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
- Patent Docs
- Patently-O
- PLI Patent Law Practice Center
- Think IP Strategy
- US Patent Post-Grant Opposition
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PTO Statistics
Apple Rescued from $625 Million Verdict by Non-Infringement JMOL, while its Reexamination Attack on Mirror Worlds Patents Sputters
| April 6, 2011
Apple received welcome news Monday when Judge Leonard Davis granted its motion for Judgment as a Matter of Law that it had not infringed three patents belonging to Mirror Worlds. Mirror had sued Apple in 2008 in the Eastern District of Texas for infringement of those patents related to document stream operation systems, for instance systems that allow a user to view a series of images. The case went to trial and on October 1, 2010, a jury found the three patents were willfully infringed by Apple’ sale of computers using Mac OS X, and awarded Mirror Worlds $625.5 million.
In parallel with its defense against the infringement allegations in Texas, Apple filed a series of reexamination requests, beginning in April 2009. More than any other company, Apple has resorted to reexamination to defend itself against patent infringement suits. Yet that strategy has not been effective so far in Apple’s three-year-old dispute with Mirror Worlds.
Update on Samsung, Kyocera & HTC Reexaminations of Fractus Patents
| April 5, 2011
Last December we reported on an infringement action filed by Fractus in the Eastern District of Texas against a who’s-who of cellular telephone makers, among them Samsung, Kyocera and HTC. The response of those three companies has been extremely aggressive – each has requested inter partes reexamination of each of the nine Fractus patents-in-suit; and rather than moving the stay of the Texas action, they have defended vigorously in that forum.
How has that strategy worked so far? It appears to be working pretty well. Of the 27 reexaminations requested, 26 have been granted. Rejections have been issued in several, and the PTO has sua sponte merged several others. The attached table shows the status of all 27 reexamination requests.
In the meantime, last Wednesday, defendants filed motions for summary judgment of invalidity against two of the Fractus patents. Presumably motions against the other patents will follow soon.
Attack by eBay on Automatic Auction Patents, among 28 Reexamination Requests Filed Week of March 28, 2011
| April 4, 2011
Late last year eBay was sued by XPRT for infringement of four patents claiming aspects for automatic auctioneering. Last week, eBay requested inter partes reexamination of each of those patents (inter partes Request Nos. (2), (3), (4) & (8)).
There was also a race to the PTO. On Monday Vorsteen Consulting filed a request for ex parte reexamination of its U.S. Patent No. 6,878,358 (that claims a process for removing mercury from flue gases), together with a preliminary amendment narrowing the original claims and adding 33 new claims (see ex parte Request No. (2)). The same day, a third party requested reexamination of the same patent (see inter partes Request No. (1)), presumably presenting a different perspective on the validity issue.
Three Items of Interest
| March 23, 2011
1. How Long can a Reexamination Request Be?
A very rough indicator of the extent to which reexamination is supplanting traditional litigation is the length of some requests. One of the longest we have ever seen was filed Monday by CME against Realtime Data’s U.S. Patent No. 7,777,651, over 2,100 pages not counting the exhibits.
The ‘651 patent is one of three patents that are the subject of an infringement litigation in the eastern District of Texas between those companies. Thomson Reuters and Morgan Stanley have also been sued for infringement. Requests have already been filed against the other two patents in the litigation.
2. Trial Courts Take PTO Reexamination Decisions into Account
Last Wednesday in 3M Innovative v. Gerson, 8-cv-4960 (March 16, 2011), Judge John Tunheim denied a motion by the accused infringer for summary judgment that the patent was invalid as obvious over the prior art. Judge Tunheim began his analysis of whether the prior art references disclosed one of the steps of the claimed method by stating that the patent had been the subject of a parallel inter partes reexamination. He noted that he was not required to defer to the PTO’s analysis in that reexamination, but then quoted from that analysis at length, concluding that he agreed with the PTO that the art did not disclose the claimed step.
It is likely that Judge Tunheim would have arrived at the same conclusion without the reexamination. Still, the impact of PTO reexamination decisions on infringement cases is becoming more and more evident.
Toshiba Attack on Two Rovi V-Chip Patents among Reexamination Requests filed Week of March 7, 2011
| March 14, 2011
Late last year, Rovi sued Toshiba, alleging that it infringes two patents covering V-Chip technology, U.S. Patent Nos. 6,305,016 and 6,701,523. Toshiba has now replied to that allegation by requesting reexamination of both Rovi patents (see ex parte Request Nos. (16) & (17)).
The winner for the most reexaminations requested was TiVo who filed requests against seven Microsoft TV programming patents (see ex parte Request Nos. (3) to (9)).
