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
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Recent Requests
PTO Statistics
RIM Challenge of Two SimpleAir Patents, among the Reexamination Requests Filed Week of May 9, 2011
| May 16, 2011
RIM has requested reexamination of SimpleAir’s U.S. Patent Nos. 6,021,433 and 6,735,614 that claim contact alerts for incoming messages (see ex parte Request No. (15) & inter partes Request No. (5)). SimpleAir has accused Apple, RIM, Facebook and a number of others in the Eastern District of Texas of infringement of the ‘614 and ‘433 patents, as well as two other patents.
The week also saw yet another round in the war between Abbott Diabetes Care and DexCom over analyte sensors (see ex parte Request No. (5)).
And Square, Inc. requested reexamination of three REM Holdings patents for reader cards for cell phones (see inter partes Request Nos. (2), (3) & (4)), which are the subject of an infringement dispute between those companies in the Eastern District of Missouri.
Tesco Benefits from Choosing Inter Partes Reexamination
| May 10, 2011
We have previously noted (here) that companies requesting reexamination still prefer ex parte reexamination over inter partes reexamination. For those patents where reexamination was requested last week, and where ex parte reexamination was an option because of the patent’s priority date, a clear majority of requesters chose ex parte reexamination. Whether this is because of the lower fee, or because of the possibility of withholding the company’s identity, we do not know.
The PTO Board’s decision yesterday in Tesco v. Weatherford/Lamb, however, demonstrated anew that the right of a requester to participate in inter partes reexamination, including the right to appeal to the Board, can be enormous. There, Requester Tesco appealed the examiner’s decision not to adopt two rejections proposed in the Request, and the Patentee Weatherford/Lamb appealed three final rejections maintained by the examiner.
The significance of the Board’s decision was not in its technical and legal analysis of the rejections, but in the final score: the Board reversed each of the three rejections maintained by the examiner, but reversed the examiner’s decision not to adopt the two rejections proposed by Tesco in its Request. These two rejections are now entered as “new grounds for rejection,” and the matter returns to the examiner for further consideration. Without Tesco’s participation in the appeal, the validity of the patent might now stand affirmed.
Medtronic’s Attacks on Edwards Lifesciences’s Heart Valve Patents, among Reexamination Requests Filed Week of May 2, 2011
| May 9, 2011
Medtronic has requested reexamination of two Edwards Lifesciences’ patents claiming heart valve systems for implantation, U.S. Patent Nos. 6,582,462 & 7,789,909 (see inter partes Request Nos. (3) & (4). The two companies are long-time rivals in that market and are currently in litigation in Delaware regarding the ‘462 and ‘909 patents.
There were also requests for reexamination of patents involved in infringement disputes that we have been tracking. One is U.S. Patent No. 7,349,012 which is one of the many patents in the litigation between MobileMedia Ideas and RIM (see inter partes Request No. (2)). The other is U.S. Patent No. 7,917,186 owned by DexCom which is in litigation against Abbott Diabetes Care (see ex parte Request No. (6)).
Three Tidbits
| May 5, 2011
1. PTO Affirms Reexamination of Katz ‘120 Patent
Earlier this week the PTO Board of Appeals affirmed the rejection of the claims in reexamination of U.S. Patent No. 5,974,120 assigned to Ronald Katz Technology Licensing. Essentially, the Board agreed with the examiner that the ‘120 claims in reexamination – that claimed a telephone processing system for receiving call from terminals in different call modes (e.g., “800” or an area code) – was obvious over certain combinations of prior art references, despite Katz’ technical arguments and assertions of commercial success.
A point that might interest some is that the ‘120 patent, which expired July 7, 2009, is only now being held invalid. Clearly, there is no fault to be found with the patentee, the reexamination requesters, or PTO. Yet one wonders about a patent system in which an invalid patent (assuming that the Board is correct) remains in force so long, here since October 1999.
Seagate’s Request for Third Reexamination of Convolve Patent Denied
| April 26, 2011
At the end of February, we reported that Seagate had requested a third reexamination of Convolve’s U.S. Patent No. 6,314,473 claiming a noise reduction user interface in a disk drive: specifically, in “controlling one of seek time … and acoustic noise level … in inverse relation” (emphasis added). Although the patentability of the ‘473 claims had been confirmed in two previous reexaminations, it appeared that Seagate’s new request might succeed since it was based, at least in part, on assertions made by Convolve regarding the “heart of the invention” during the claim construction phase of parallel infringement action between the parties in Texas (2:08-cv-244).
Convolve’s Markman remarks, however, appear to have had no effect on the PTO’s analysis of whether the art cited in the new request presented “a substantial new question of patentability” (SNQ). First, the PTO determined that Convolve had written description support in a provisional application and was therefore entitled to claim priority to the filing date of that application. The result of that determination was that one reference, relied upon by Seagate for anticipation, was not prior art.
MobileMedia Ideas Case against RIM, HTC & Apple Shifts toward Patent Office
| April 25, 2011
MobileMedia’s infringement cases against RIM, HTC and Apple present a number of interesting points. The first is MobileMedia itself – it is a patent-holding company owned by MPEG-LA. MobileMedia describes itself as “the patent portfolio licensor of inventions adopted by manufacturers of smart phones, mobile phones and other portable devices including personal computers, laptops, netbooks, personal media players, e-book readers, cameras and hand-held game consoles.” It states that it owns 300 patents and lists its patents available for licensing at http://www.mobilemediaideas.com/patents.html.
