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
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特許庁再審査のアドバイザリーアクションに基づく、裁判官による差し止めの解除
| July 26, 2010
English Language Version (via IPWatchdog)
In re Swansonでの一連の出来事は周知であろう。本件では、陪審員は特許は有効かつ侵害されていると評決し、CAFCはその評決に基づく地裁判決を容認した。その後、侵害被疑者は米国特許庁に特許の再審査請求を行ったところ、米国特許庁は特許クレームを拒絶した。そして、すでに特許は有効であると判断されているにもかかわらず、CAFCは特許庁の拒絶判断を維持した。CAFCは、有効性は特許庁と裁判所とで異なる争点であると述べ、明らかに相反する結果を容認したのである。これはSwansonで示された注目すべき結論を踏襲するものであり、侵害被疑者の間で再審査がそれほどよく利用されるようになった理由の一つである。
フロリダ州南地区地方裁判所のJames Cohn判事は、Swansonのアプローチをさらに一歩進め、本件Flexiteek Americas v. PlasTEAK (Case No. 08-60996-civ-Cohn/Seltzer)において、問題の特許が無効であると判断した再審査のアドバイザリーアクションに基づき、本案差し止め命令を取り下げた。
Flexiteekは、PlasTEAKが合成チーク材の板張りに関する米国特許第6,895,881号を侵害しているとして提訴した。公判前、Cohn判事は、新規性および自明性の争点においてPlasTEAKはそれらにつき積極的抗弁の基礎をまったく主張しなかったとして、PlasTEAKを退ける略式判決（サマリージャッジメント）を出した。2009年6月の公判で陪審はPlasTEAKが‘881特許を文言侵害していると判断した。
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Mid-July Developments
| July 22, 2010
1. Board Reverses Rejection of Breed Airbag Patent
David Breed and Automotive Technologies International (ATI) won a victory yesterday at the PTO Board. In a reexamination of their U.S. Patent No. 6,712,352 for an “arrangement for controlling deployment of a side airbag,” Breed and ATI substantially amended their claims to distinguish over certain prior art. In doing so, however, they included claim wording that the examiner found to lack written description support in the ‘352 specification. Although original claims under reexamination are not checked for compliance with 35 U.S.C. § 112, amendments to original claims and new claims are, and the examiner therefore rejected the pending claims.
The Board has now reversed the examiner, finding that the ‘352 specification is “sufficiently clear that the inventors possessed the claimed subject matter as evidenced by explicit identification of the problem of side airbag deployment causing injury to a child when the child’s head is against the airbag module, and statements indicating that the described invention addresses this identified problem.”
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Reexamination Requests Filed the Week of July 12th
| July 21, 2010
Notable is a request filed by Medtronic against a patent belonging to Edwards Lifesciences AG for a valve prosthesis. Also interesting is a request filed by Nalco regarding a Baker Hughes patent – the patent is the subject of an infringement action between the companies that has already featured a preliminary injunction and two trips to the CAFC.
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.
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Patentee Establishes Priority by Reexamination
| July 16, 2010
A party may be entitled at the outset of litigation to prevail on an outcome-determinative issue, such as claim construction or patent validity, but the trial judge refuses to grant summary judgment/determination. The party is then required to proceed to trial, with uncertainty, to seek vindication. Much quicker resolution of such issues is sometimes available through reexamination. In a recent example, the patentee in the ITC investigation Certain Authentication Systems, Prism Technologies, established through reexamination that it was entitled to an early priority date, thereby removing the bulk of the prior art references asserted against it by the Respondent Research in Motion (RIM).
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Reexamination Requests Filed the Week of July 5th
| July 14, 2010
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.
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Judge Ward Finds No Inequitable Conduct in Reexamination
| July 9, 2010
A third party that is adverse to claims pending in an application or reexamination proceeding may possess strong prior art against those claims, but feel that it does not have an effective way of presenting that art to the examiner. In such a case, the third party sometimes adopts the strategy of sending the prior art to the attorneys for the applicant or patentee. The applicant or patentee is then in the predicament of either disclosing the art to the examiner, or withholding the art and thereby risking an allegation of inequitable conduct. This strategy failed earlier this week in Fiber Systems Int’l, Inc. v. Applied Optical Sys., Inc., 2010 U.S. Dist. LEXIS 67331 (E.D. Tex. July 7, 2010).
Fiber Systems sued Applied Optical for patent infringement in November 2006. Applied Optical defended, inter alia, by filing a reexamination request based on two prior art references. During the pendency of that reexamination proceeding, a third party competitor sent Fiber Systems a letter identifying seven additional prior art references and stating that they were material to the patentability of the claims under reexamination. The examiner subsequently rejected the claims on the basis of the two references cited in Applied’s reexamination request, but later withdrew the rejection after Fiber’s amendment of the claims and an interview with lawyers and other representatives for Fiber Systems. A reexamination certificate issued in March 2009, stating that the amended claims were patentable.
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Reexamination Requests Filed the Week of June 28th
| July 7, 2010
Noteworthy among the requests filed last week are two filed by Samsung against antenna patents owned by Fractus. Those patents are the subject of a case pending in Texas between the two companies. Also interesting are requests against two AstraZeneca patents for its ropivacaine local anesthetic composition.
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.
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Second Request for Reexamination of Plavix® Patent is Denied
| July 1, 2010
The USPTO has denied Apotex’ request for reexamination of U.S. Patent No. 4,847,265, finding that no substantial new question of patentability (SNQ) has been raised. The main reference relied upon in the request – U.S. Patent No. 4,529,596 – had been applied by the PTO in an anticipation rejection in the original prosecution and in a double patenting rejection in an earlier reexamination, of the ‘265 patent.
The ‘265 patent covers clopidogrel bisulfate which is the active agent in Bristol-Myers/Sanofi’s anti-blood clot drug, PLAVIX®. The ‘265 patent is the subject of a pending infringement suit between these companies in the Southern District of New York.
Does an Ex Parte Requester Have Two Bites at the Apple?
| July 1, 2010
A requester in an inter partes reexamination is estopped from arguing in subsequent litigation an invalidity issue that it “raised or could have raised” in the reexamination. 35 U.S. § 315(c). There is no corresponding estoppel provision against ex parte requesters. Nevertheless, reexamination practitioners often assert that there is a de facto estoppel against an ex parte requester who later reasserts in litigation the reexamination references.
That may not be true in all courts.
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Fluxion Biosciences Files Four Reexamination Requests and Moves to Stay Infringement Suit
| June 30, 2010
Earlier this month, Fluxion Biosciences filed reexamination requests against four Cellectricon patents related to microfluidic structures involving cell-based biosensors. See “Recent Requests” below. The next day, Fluxion moved to stay a law suit that Cellectricon had filed last summer, accusing Fluxion of infringing those four patents. Cellectricon AB v. Fluxion Biosciences, Inc., 5:09-CV-03510-RMW (N.D. Cal.).
In its motion to stay, Fluxion asserts that each of the three familiar factors – possible prejudice to the patentee, simplification of issues, and the stage of the litigation – favors a stay. What makes Fluxion’s motion special, however, is that it also explains why the four requests are meritorious.
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