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
More Oracle Inter Partes Review Requests Filed, Week of December 24, 2012
| January 2, 2013
Oracle requested inter partes review of two more Clouding IP patents last week (see inter partes review Request Nos. (2) & (3)). This brings to eleven the number of inter partes review Requests filed by Oracle over the past month against Clouding IP patents.
On Monday an anonymous party requested ex parte reexamination of two Apple design patents – U.S. Design Patent Nos. 670,713 and 669,906 – claiming display screen images simulating page-turning (see ex parte Request Nos. (5) & (6)):
Seventeen Inter Partes Review Requests Filed, Week of December 17, 2012
| December 26, 2012
That’s right, seventeen. Inter partes review, despite its high filing fee, certainly seems to be catching on, especially among the major electronics and Internet companies. Apple requested review of two information distribution patents owned by Achates Reference Publishing (see inter partes review Request Nos. (1) & (2)). The other requesters are EMC, Oracle, Sony/Axis, Motorola and Honeywell. Each of the patents is involved in an infringement action.
There were also a healthy number of ex parte requests filed, most notably an anonymous request filed against Apple’s U.S. Patent No. RE41,922 which is the subject of an ITC investigation pursued by Apple (see ex parte Request No (5)). The volume of filings appears to be returning to more normal levels, slowly recovering from the flood of requests filed the first two weeks of September to avoid the filing fee increases.
Read More/続きを読む
IBM Targets Data-Processing Patents in IPR Requests, Week of December 10, 2012
| December 17, 2012
IBM is the perennial winner in obtaining U.S. patents, but rarely appears in patent litigation. So it was noteworthy last year when Financial Systems Technology (Intellectual Property) Pty. Ltd. sued IBM in the Northern District of Illinois for infringement of two data-processing patents. IBM has now replied to that accusation by requesting inter partes review of those patents (see inter partes review Request Nos. (3) & (4)).
Chris Holman reports in his eponymous Holman’s Biotech IP Blog (http://holmansbiotechipblog.blogspot.com/2012/11/jury-finds-abis-sale-of-dna-sequencing.html) that Enzo Biochem won a $48,587,500 verdict last month against Applied Biosystems for infringement U.S. Patent No. 5,449,767. The ‘767 patent claims chemical compounds that are used in DNA analysis. An ex parte reexamination request (90/012,061) was filed against Enzo’s ‘767 patent at the end of last year. A non-final Action issued in July rejecting several of ‘767 claims as being anticipated by two prior art references. Enzo has replied to that rejection with a substantial expert declaration that challenges the PTO’s understanding of the prior art references. Last week a new reexamination request was filed against the ‘767 patent (see ex parte Request No. (4)). There is little detail yet available regarding the new request, but it might be an attempt by Enzo’s competitors to contradict Enzo’s arguments in the first reexamination.
Computer File Synchronization Patent among the Targets, Week of December 3, 2012
| December 11, 2012
Oracle, that is enmeshed in an infringement action brought by Clouding IP, has requested inter partes review of one of the patents in that action, U.S. Patent No. 6,738,799 (see inter partes review Request No. (4)). Oracle also indicated that review requests against the other patents in that case are on the way. Apple has also been sued for infringement of the ‘799 patent.
The following inter partes reviewrequests were filed:
(1) IPR2013-00069 (electronically filed) – U.S. Patent No. 7,663,061 entitled HIGH PERFORMANCE DATA CABLE and owned by Belden, Inc. Filed December 3, 2012 by Nexans, Inc.
(2) IPR2013-00071 (electronically filed) – U.S. Patent No. 6,218,930 entitled APPARATUS AND METHOD FOR REMOTELY POWERING ACCESS EQUIPMENT OVER A 10/100 SWITCHED ETHERNET NETWORK and owned by Network-1 Security Solutions, Inc. Filed December 5, 2012 by Avaya, Inc. The ‘930 patent is currently the subject of a litigation styled Network-1 Security Solutions, Inc. v. Alcatel-Lucent USA Inc., et al. (Case No. 6:11 cv492 (E.D. Tex.)).