Second, the various patents-in-suit did not originate with MobileMedia. Most were assigned to it by Sony, some by Nokia, and two by Audio Highway.
Third, and of special interest to reexamination practitioners, is that the action in the three cases seems to be slowly shifting from the courts to the reexamination at the PTO. MobileMedia filed complaints against RIM and HTC in the Eastern District of Texas and against Apple in Delaware, all on March 31, 2010. Starting in January 2011, the three defendant companies begin to file requests reexamination of patents-in-suit (see the attached chart showing the status of the MobileMedia patents). So far, RIM has requested reexamination for eight of the twelve patents it is accused of infringing. HTC and Apple have not been as aggressive, but have both filed a number of their own requests.
Challenges to Two MobileMedia Ideas Patents, among the Reexamination Requests Filed Week of April 11, 2011
| April 18, 2011
Reexamination was requested for two MobileMedia Ideas patents. PTO dockets show that RIM filed one of the requests, but are unclear about who filed the second, though that request was quite likely filed by RIM as well (see ex parte Request Nos. (3) & (13)). MobileMedia has sued RIM for infringement of these patents in the Eastern District of Texas.
A very important request, reported in a parallel post today, is Google’s second request for reexamination of an Oracle patent (see ex parte Request No. (20)).
Abbott Diabetes Care has requested reexamination of two DexCom analyte sensor patents (see ex parte Request Nos. (8) & (18)).
Google Renews Reexamination Challenge to Oracle Phone Patent
| April 18, 2011
In February Google requested reexamination of seven “Java platform” patents – Oracle had sued Google for infringement of those patents by marketing its Android™ cell phones. On Friday afternoon, Google filed its second request for ex parte reexamination with respect to one of those seven patents, Oracle’s U.S. Patent No. 6,061,520.
Though the PTO had ordered reexamination of the ‘520 patent based on the Lewis reference, it also denied reexamination of claims 14 and 17 of that patent, finding that the prior art cited by Google failed to raise a “substantial new question of patentability” (SNQ) regarding those claims. Such a denial of reexamination by the PTO would enhance the statutory presumption that those claims are valid over the prior art. In Friday’s request, Google therefore again sought reexamination, this time focusing on claims 14 and 17. Google also described Lewis in a different light and combined Lewis with three new secondary prior art references.
The PTO has ordered reexamination of five of the other Oracle patents; the request for reexamination of the seventh Oracle patent is still pending and is likely to be acted on soon.
RIM has Initial Success against MobileMedia Ideas Camera Patent
| April 14, 2011
RIM’s strategy for dealing with the infringement suit filed against it by MobileMedia Ideas is off to a good start. At the beginning of January, RIM requested ex parte reexamination of MobileMedia’s U.S. Patent No. 7,349,012 claiming an “imaging apparatus” useful for cell phones. The PTO has now ordered reexamination, and on the same day, it issued an Office Action rejecting each of the ‘012 claims. The reexamination examiner adopted each of RIM’s rejections “substantially as proposed.”
It is not unusual for the PTO to issue rejections on the same day as it orders reexamination or to adopt all the requester’s proposed rejections. What might justifiably encourage RIM, however, is the fact that the examiner noted that the newly cited prior art references disclose the specific features of the ‘012 independent claims that the original examiner had found absent from the prior art before him.
The ‘012 patent was originally assigned to Sony, later assigned to SCA IPLA Holdings, and sent from there to MobileMedia. Tempering RIM’s success so far is the fact the ‘012 patent is only one of 12 MobileMedia patents in the law suit against RIM.
“SUBSTANTIAL NEW QUESTION OF PATENTABILITY” DETERMINED BY EXAMINER’S PERCEPTION OF PRIOR ART OF ART, BOARD FINDS IN TODAY’S SAMSUNG CASE
| April 7, 2011
Since last June, the PTO Board of Appeals has had jurisdiction to consider whether the original grant of ex parte reexamination was correct. Thus, when the patentee appeals a final rejection to the Board, it may also challenge the Examiner’s original determination that the reexamination request raised a “substantial new question of patentability” (SNQ).
Today’s Board decision in Ex parte Samsung Electro-Mechanics Co., Ltd. (90/008,993) addressed the interesting question of how to determine whether issue raised in a request is “new.” Samsung’s patent claimed an image module, including an automatic focusing feature for lens adjustment in digital cameras. The request asserted two potential SNQs. In the second, the requester asserted that the patent claims were obvious over two references identified as “APA” and “JP ‘405.” Agreeing that an SNQ had been raised, the examiner granted reexamination, and later issued a final rejection of the claims based on that prior art.
On appeal to the Board, Samsung argued, inter alia, that reexamination should not have been granted because no new SNQ was raised in the request and because the request failed to “include a detailed explanation of the pertinency” of the cited references to the patent claims. Samsung acknowledged that JP ‘405 had not been before the examiner in the original prosecution, but argued that it did “not disclose any feature relevant to the issued claims [of the patent] that is not already disclosed in” the Takishima reference that was before the original examiner.
