“Substantial New Question”: Still a Loser for Patentees?
| August 20, 2010
The PTO’s decision this June to allow patentees to challenge the examiner’s determination of a “substantial new question of patentability” (SNQ) in its appeal of a final rejection to the PTO Board – as opposed to the previous practice of requiring the patentee to make such a challenge in a petition filed within two months of the reexamination grant – was met with some fanfare in the Blogosphere. Yet, whether the challenge is by petition or appeal, the hurdle faced by the patentee remains quite high.
The difficulty of that burden was demonstrated in the Board’s decision in Ex parte Buttercup Legacy, 90/008,820 (August 19, 2010). There, the claimed invention was a “lubrication sheet for lubricating a paper shredder.” The claim included the limitation of “one or more shell layers [proving] mechanical stiffness and rigidity to the lubrication sheet.” The primary reference relied upon in the Request and by the examiner, “Zettler,” disclosed a “thin sheet” which could be made from paper, foil or magnetic tape. This disclosure was used by the Requester and the examiner to satisfy the shell layer stiffness limitation.
Read More/続きを読む
Update on Furuno Requests against Honeywell Marine Navigation Patents
| August 19, 2010
In June we reported that Furuno had filed reexamination requests against five Honeywell patents claiming marine display and navigation systems. Honeywell had previously sued Furuno in Minnesota for infringing those five patents. Judge Michael Davis has now stayed that case pending completion of the five reexaminations.
In granting the stay, Judge Davis recited the familiar three-part test for determining whether to grant a stay: whether there would be prejudice to the patentee, whether a stay would simplify the issues, and the stage of the litigation. The stay order is noteworthy, however, in that the PTO had granted reexamination for only one of the five Honeywell patents. To reject Honeywell’s argument that a stay with respect to all five patents would therefore be premature, Judge Davis relied heavily on the PTO statistics showing that reexamination is granted in the great majority of cases.[1] This reliance on PTO reexamination statistics contrasts markedly with the skepticism recently expressed by Judge Keith Ellison in Tesco v. Weatherford Int’l (Civ. No. 08-cv-2531).
The stay order is also interesting in that Judge Davis noted a passage from the PTO’s reexamination grant “that Furuno U.S.A.’s marine navigation software, MaxSea, which Honeywell has accused of infringement, ‘is directed to a different field of endeavor, namely a seas based charting system rather than the flight display system as claimed.’” (Emphasis added). The reexamination may therefore have an effect on the infringement issues when the case returns to the court after the stay is lifted.
[1] Since Judge Davis granted the stay, reexamination has been granted for three of the remaining Honeywell patents, and the request for the fifth is still pending.
Reexamination Requests Filed the Week of August 9th
| August 18, 2010
The pace of new reexamination requests slowed a bit this past week. One of the more interesting is the request filed August 9th against a design patent owned by Durham for a portion of a cabinet shelf. As we have previously reported, reexamination of design patents tends to be much more rigorous than original prosecution. In the case of the Durham patent, the third party requester characterized the patented design as “identical” to the prior art or at least “within the zone of obviousness.” Interestingly, the third party requester did not attempt, on the basis of recent case law, to assert that the features shown in the drawings are functional and therefore not available to support patentability over the prior art.
Reexamination requests are typically reported in the Official Gazette approximately three months after filing. Such a delay in reporting requests, particularly for requests that involve copending District Court litigation, is too long. We therefore report new ex parte and inter partes reexamination requests filed electronically the previous week as they appear on the Patent Office PAIR system. Information on concurrent litigation is also provided, where available.
Read More/続きを読む
Rambus Wins Limited Exclusion Order at ITC against NVIDIA, despite Pending Reexaminations
| August 16, 2010
Traditionally, District Court judges have issued permanent injunctions to stop infringement of valid patents, regardless of any pending reexamination of the patent in question. Only if the rejection of the patent claims in reexamination is “final,” would the courts refuse to enjoin the accused infringer. A few judges – notably Judge James Cohn of the Southern District of Florida and Judge Sue Robinson of Delaware – have recently shown a willingness to defer a decision on injunctive relief even where the rejection of the patent in reexamination is not final.
The Rambus/NVIDIA investigation raises the question of the extent to which the ITC is willing to order relief on the basis of patents that are in reexamination at the PTO. Unfortunately for NVIDIA, its argument to the ITC that it stay relief against NVIDIA was weak because its attack on the Rambus patents by reexamination has been “an incomplete success” (to borrow a phrase from President Carter).
That weakness may account, in part, for NVIDIA’s agreeing at the end of last week to a license to the Rambus patents, effectively concluding the dispute between the parties. Still, the ITC’s analysis in the Rambus/NVIDIA investigation remains of great interest to the IP community, as it suggests that the ITC will be extremely reluctant to withhold relief against infringing imports on the basis of an uncompleted reexamination.
Read More/続きを読む
Reexamination Requests Filed the Week of August 2nd
| August 11, 2010
Noteworthy are requests filed by Samsung against two Fractus patents that are the subject of a law suit between the two companies. Samsung has become a frequent user of the reexamination process.