(3) IPR2013-00072 (electronically filed) – U.S. Patent No. D617,465 entitled DRINKING CUP and owned by Luv n’ Care, Ltd. Filed December 5, 2012 by Munchkin, Inc. and Toys “R” Us, Inc. The ‘465 patent is currently the subject of a litigation styled Luv N’ Care, Ltd. v. Toys “R” Us, Inc. (Case No. 1:12-cv-00228-LLS (S.D.N.Y.)).
(4) IPR2013-00073 (electronically filed) – U.S. Patent No. 6,738,799 entitled METHODS AND APPARATUSES FOR FILE SYNCHRONIZATION AND UPDATING USING A SIGNATURE LIST and owned by Clouding IP, LLC. Filed December 8, 2012 by Oracle. The ‘799 patent is currently the subject of a litigation styled Clouding IP, LLC v. Oracle Corp. (Case No. 1:12-cv-00642 (D. Del.)); Stec IP v. Apple (Case No. 1:12-cv-00638 (D. Del.)). Ten other patents were asserted in the litigation, and Oracle indicated that petitions for inter partes reviews of these patents will be filed in the forthcoming weeks.
Nike Shoe Patent Target of Inter Partes Review Request, Week of November 26, 2012
| December 3, 2012
Rival adidas requested inter partes review of a Nike shoe patent (see inter partes review Request No. (3)). There does not yet appear to be any litigation between the companies over this patent.
Chimei Innolux continues to challenge Semiconductor Energy Lab patents, last week requesting inter partes review of three Innolux thin film patents (see inter partes review Request Nos. (1), (2) & (4). There were so many bases for attacking SEL’s ‘311 patent, that Chimei split them into two Requests.
Three Belden Data Cable Patents, Targets of Inter Partes Review Requests in Week of November 19, 2012
| November 26, 2012
Last Wednesday Belden filed separate complaints for patent infringement against Hitachi Cable and Nexans, accusing them of infringing four patents claiming cables for transmitting data. In apparent anticipation of those suits, Nexans requested inter partes review of three of the Belden patents (see inter partes review Request Nos. (3), (4) & (5)). A request against the fourth patent might be on the way.
Google requested reexamination of an information filter patent owned by I/P Engine (see ex parte Request No, (1)). The companies are involved in an infringement action in the Eastern District of Virginia, where a jury has already determined that I/P’s patent is valid and infringed. A post-trial motion by Google asserting that the patent is obvious is pending before the trial judge.
Corning Files Eight Inter Partes Review Requests, Week of November 12, 2012
| November 19, 2012
Corning Inc. instantly became the new league leader in the number of inter partes review requests, when it filed against eight DSM IP Assets B.V. last week (see inter partes review Request Nos. (1) to (7)). Each DSM patent relates to curable coating compositions for optic fibers. It is not yet clear whether there is litigation between the companies, and as late as last year, Corning and DSM appeared to be partners, announcing a “more than 30 year supply relationship and track record [between the companies] in providing telecom operators with world-leading optical fiber products.”
An as yet undisclosed party requested reexamination of U.S. Patent No. 5,641,805 for ophthalmic compositions (see ex parte Request No. (2)). The ‘805 patent was the subject of a CAFC decision last year and is owned by Kyowa and Alcon.
University of Michigan Bone Tissue Patent among those Challenged Week of November 5, 2012
| November 13, 2012
Last Friday St. Jude Medical requested inter partes review of a University of Michigan patent claiming a “calcification-resistant” material for prosthetics (see inter partes review Request No. (2)). The U of M has already sued St. Jude for infringement of the patent.
