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
Reexamination Requested of Apple “Double-Sided Touch-Sensitive Panel” Patent, Week of July 29, 2013
| August 5, 2013
An unknown party has requested ex parte reexamination of Apple’s U.S. Patent No. 7,920,129 that claims “double-sided touch-sensitive panel” (see ex parte Request No. (2)). Apple has sued HTC in Delaware for infringement of the ‘129 patent, as well as for three other patents. The request could have sought inter partes review, which is much more common than ex parte reexamination for such cell phone patents, but such a review request would have required disclosure of the filer’s identity. With an ex parte reexamination request, Apple is left to guess the filer’s name.
Ex parte reexamination was also requested for Apple’s U.S. Patent No. 7,663,607 (see ex parte Request No. (3)). Apple’s ‘607 patent was declared invalid over the prior art in an ITC investigation last year – such invalidity determinations by the ITC are not binding on the courts. As with the ‘129 patent, the identity of the filer is not shown in the Patent Office records.
Facebook, LinkedIn, and Twitter have requested inter partes review of a patent that is owned by Software Rights Archive, and that claims for a system for searching texts (see inter partes review Request No. (6)). Software Rights has sued those companies for infringement of the patent.
NetApp Requests Reexamination of PersonalWeb, Week of July 22, 2013
| July 29, 2013
On Friday, NetApp requested ex parte reexamination of PersonalWeb’s U.S. Patent No. 5,978,791 (see ex parte reexamination No. (9)). The ‘791 patent claims a data processing system in which “the identity of a data item is independent of its name, origin, location, address, or other information not derivable directly from the data, and depends only on the data itself.” PersonalWeb Technologies has asserted the ‘791 patent in 18 separate infringement actions, including cases against Facebook (Case No. 5:13-cv-01356 (N.D. Cal.)), Google (Case No. 5:13-cv-01317 (N.D. Cal.)), IBM (Case No. 6:12-cv-00661 (E.D. Tex.)), Apple (Case No. 6:12-cv-00660 (E.D. Tex.)), Microsoft (Case No. 6:12-cv-00663 (E.D. Tex.)), Yahoo! (Case No. 6:12-cv-00658 (E.D. Tex.)), and Amazon (Case No. 6:11-cv-00658 (E.D. Tex.)).
At the request of EMC and VMware, the Patent Office instituted an inter partes review of most of the claims of the ‘791 patent on May 17th. NetApp’s stated goal in Friday’s reexamination request is to challenge one of the ‘791 claims not under consideration in the review proceeding. Given the advanced stage of the review, it seems unlikely that the Patent Office would merge the review and reexamination. Earlier in the week, the Board denied a petition by NetApp for inter partes review of the ‘791 patent, finding the petition was filed more than one year after PersonalWeb had served a complaint for infringement of the ‘791 patent on NetApp.
Inter Partes Review Requested for P&G Teeth Whitening Patents, Week of July 15, 2013
| July 22, 2013
Last year Procter & Gamble sued three companies – Clio USA, Inc., Team Technologies, Inc., and Brushpoint Innovations, Inc. – for using its patented method and system for whitening teeth. The three accused infringers have now requested inter partes review of P&G’s patents (see inter partes review Request No. (1) & (3)).
Healthcare Hero Network owns a series of patents related to “a networked system for remotely monitoring individuals and for communicating information to the individuals through the use of script programs.” Eight of those patents are now in reexamination. Cardiocom has now requested inter partes review of three other related Healthcare Hero patents (see inter partes review Request Nos. (2), (4) & (12)). The companies are involved in an infringement action in the Eastern District of Texas.
