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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- All Things Pros
- CAFC Alert
- FDA Law Blog
- IPWatchdog
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- Patently-O
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Recent Requests
PTO Statistics
Facebook’s Reexamination Requests against two Pragmatus Patents, among those Filed Week of August 15, 2011
| August 22, 2011
On Thursday Facebook requested reexamination of two patents belonging to Pragmatus – U.S. Patent Nos. 7,421,470 & 7,433,921 – related to “real-time” communications over the Internet (see inter partes Request Nos. (7) & (8)). Also on Thursday, Facebook filed a motion to stay Pragmatus’ action in San Jose accusing Facebook of infringing the ‘470 and ‘921 patents. Pragmatus obtained the two patents from Intellectual Ventures five days before suing Facebook.
Google’s much-anticipated requests for reexamination of the two of the four Lodsys patents that are the subject of an infringement action against many, many Android® app developers, finally surfaced on the Internet (see inter partes Request Nos. (13) & (14)). Because they were filed by paper, rather than electronically, they are still not available from the PTO.
Gevo requested reexamination of Butamax Advanced Biofuels’ U.S. Patent No. 7,851,188 for recombinant microbial host cells useful in making isobutanol (see inter partes Request No. 10). Butamax sued Gevo for infringement of the ‘188 patent in January in Delaware.
Cisco requested reexamination of a VirnetX patent (see inter partes Request No. (6)). VirnetX is pursuing an infringement action in the Eastern District of Texas against Cisco and a number of others, including NEC and Apple.
Did Google Request Reexamination of Lodsys Patents?
| August 17, 2011
We’ve seen lots of reports in the media that Google finally took action last Friday against Lodsys – specifically, Reexamination Requests against two of the four patents that are the subject of Lodsys’ infringement actions against numerous small developers of Android® apps. “We’ve asked the U.S. Patent Office to re-examine two Lodsys patents that we believe should never have been issued,” Google senior vice president and general counsel Kent Walker is reported to have told Wired.com, explaining that “[d]evelopers play a critical part in the Android ecosystem and Google will continue to support them.”
What we have not seen, however, are Google’s Requests. So far there is no evidence that they were actually filed. Of course, when they do surface, we will report our first impressions.
Also, one wonders about the other two Lodsys patents, given Google’s concern for the Android® app developers.
Incidentally, the best reporting and analysis of Lodsys’ case against the Android® developers is by our friend Florian Mueller at FOSS Patent Blog.
Hewlett-Packard Reexamination Request of Princeton Digital Patent, among Requests Filed Week of August 8, 2011
| August 15, 2011
Hewlett-Packard has sought reexamination of Princeton Digital’s U.S. Patent No. 4,813,056 for digital signals used in cameras, camcorders, copiers, scanners and various multifunction devices (see ex parte Request No. (7)). The ‘056 patent, originally owned by General Electric, is the subject of two infringement actions by Princeton in the Eastern District of Texas, against a slew of consumer electronics companies including HP, Ricoh, Kodak, and Fujifilm. Canon is reported this morning to have settled its case.
Garmin has requested reexamination of its own patent for a sports computer with GPS (see ex parte Request No. 6). Presumably, Garmin is attempting to beat Bryton, whom Garmin has sued for infringement of that patent, to the punch.
Finally, there were reports over the weekend that Google had requested reexamination against two Lodsys patents – U.S. Patent Nos. 7,222,078 & 7,620,565 – that Lodsys has asserted against a large group of small makers of applications for Android®. Google’s Requests, however, are not yet available.
Requests for Reexamination of 27 Vesta Medical Patents, among those Filed Week of August 1, 2011
| August 8, 2011
It was a quiet week on the new reexamination front, except that CareFusion requested reexamination of 27 Vesta Medical patents related to disposal of medical waste. This does not appear, however, to have been done with hostile intent since Vesta is a subsidiary of CareFusion.
Hostile intent was clearly in evidence, on the other hand, when SAP America requested reexamination of a new Wellogix patent (see inter partes Request No. (1)). For good measure, on the same day, SAP filed a declaratory judgment action against the same Wellogix patent.
Finally, Reexamination was requested against an Intellectual Ventures patent related to field-programmable gate arrays (see ex parte Request No. (32)). Last December IV sued Altera and two other companies for infringing on that patent, as well as four other patents. Since reexamination has now been requested against all five IV patents-in-suit, one or more of the parties might now seek a stay of the litigation pending completion of the reexaminations.
Request for Reexamination of 3M Lithium-Ion Battery Patent, among those Filed Week of July 25, 2011
| August 1, 2011
An unidentified party has sought reexamination of 3M’s U.S. Patent No. 7,078,128 for cathode compositions for lithium-ion batteries (see ex parte Request No. (10)). The ‘128 patent was the subject of an ITC investigation against Sony and others in 2007, which ended in settlements. No reexamination has yet been requested against 3M’s U.S. Patent No. 6,964,828 that was also in the ITC’s investigation.