The following inter partes review requests were filed:
(1) IPR2013-00038 (electronically filed) – U.S. Patent No. 7,956,978 entitled LIQUID-CRYSTAL DISPLAY DEVICE HAVING A PARTICULAR CONDUCTIVE LAYER and owned by Semiconductor Energy Laboratory Co., Ltd. Filed November 7, 2012 by ChiMei Innolux Corp. The ‘978 patent is currently the subject of a litigation styled Semiconductor Energy Laboratory Co., Ltd. v. Chimei Innolux Corp., et al. (Case No. SACV12-0021-JST (C.D. Cal.)).
(2) IPR2013-00041 (electronically filed) – U.S. Patent No. 5,746,775 entitled METHOD OF MAKING CALCIFICATION-RESISTANT BIOPROSTHETIC TISSUE and owned by University of Michigan. Filed November 9, 2012 by St. Jude Medical, Inc. The ‘775 patent is currently the subject of a litigation styled University of Michigan v. St. Jude Medical, Inc. (Case No. 2:12-CU-12508-AC-LJM (E.D. Mich.)).
The following ex parte requests were filed:
(1) 90/012,716 (electronically filed) – U.S. Patent No. 6,436,135 entitled PROSTHETIC VASCULAR GRAFT and owned by Bard Peripheral Vascular. Filed November 5, 2012 by W.L. Gore. The ‘135 patent is the subject of infringement actions entitled Bard Peripheral Vascular v. W.L. Gore (Case No. 03-cv-597 (D. Ariz.); Bard Peripheral Vascular v. Atrium Medical (Case No. 2:10-cv-1694 (D. Ariz.))).
(2) 90/012,717 (electronically filed) – U.S. Patent No. RE 39,998 (reissue of U.S. Patent No. 6,399,176) entitled COMPOSITE WEAR COMPONENT and owned by Magotteaux International S.A. Filed November 8, 2012.
(3) 90/012,718 (electronically filed) – U.S. Patent No. 8,253,598 entitled LIGHT-EMITTING KEYBOARD and owned by Darfon Electronics Corp. Filed November 9, 2012.
British Telecommunications’ Internet Patent among those Challenged Week of October 29, 2012
| November 5, 2012
This past June, Suffolk Technologies sued AOL and Google in the Eastern District of Virginia for infringement of two Internet patents, U.S. Patent Nos. 6,334,132 and 6,081,835. Last Tuesday an anonymous party requested reexamination of the ‘835 patent (see ex parte Request No. (4)); reexamination has already been granted against the ‘132 patent. Patent Office assignment records show that the patents were originally owned by British Telecommunications and have passed through a number of hands over the past year to reach Suffolk. AOL and Google have moved to dismiss the infringement action, asserting that BT, not Suffolk, remains the real owner of the patents and that the Suffolk therefore lacks standing to sue. AOL and Google characterize the assignments are as “nothing more than a ‘hunting license.’”
Research in Motion requested inter partes review of a MobileMedia Ideas mobile device patent (see inter partes review Request No. (2)). The companies are involved in an infringement action in the Northern District of Texas.
Challenge to Samsung White LED Patent, Among the After-Grant Filings Week of October 22, 2012
| October 29, 2012
Ex parte reexamination was requested for Samsung’s U.S. Patent No. 7,959,312 claiming white LEDs (see ex parte Request No. (2)). Samsung has sued OSRAM for infringing eight patents, including the ‘312 patent. Still, since the request is ex parte rather than inter partes, it is likely filed by a third party.
Vestcom requested inter partes review of Grandville Printing’s U.S. Patent No. 8,020,765 (see inter partes review Request No. (1)). This is Vestcom’s second run at the ‘765 patent – in August Vestcom requested inter partes reexamination, but the Patent Office denied the request, concluding that Vestcom had “failed to show that there is a reasonable likelihood that the requester would prevail,” essentially, the PTO found that Vestcom had failed to explain adequately why allowance of the claims in the original prosecution was wrong.
Read More/続きを読む