Toyota Goes After David Breed Auto-Monitoring Patents, Week of July 8, 2013
| July 15, 2013
American Vehicular Sciences (AVS) has filed patent infringement actions in June 2012 against numerous automobile makers, including two cases against Toyota in the Eastern District of Texas. Last week Toyota struck back, requesting inter partes review of eleven AVS patents (see inter partes review Request No. (1) to (11)). The patents all name David Breed as the inventor and all claim systems for monitoring functions in automobiles, essentially to identify and diagnose problems with those functions. Other auto-makers sued by AVS are BMW, Honda, Hyundai, Kia, and Mercedes. AVS is a subsidiary of Acacia Research Corporation. In February, Acacia reported that in its fiscal year 2012 it had acquired control of 55 patent portfolios and that it had revenues of $250,727,000.
The following inter partes review requests were filed:
(1) IPR2013-00412 & IPR2013-00413 (electronically filed) – U.S. Patent No. 6,738,697 entitled TELEMATICS SYSTEM FOR VEHICLE DIAGNOSTICS and owned by American Vehicular Sciences, LLC. Filed July 8, 2013 by Toyota. The ‘697 patent is currently the subject matter of litigations styled American Vehicular Sciences LLC v. Toyota Motor Corp., et al. (Case No. 6:12-CV-405 (E.D. Tex.)); American Vehicular Sciences LLC v. BMW Grp. A/K/A BMW AG et al. (Case No. 6:12-CV-412 (E.D. Tex.)); American Vehicular Sciences LLC v. Hyundai Motor Co. et al. (Case No. 6:12-CV-776 (E.D. Tex.)); American Vehicular Sciences LLC v. Kia Motors Corp. (Case No. 6:13-CV-148 (E.D. Tex.)); American Vehicular Sciences LLC v. American Honda Motor Co., Inc. et al. (Case No. 6:13-CV-226 (E.D. Tex.)); and American Vehicular Sciences LLC v. Mercedes-Benz U.S. Int’l Inc. (Case No. 6:13-CV-310 (E.D. Tex.)).
Microsoft Challenges Motorola Videogame Console Patent, Week of July 1, 2013
| July 9, 2013
Last Monday Microsoft requested ex parte reexamination of a Motorola videogame console patent (see ex parte Request No. (1)). Motorola’s patent was the subject of a major U.S. International Trade Commission investigation. That investigation concluded in early June when the ITC ruled that Motorola had failed to prove infringement. A parallel infringement action is underway in Wisconsin.
The number of pharmaceutical patents challenged in inter partes review proceedings continues to grow – most notable last week were requests filed by Apotex against three Alcon patents claiming “multi-dose, self-preserved ophthalmic compositions … [that] possess sufficient antimicrobial activity to satisfy USP preservative efficacy requirements” (see inter partes review Request Nos. (13), (14) & (15)).
Inter Partes Review Requests against Four VirnetX Patents, Week of June 24, 2013
| July 1, 2013
Last week saw four more inter partes review requests against VirnetX patent, this time filed by New Bay Capital (see inter partes review Request Nos. (1) through (4)). As we have previously reported, VirnetX has been quite successful in litigating and licensing these patents.
A number of universities – Stanford University, Boston University, University of Illinois – saw inter partes review requests filed against their patents (see inter partes review Request Nos. (8), (10) & (13)).
Sony filed its second inter partes review requests against U.S. Patent No. 6,218,903 owned by Network-1 Security Solutions, Inc. (see inter partes review Request No. (6)). Sony’s previous request for inter partes review of the ‘930 patent was denied (see IPR2013-00092). A request for rehearing of a portion of the Board’s decision not to institute review is currently pending.
Twenty Inter Partes Review Petitions Filed, Week of June 17, 2013
| June 24, 2013
Inter Partes review is becoming more and more popular. Last week, review requests were filed against 20 patents. Apple challenged another VirnetX patent (see inter partes review Request Nos. (1)), Aisin Seiki requested review of three American Vehicular Sciences patents related car seat weight sensors (see inter partes review Request Nos. (16), (18) & (19)), and Samsung filed against a U.S. Ethernet Innovations patent (see inter partes review Request No. (20)).
