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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Hyundai Requests Second IPR Against Clear with Computers Patent, Week of March 4, 2013
| March 11, 2013
Clear With Computers’ U.S. Patent No. 8,121,904 claims an “electronic system for creating customized product proposals stores a plurality of pictures and text segments to be used as building blocks in creating the proposal.” Clear With Computers has sued Hyundai for infringing the ‘904 patent, and last week Hyundai replied by filing two inter partes review petitions against the patent (see inter partes review Request No. (3)). The current petition challenges claims 1-21 of the ‘904 Patent. Hyundai had previously requested reexamination of claims 22-40 the same patent (see IPR 2013-00104). Hyundai’s dual filings demonstrate the technique of sidestepping the page limit on petitions by requesting multiple IPR trials.
The following inter partes review requests were filed:
(1) IPR2013-00174 (electronically filed) – U.S. Patent No. 6,217,049 entitled BICYCLE SUSPENSION SYSTEM WITH SPRING PRELOAD ADJUSTER AND HYDRAULIC LOCKOUT DEVICE and owned by SRAM Corp. Filed March 4, 2013 by HBPSI – Hong Kong Ltd. The ‘049 patent is currently the subject matter of a litigation styled SRAM v. Hayes Bicycle Group, Inc. (Case No. 1:12-cv-03628 (N.D. Ill.)).
(2) IPR2013-00175 (electronically filed) – U.S. Patent No. 7,633,673 entitled SYSTEM AND METHOD FOR GENERATING INFRARED LIGHT FOR USE IN MEDICAL PROCEDURES and owned by Cheetah Omni, LLC. Filed March 4, 2013 by BAE Systems Information and Electronic Systems Integration, Inc. The ‘673 patent is currently the subject matter of a litigation styled Cheetah Omni, LLC v. U.S. (Case No. 1:11-cv-00255-FMA (Fed. Cl.)).
Zynga Patents Target of IPR Requests, Week of February 25, 2013
| March 4, 2013
Last week Personalized Media Communications requested inter partes review of three mass media programming patents owned by Zynga (see inter partes review Request Nos. (2), (3) & (8)). Zynga’s patents claim unified systems for programming mass communication, including uses for television, radio, broadcast hardcopy, and computer communications. The two companies are involved in an infringement action regarding the patents, in the Eastern Disrtict if Texas.
General Electric saw attacks by Vibrant Media, Inc. on two of its hypertext patents (see inter partes review Request Nos. (6) & (9)). GE has sued Vibrant and others for infringement of the patents.
Apple Files Reexamination “RCE”
| February 25, 2013
An aspect of patent prosecution – much-discussed of late in some circles – is the Request for Continued Examination (RCE). An RCE allows a patent applicant, unhappy with the developments in its prosecution, to begin prosecution of its application anew. A similar phenomenon sometimes occurs in reexamination, where a Requester, dissatisfied with the progress of its reexamination, requests a new reexamination rather than acquiesce in an adverse ruling from the PTO. There was an example of such an “RCE” last week.
In 2007 MedioStream sued Apple and a number of others for infringement of U.S. Patent No. 7,009,655. Apple replied by requesting inter partes reexamination of the patent and was largely successful: the examiner rejected all the claims and the PTO Board affirmed the rejection, except for claims 10 and 11 which the Board found to be patentable over Apple’s prior art. Evidently, claims 10 and 11 are of some commercial significance because Apple requested that the Board reconsider its adverse decision, specifically, to find that claims 10 and 11 are inherently anticipated or made obvious by the prior art. Apple added that “[d]esignating a new ground of under 103 in this instance [would] also serve the interests of judicial economy as it [would] avoid the inefficiency of piecemeal appellate review that would result if Requester must institute a new reexamination proceeding to determine the obviousness of claims 10 and 11.” MedioStream opposed Apple’s reconsideration request, describing it an attempt to “assert[] new arguments not previously raised in the appeal.”
ZTE Challenges Six Phone Security Patents, Week of February 11, 2013
| February 19, 2013
Last week the Chinese telephone giant ZTE requested inter partes review of six patents owned by ContentGuard Holdings and covering systems for protecting telephone content (see inter partes review Request Nos. (1) through (6)). ContentGuard has sued ZTE for infringement of the six patents.
Three times, Veeam Software used the tactic of filing two inter partes review requests against a single patent, to avoid the length limitation on such requests (see inter partes review Request Nos. (7) through (10)). Veeam filed a total of seven requests against four patents owned by Semantec. Semantec has accused Veeam of infringing the patents.
Volkswagen Takes on Five Norman IP Holdings, Week of February 4, 2013
| February 11, 2013
Volkswagen requested reexamination of five WiFi circuitry patents owned by Norman IP Holdings (see ex parte Request Nos. (1) & (3) to (6)). The patents were originally assigned to Advanced Micro Devices, but later transferred through a series of companies, among them RPX, to Norman IP Holdings.
RPX describes itself as “the industry leader in comprehensive patent risk management through our defensive acquisition, litigation insurance, patent intelligence and strategic advisory services. For our clients, the result is strong, broad-based defense against NPE litigation and dramatically lower operating costs and financial risk.” Bloomberg describes Norma IP as “an intellectual property licensing company[that] controls patents covering a variety of consumer devices, which include Bluetooth enabled devices, camcorders, cameras, cellular telephones, copiers, cordless telephones, data storage devices, desktop personal computers, home entertainment electronics, laptops, PDAs, portable MP3 players, printers, speech recognition, WiFi enabled devices, work stations.” Norman IP used to be Saxon Innovations, LLC and is located in Tyler, Texas.