In March Google requested reexamination U.S. Patent No. 6,981,040 in response to an infringement allegation by the ‘040 patentee, Personalized User Model (PUM). Now, Google has requested reexamination of U.S. Patent No. 7,685,276 (see inter partes Request No. 3), the other PUM patent-in-suit.
Requests were also filed against three Hewlett-Packard patents for circuits and switches (see ex parte Request Nos. (11), (12) & (13)).
Broadcast Electronics Requests Reexamination of Mission Abstract Data Patents
| July 28, 2011
In March, Mission Abstract Data (which also does business as Digimedia) sued a host of broadcast companies in Delaware – including CBS and Cox – for infringing two patents, U.S. Patent Nos. 5,629,867 and 5,809,246. The ‘867 and ‘246 patents concern the selection and retrieval of music from databases; specifically, music to be broadcast over the air waves is stored and played from a computer hard drive rather than a CD player. According to assignment records at the PTO, Mission Abstract obtained the ‘867 and ‘246 patents in 2007, assigned them in February of this year to Intellectual Ventures who reassigned them back to Mission Abstract seven day later.
Yesterday, Broadcast Electronics – who is not a party to the infringement action – requested reexamination of the ‘867 patent, and this morning it sought reexamination of the ‘246 patent. Also yesterday, the Defendants moved to stay the case pending completion of the two reexamination proceedings.
Verizon Attacks on Two TiVo Time-Shifting Patents among the Reexamination Requests filed the Week of July 18, 2011
| July 25, 2011
In 2009, TiVo sued Verizon and AT&T for infringement of U.S. Patent Nos. 7,493,015 and 7,529,465 related to time-shifting and play-back of media streams. Verizon has now requested reexamination of the ‘015 and ‘465 patents (see inter partes Request Nos. (7) & (8)).
Precision Biosciences filed for reexamination of Cellectis’ Patent No. 7,842,489 for single-chain endonucleases useful in genetic modifications of various sorts (see ex parte Request No. (7)). The two companies are engaged in several infringement and declaratory judgment actions in North Carolina and Delaware involving the ‘489 patent and certain related patents.
RIM requested reexamination of Mobile Media Ideas’ Patent No. 5,732,390 (see ex parte Request No. (9)). Moble Media has sued RIM for infringement of the ‘390 patent in the Eastern District of Texas.
Medical device patents are the subject of two requests, one for Voda’s U.S. Patent No. 6,475,195 for an angioplasty catheter guide (see inter partes Request No. (5)) and one for Boston Scientific’s U.S. Patent No. 5,922,021 for an intravascular stent (see ex parte Request No. (1)).
Attack on Jay Walker Patent, among the Reexamination Requests filed Week of July 11, 2011
| July 18, 2011
Walker Digital filed two complaints in April, accusing a who’s-who of video and electronics companies of infringing its U.S. Patent No. 6,263,505 related to data for video programs. Jay Walker of Priceline fame is on the named inventors on the ‘505 patent. A so-far unnamed party has now requested reexamination of Walker’s ‘505 patent (see ex parte Request No. (10).
A second reexamination request was filed by Thermo Fisher Scientific against Spectros’ U.S. Patent No. 6,711,426 for white LED medical spectroscopy equipment (see inter partes Request No. (5)). The ‘426 patent emerged from its first reexamination earlier this year, with some of the claims being canceled and some confirmed. The two companies are involved in an infringement action regarding the ‘426 patent in the Northern District of California, where Judge Sandra Brown recently allowed Spectros to add claim 19, one of the confirmed claims, to the case.
Cisco Attack on VirnetX on Network Security Patent, among Reexamination Requests Filed Week of July 5, 2011
| July 11, 2011
Late Friday, Cisco requested reexamination of VirnetX’s U.S. Patent No. 6,502,135 entitled “Agile network protocol for secure communications with assured system availability” (see inter partes Request No. (6)). The two companies are parties to an infringement action over the ‘135 patent in the Eastern District of Texas.
Shell Oil and Alcoa also countered infringement allegations by requesting reexamination of the patents-in-suit (see inter partes Request Nos. (3) & (4)).
The PTO’s Recent Treatment of Reexamination Requests
| July 6, 2011
We recently looked at 100 inter partes reexamination requests, filed between December and the end of March, and what we found might surprise some.
First, the PTO is handling requests with “special dispatch.” In no instance did the PTO take its full three months to rule on a request. In one case, only 23 days. Generally, requests were granted or denied within two months of the request filing date. Moreover, for 53 of the requests, the PTO ordered reexamination and issued a non-final rejection on the same day. Several actions closing prosecution (ACP) have already issued.
Second, the PTO is looking at requests critically, denying 10 of the 100 requests. This compares with the PTO’s historical grant rate of 92% for ex parte requests and 95% for inter partes requests. Even where the PTO grants reexamination, it commonly disagrees with at least a few of the proposed substantial new questions of patentability (SNQs).