Reexamination requests are typically reported in the Official Gazette approximately three months after filing. Such a delay in reporting requests, particularly for requests that involve copending District Court litigation, is too long. We therefore report new ex parte and inter partes reexamination requests filed electronically the previous week as they appear on the Patent Office PAIR system. Information on concurrent litigation is also provided, where available.
Some reexamination requests are still filed by paper. Because of the time required for the Patent Office to review such paper requests before posting on PAIR, our report may come three weeks after filing. The information available from the Patent Office may be incomplete in a few cases because not all the reexamination request papers have yet been posted on PAIR. There may also be gaps in the Patent Office docket numbers listed because, for any of various reasons, a reexamination request has been assigned a docket number but is not ready for posting.
Read More/続きを読む
Reexamination Requests Filed the Week of July 26th
| August 4, 2010
An interesting request this week is one filed by Volkswagen against an Acacia patent that is also the subject of two law suits in the Eastern District of Texas.
To update our article of June 23rd where we reported requests by Furuno against five Honeywell patents, we note that Furuno has now obtained a stay of the litigation between the two companies involving those patents – the trial judge was not persuaded by Honeywell’s unusual argument that Furuno’s motion, filed six months after Honeywell’s complaint, was “premature.”
Reexamination requests are typically reported in the Official Gazette approximately three months after filing. Such a delay in reporting requests, particularly for requests that involve copending District Court litigation, is too long. We therefore report new ex parte and inter partes reexamination requests filed electronically the previous week as they appear on the Patent Office PAIR system. Information on concurrent litigation is also provided, where available.
Read More/続きを読む
PTO Board Reconsiders, Sort Of
| August 2, 2010
Requests for reconsideration at the PTO Board are usually hopeless. The Board rarely reverses itself, but it did so earlier today in Ex parte Fisch, a case involving antiestrogen treatment of men, at least with respect to certain dependent claims. Today’s decision also involved the question of what constitutes “a new ground of rejection” by the Board.
Claim 1 of U.S. Patent No. 6,391,920 recites “A method of treating disorders related to androgen deficiency in men comprising administering a selective antiestrogen to men in need of such treating.” Independent claim 4 was substantially the same, except that it defined the disorder as male menopause and did not require that the antiestrogen be “selective.”
Read More/続きを読む
End of July Developments
| August 2, 2010
1. Judge’s Decision to Stay May be Based on Strength of Reexamination Request
When trial judges are asked to stay a law suit pending completion of a reexamination proceeding at the PTO, they almost always apply the three-factor test: (1) whether a stay would unduly prejudice the non-moving party, (2) whether a stay would simplify the issues in the law suit, and (3) the stage of the law suit. We have long believed that judges should also consider the strength of the reexamination request – where the request is strong, a stay would greatly benefit the parties, but where the request is weak a stay is unfair to the patentee.
At least one judge may be moving in that direction. Judge Ronald Whyte of the Northern District of California was recently asked to stay Cellectricon AB v. Fluxion Biosciences, Inc., No. C-09-3150 RMW. He cited the three-factor test and carefully balanced the facts, staying the case for “at least 90 days to allow the Director of the PTO to determine ‘whether a substantial new question of patentability’ has been raised.” Judge Whyte then added that if a new question is found, “the court can evaluate the strength of that finding and make a decision on whether to stay the litigation further.”
Read More/続きを読む
Judge Robinson Reluctantly Waits for CAFC Ruling on PTO’s Rejection of Claims in Reexamination
| July 28, 2010
Last week Judge James Cohn of the Southern District of Florida withdrew a permanent injunction, deferring to a PTO advisory action finding that the patent in reexamination was invalid. On Monday, Judge Sue Robinson – in Sigram v. Cisco, 2010 U.S. Dist. LEXIS 74948 (D. Del. July 26, 2010) – with great reluctance, deferred her decision on patent validity until the CAFC determines whether the PTO correctly rejected the patent claims in two reexamination proceedings.
Sigram (SSBG) had sued Cisco in Delaware for infringement of U.S. Patent Nos. 6,954,453, 7,145,902 and 7,483,431, each related to voice over internet protocols (VoIP). Cisco replied by requesting reexamination of the ‘453 and ‘902 patents. (No request was filed against the ‘431 patent). The claims were subsequently rejected and final rejections are currently on appeal at the PTO Board. Cisco has now moved for summary judgment of invalidity, citing the same combinations of prior art that it had presented in its reexamination requests.
Read More/続きを読む
Reexamination Requests Filed the Week of July 19th
| July 28, 2010
Of special interest is the request (90/011,109) filed by Hynix against U.S. Patent No. 6,546,446 owned by Rambus. The ‘446 patent is already the subject of two inter partes reexaminations, initiated by Micron – in both the examiner has indicated the patentability of the claims, and earlier this month Micron filed a notice to appeal to the PTO Board. The ‘446 patent is also currently the subject of two cases filed by Rambus in the Northern District of California.
Reexamination requests are typically reported in the Official Gazette approximately three months after filing. Such a delay in reporting requests, particularly for requests that involve copending District Court litigation, is too long. We therefore report new ex parte and inter partes reexamination requests filed electronically the previous week as they appear on the Patent Office PAIR system. Information on concurrent litigation is also provided, where available.
Read More/続きを読む