RIM Seeks Reexamination of MobileMedia Ideas’ Communication Terminal Patent, Week of January 28, 2013
| February 4, 2013
On Thursday RIM requested reexamination of U.S. Patent No. 6,070,068 for a communication terminal device, owned by MobileMedia Ideas (see ex parte Request No. (8)). In December MobileMedia Ideas won when a jury returned a verdict against Apple that its iPhone 3G, 3GS and 4 infringed three MobileMedia patent, the ‘068 patent and U.S. Patent Nos. 6,253,075 and 6,427,078.
The Patent Office ordered reexamination of the ‘078 patent in November, based on an ex parte request filed by RIM. MobileMedia has also sued RIM and HTC for infringement of these patents. MobileMedia is jointly held by MPEG LA LLC (50.2%), a Sony subsidiary (24.9%), and a Nokia subsidiary (24.9%). The ‘068 patent was originally owned by Sony and the ‘075 and ‘078 patents, by Nokia. MobileMedia is said to own 300 patents.
InvenSense, Inc. has asked for reexamination of four patents owned by STMicroelectronics, Inc. (see ex parte Request Nos. (4) to (7)). The companies are in an infringement action regarding the patents in the Northern District of California.
Gnosis Attacks Four Merck Folate Composition Patents, Week of January 21, 2013
| January 28, 2013
The Italian drug company Gnosis S.p.A. has counter-attacked Merck and its business partners last week, by requesting inter partes review of U.S. Patent Nos. 5,997,915, 6,011,040, 6,673,381 and 7,172,778 (see inter partes review Request Nos. (1)-(4)). The patents claim various folate and L-methylfolate compositions and methods of use, for treating vascular disease and neural tube deficiencies. Merck, South Alabama Medical Science Foundation, and Pamlab, which collectively own and license the four patents, have sued Gnosis for infringement, both in the U.S. International Trade Commission and the Eastern District of Texas. We will watch for interactions between the PTO’s reviews and the ITC’s investigation, since the two proceedings are likely to be completed at approximately the same time.
Using a strategy that will interest practitioners, LaRose Industries has filed two separate inter partes review requests, each based on a different interpretation of the claims (see inter partes review Request No. (5)). The two sets of claim interpretation are intended to correspond to the patent owner’s claim construction as presented in the infringement litigation, and during prosecution of the ‘558 patent. Petitioner alleges that the patent owner has offered two contradictory sets of claim construction.
Xilinx Seeks Inter Partes Review of Intellectual Ventures Video Projection Patent, Week of January 14, 2013
| January 22, 2013
The feud between Xilinx and Intellectual Ventures continued last week, when the former filed an inter partes review petition against U.S. Patent No. 5,779,334 owned by IV and claiming a system for enhanced video projection (see inter partes review Request No. (1)). The parent of the ‘334 patent, U.S. Patent No. 5,632,545, is the subject of an earlier petition for inter partes review (IPR 2013-0029), also filed by Xilinx.
Ex parte reexamination was requested for Apple’s U.S. Patent No. 8,245,924, related to podcasting (see ex parte Request No. (1)). Its main claim reads:
A portable media player, comprising: a communication port adapted for communication with an external device other than the portable media player; and a processor coupled with the communication port and adapted to update a podcast having episodes by accessing episode information for the podcast and then updating the podcast with a new episode if it is determined that there is a new episode of the podcast.
There was fair amount of comment on the Internet regarding this patent when it issued in August.
Reexamination of Apple Speech Recognition Patent Sought, Week of January 7, 2013
| January 14, 2013
This past October Dynamic Advances sued Apple, alleging that the Siri personal assistant in iPads and iPods infringes U.S. Patent No. 7,177,798. The ‘798 patent claims a method for processing a natural language input provided by a user. Dynamic Advances, which identifies a suite in Tyler Texas as its principal place of business, obtained the ‘798 patent from Rensselaer Polytechnic Institute. In its Complaint, Dynamic Advances points out that the ‘798 patent was cited during Apple’s prosecution of a patent application that ultimately issued as U.S. Patent No. 8,289,283. Dynamic Advances appears to be relying upon the drawings of the ‘283 patent to illustrate Apple’s infringement of the ‘798 patent.
Dynamic Advances has now taken the additional step of seeking ex parte reexamination of Apple’s ‘283 patent (see ex parte Request No. (4)). The strategy behind the reexamination request might be to press Apple to make admissions regarding claim construction, the scope of the ‘798 claims, or the meaning of the prior art.
Sony Seeks Inter Partes Review of Data Vending Patent, Week of December 31, 2012
| January 7, 2013
Sony has requested inter partes review of a data vending patent owned by Benjamin Grobler (see inter partes review Request No. 1)). Grobler has sued Sony and Apple in California for infringement of the patent.
Inter partes review was also requested for a patent owned by the U.S. Government, that claims chemical composition for repelling pests (see inter partes review Request No. (3)).
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