringement a patent claiming an apparatus for providing information to a customer about a video program. Sony has now replied to that suit by requesting reexamination of the Walker patent (see ex parte Request No. (10)).
Reexamination was also requested for three more Round Rock Research patents, related to different technologies (see ex parte Request Nos. (2), (3) & (4)). Round Rock bought the three patents from Micron. It is not yet clear who has filed these reexamination requests for patents not involved in litigation.
Reexamination Requests against MobileMedia and Round Rock among those Filed Week of September 19, 2011
| September 26, 2011
Last week saw a request filed by RIM against a MobileMedia patent, one of a number of mobile phone patents currently being litigated by the companies in the Eastern District of Texas (see ex parte Request No. (13)). The MobileMedia patent, like several of those patents-in-suit, was originally assigned to Nokia.
An unnamed party filed a request against a Round Rock Research patent for electronic tracking (see ex parte Request No. (12)).
And CareFusion filed two requests against Vesta Medical patents for medical waste disposal systems (see ex parte Request Nos. (10) & (11)). CareFusion set a record, we think, in August when it requested reexamination of 27 Vesta patents.
Requests for Reexamination of Four Round Rock Patents, among those Filed Week of September 12, 2011
| September 19, 2011
Requests for reexamination were filed against four RFID patents owned by patent-holding/enforcement company Round Rock Research (see ex parte Request Nos. (1), (2), (4), & (5)). The requests do not indicate who filed them, and the patents does not appear to be the subject of pending litigation, raising the prospect of a party simply targeting Round Rock patents.
Earlier this year, Universal Electronics sued Logitech in the Central District of California for infringement of three touch-pad patents. Logitech has now replied by seeking reexamination of those patents (see inter partes Request Nos. (7), (8) & (9)).
Google, Apple and Quattro teamed up to request reexamination of a StreetSpace patent for online advertising (see inter partes Request No. (10)). The parties are currently in litigation over that patent in the Southern District of California.
VW Challenge to Flexible Car Warning Light among the Reexamination Requests Filed Week of September 6, 2011
| September 12, 2011
In January, the company Effectively Illuminated Pathways, LLC. sued Aston Martin of North America, Bentley and Volkswagen of America (Bentley’s parent company) for infringement of U.S. Patent No. 6,520,669 for a flexibly mounted warning light for cars, presumably rather up-scale cars. VW has now replied to that law suit by requesting reexamination of the ‘669 patent (see inter partes Request No. (1)), the request asserting 92 substantial new questions of patentability and weighing in at 1630 pages counting claim charts.
Cisco requested reexamination of a VirnetX patent (see inter partes Request No. (10)) in a dispute described in greater detail in our second item posted today. And SanDisk sought reexamination of a flash memory Netac patent (see inter partes Request No. (11)).
Also of interest last week was the fact that there were 16 inter partes reexamination requests and only 6 ex parte requests. Normally, the ex parte cases exceed the inter partes. Perhaps requesters are coming to the conclusion that full participation in the reexamination outweighs the risk of statutory estoppel attaching to inter partes requests.
How Strong are Google’s Requests for Reexamination of the Lodsys Patents?
| September 6, 2011
How does one assess the strength of a reexamination request? The typical request is intimidatingly long and technically involved. It is simply impossible, without devoting an enormous amount of (billable) time, to estimate the likelihood that a specific request will force the cancelation or amendment of the claims. Still, if only a bit of insight, not “metaphysical certitude,” is needed, there are certain signs that even a casual observer will spot.
(1) Do all the primary references or all the secondary references recite essentially the same subject matter? If so, the patentee might be able to overcome all the rejections by citing a single patentable distinction over the prior art, just as in original prosecution, an applicant can sometimes dispatch a large number of rejections with a single argument.
(2) Does the cited prior art disclose the feature of the claimed invention that appeared to be the basis for allowance of the original application? If so, there is likely to be a substantial new question of patentability and chances for a successful reexamination are greater.
(3) Do the prior art columns of the claim charts quote the references or do they simply repeat the wording of the claims? If the latter, the technical analysis in the reexamination request might be weak.
(4) Are the proposed rejections for anticipation or obviousness? Even if the latter, the proposed rejections might be strong, provided that there is a KSR reason for combining the references.
(5) Is legal argument needed to establish the references are prior art? Or are the references prior art under § 102(a) or § 102(e)? If either, the patentee might have an easy legal, non-technical, basis for overcoming the prior art.
Requests against Three Philips’ Green LED Patents among those Filed Week of August 29, 2011
| September 6, 2011
The war between Koninklijke Philips and Seoul Semiconductor over “green” light-emitting diodes (LEDs) intensified last week when Seoul Semi requested reexamination of three Philips’ patents – U.S. Patent No. 6,274,924, 6,547,249 and 6,590,235 (see inter partes Request Nos. (3) & (4) and ex parte Request No. (6)). Philips has accused Seoul Semi in the Northern District of California of infringing the ‘249 and ‘235 patents, plus two other patents, and Seoul Semi has counter-claimed for infringement of one of its own patents.
Attack on vTRAX Patent among Reexamination Requests Filed Week of August 22, 2011
| August 29, 2011
The sole business of vTRAX appears to be the enforcement of a single patent, U.S. Patent No. 6,865,268 covering systems for call-tracking in virtual call-centers. Pending in the Southern District of Florida are two actions in which vTRAX has accused Siemens, CSX, Avaya and a number of others of infringing the ‘268 patent. Now, a reexamination has been requested of the ‘268 patent (see ex parte Request No. (15)). We strongly expect that the defendants will soon move to stay both cases, particularly in view of the Southern District of Florida’s record of granting such motions.