Notably, several requests involved pharmaceutical patents. Accord Healthcare requested inter partes review of an antifoliate patent owned by Ely Lilly (see inter partes review Request No. (3)), and Amneal Pharmaceuticals sought inter partes review of three Supernus patents for tetracycline formulations (see inter partes review Request Nos. (11), (13) & (14)). Pharma patents were relatively rare in earlier inter partes reexamination practice.
Apple Takes another Crack at VirnetX ‘135 Patent, Week of June 10, 2013
| June 17, 2013
VirnetX’s U.S. Patent No. 6,502,135 is the crown jewel of its portfolio of network patents that it has used to obtain a $200 million settlement with Microsoft and a $368.2 million verdict against Apple. Apple has now filed two inter partes review requests challenging the validity of the ‘135 patent (see inter partes review Request No. (9)). The challenge, however, raise an estoppel issue, addressed by Apple in its petitions.
Specifically, Apple acknowledges that it was served with a complaint, which led to Case No. 6:10-cv-00417, in August 2010, that is, more than one year prior to the filing of the instant petition. However, Apple argues that the August 2010 complaint does not foreclose the instant petition under 35 U.S.C. §315(b), because Apple was served with a new complaint in December of 2012, which matured into Case No. 6:13-cv-00211-LED. Section 315(b) reads, “[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent” (emphasis added). Emphasizing the plain wording of §315(b), Apple insists that as long as a petition for inter partes review is filed within one year of the date any complaint alleging infringement of the patent is served on the petitioner, the petition is timely.
JDS Uniphase Seeks Inter Partes Review of Two Optical Switching Patents, Week of June 3, 2013
| June 10, 2013
JDS Uniphase requested inter partes review of two Fiber, LLC. optical switching apparatus patents (see inter partes review Request Nos. (1) & (11)). Fiber has sued Ciena and NEC for infringement of the patents. The latter two companies are presumably JDS customers.
IBS requested inter partes review of Illumina Cambridge’s U.S. Patent No. 7,057,026, that claims labeled nucleotides (see inter partes review Request No. (3)). IBS had previously filed a petition requesting inter partes review of the ‘026 patent (IPR2013-00128). The previous petition relied on a different primary reference than last week’s petition.
The number of inter partes review requests continues to rise, with 13 new requests being filed last week.
Inter Partes Review Sought for ZOLL’s Patient Monitoring Patent
| June 3, 2013
Late last year ZOLL Medical sued Respironics, the apnea treatment device-maker, for infringement of U.S. Patent No. 6,681,003 that claims a patient data monitoring system. Respironics has now replied by requesting inter partes review of the ‘003 patent (see inter partes review Request No. (5).
Oracle has filed a second inter partes review request against Clouding IP’s U.S. Patent No. 6,631,449 (see inter partes review Request No. (4). The two companies are locked in a sprawling patent dispute.
The following inter partes review requests were filed:
(1) IPR2013-00312 (electronically filed) – U.S. Patent No. 5,818,836 entitled METHOD AND APPARATUS FOR ANONYMOUS VOICE COMMUNICATION USING AN ONLINE DATA SERVICE and owned by Click-to-Call Technologies LP. Filed May 28, 2013 by Oracle. Click-to-Call Technologies asserted the ‘836 patent against a number of defendants, including Oracle, Carnival Cruise Lines, and BMO Harris Bank N.A., in a patent infringement litigation styled Click to Call Technologies LP v. Oracle Corporation, et al. (Case No. 1:12-cv-00468-SS (W.D. Tex.)). The ‘836 patent is also the subject matter of litigations styled Click to Call Technologies LP v. eHarmony, Inc. (Case No. 1:12-cv-00469-SS (W.D. Tex.)); Click to Call Technologies LP v. AT&T, Inc., et al. (Case No. 1:12-cv-00465-SS (W. D. Tex.)).