Finally, Xilinx’s assault on Intellectual Venture patents continued last week with requests filed against IV’s U.S. Patent Nos. 6,993,669 and 6,408,415 (see inter partes Request No. (3) & ex parte Request No. (31)).
The following inter partes requests were filed:
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Three Updates: Callaway v. Acushnet, Intellectual Ventures v. Xilinx, Zimmer Spine v. NuVasive
| March 10, 2011
1. Callaway v. Acushnet
Last May we reported the possibility of a conflict between the PTO and the District Court in the golf ball patent dispute, Callaway v. Acushnet, 1:06-cv-0091-SLR (D. Del). A jury had determined that Callaway’s four patents – U.S. Patent Nos. 6,210,293, 6,503,156, 6,506,130, 6,595,873 – were invalid over the prior art. The accused products were Acushnet’s Titleist Pro VI® golf balls. In the meantime, the PTO was conducting reexamination of each of the Callaway patents, and, conceivably could have reached a contrary conclusion rearding those patents.
Yesterday, however, the PTO Board reached the same conclusion as the Delaware jury when it affirmed the prior art rejection of the claims of the ‘293, ‘156 and ‘873 patents. Notable for reexamination practitioners, was the Board’s skepticism of Callaway’s commercial success argument that featured $1.5 billion in sales. As has happened in many appeals, the Board found a lack of nexus between the claimed invention and the asserted commercial success. Callaway had withdrawn the appeal of the ‘130 rejection.
TiVo Takes Aim at Seven Microsoft Patents
| March 8, 2011
Over a year ago, Microsoft sued TiVo for infringement of two patents – U.S. Patent No. 6,008,803 and 6,055,314 – related to display of TV programming information and the delivery of pay video programs. In July Microsoft added five more patents to the case: U.S. Patent Nos. 5,648,824, 5,654,748, 5,677,708, 5,896,444, and 6,725,281. Yesterday TiVo replied by requesting ex parte reexamination of all seven Microsoft patents.
Last month Microsoft filed its initial claim construction brief in the District Court case. It is not yet known whether TiVo’s reexamination requests rely on Microsoft’s arguments in that brief, to assert a broad claim construction at the PTO, thereby making Microsoft’s claims more vulnerable to the prior art. Still, TiVo’s resort to reexamination is likely to complicate Microsoft’s claim construction arguments in the court case.
Whirlpool Challenge to Three LG Refrigerator Patents among the Reexamination Requests Filed Week of February 28, 2011
| March 7, 2011
Last year LG Electronics sued Whirlpool for selling refrigerators that infringe a series of LG patents. Whirlpool has now replied by requesting reexamination of those patents (see inter partes Request Nos. (4), (5) & (6)). Whirlpool has previously requested reexamination of at least four other LG refrigerator patents. LG and Whirlpool have been in series patent infringement fights, including an ITC investigation.
There were also reexaminations requested by Google against two of the Oracle America patents in the JAVA infringement suit between the companies (see inter partes Request No. (3) and ex parte Request No. (9)). A request was filed against another of the Intellectual Ventures patents from its case against Altera and other companies, probably by Xilinx, though the identity of the requester does appear in PAIR (see ex parte Request No. (22)). Finally, a request was filed regarding one of the Ronald Katz telephone patents (see ex parte Request No. (3)).
Google Requests Reexamination of Two Remaining Oracle America Patents
| March 2, 2011
Oracle America sued Google in August for distributing Android®, thereby infringing seven patents related to cover “a bundle of related programs, specifications, reference implementations, and developer tools and resources that allow a user to deploy applications written in Java programming language on servers, desktops, mobile devices, and other devices.” Google shot back last month by requesting that the U.S. PTO undertake reexamination of five of those patents (here, here).
Yesterday afternoon Google requested reexamination of the two remaining Oracle America patents-in-suit – U.S. Patent Nos. 6,192,476 and 7,426,720. Having now sought reexamination of all seven Oracle patents, Google is quite likely to ask the trial judge to stay the infringement suit, pending completion of the reexaminations. Google, however, may defer filing such a motion until the PTO has granted the reexamination requests, probably sometime in May.
Seagate Requests Reexamination of Convolve Data Storage Patent
| February 24, 2011
Success can be fleeting in cases involving parallel District Court and multiple reexamination proceedings. Last July the PTO issued a reexamination certificate confirming the patentability of the claims of Convolve’s U.S. Patent No. 6,314,473. Convolve had sued Seagate and Compaq in New York in 2000, and Dell, Western Digital, and Hitachi in Texas in 2008, for infringement of the ‘473 patent. Seagate replied to the infringement allegations, inter alia, by filing two requests for reexamination, one in 2006 and the other in 2008, both of which resulted in favorable rulings for Convolve.
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