Reexamination Requests : US PTO Litigation Alert™

REQUESTS FILED THE WEEK OF APRIL 5TH

| April 15, 2010

Reexamination requests are typically reported in the Official Gazette approximately three months after filing. Such a delay in reporting requests, particularly requests that involve copending District Court litigation, is too long. We will therefore report new ex parte and inter partes reexamination requests filed the previous week as they appear on the Patent Office EFS. In some cases, the information available from the Patent Office is still incomplete.
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MICROSOFT & APPLE FIRE AT EMG

| April 8, 2010

The difficulty faced by a patentee who sues Microsoft and Apple simultaneously was demonstrated last week – as if any demonstration were needed.  Microsoft has filed two very substantial requests for inter partes reexamination, one against U.S. Patent No. 7,020,845 and the other against U.S. Patent No. 7,441,196.
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REQUESTS FILED THE WEEK OF MARCH 29TH

| April 8, 2010

Reexamination requests are typically reported in the Official Gazette approximately three months after filing. Such a delay in reporting requests, particularly requests that involve copending District Court litigation, is too long. We will therefore report new ex parte and inter partes reexamination requests filed the previous week as they appear on the Patent Office EFS. In some cases, the information available from the Patent Office is still incomplete.
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REJECTION OF KATZ PATENT AFFIRMED IN PART

| April 5, 2010

The PTO Board has affirmed the rejection of most of the claims of Ronald Katz’ U.S. Patent 6,292,547.  The ‘547 patent is entitled “TELEPHONIC-INTERFACE STATISTICAL ANALYSIS SYSTEM” and is part of a substantial patent portfolio owned by Katz covering interactive voice response devices and methods for use in a range of communication systems, including public telephone networks.  The ‘547 patent mentions polling, auction, lottery, game and mail order uses.
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RECENT DEVELOPMENTS

| April 5, 2010

(1) PTO Board Relies on Internet Posting to Reject Refrigerant Claims

The Board has affirmed the rejection of certain claims of U.S. Patent No. 6,336,333, owned by OZ Technology.  The ’333 patent claims an automobile refrigeration system designed to use refrigerant R-12, in which the R-12 has been replaced with a mixture of propane and butane in amounts that give approximately the same properties as R-12.  Reexamination was requested by Thermofluid Technologies.
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SECOND UPDATE ON SANOFI-AVENTIS V. APOTEX

| March 31, 2010

We updated you yesterday on the reexamination of U.S. Patent No. 4,847,265, covering Sanofi’s anti-blood clot drug PLAVIX®, and today we learned that the PTO has issued a Notice of Intent to Issue a Reexamination Certificate (NIRC).

The PTO has decided that the ‘265 claims are patentable over the prior art, explaining that the claimed “dextro isomers possess all the therapeutic anti-platelet aggregation activity without the toxicity of the racemate or the levo isomer.”  The PTO acknowledged the long-felt need for, copying and commercial success of PLAVIX ® as supporting its conclusion of patentability.

Unfortunately, the legal issues raised by the ‘265 patentee in its response to the December Office Action will not be answered in this case.

DEVELOPMENTS LAST WEEK

| March 30, 2010

(1) Some Claims of Often Litigated Patent Emerge from Reexamination

The rejection of the claims of U.S. Patent No. 5,539,930, owned by A.L.S. Enterprises, was partially reversed and partially affirmed yesterday.
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REQUESTS FILED THE WEEK OF MARCH 22ND

| March 30, 2010

Reexamination requests are typically reported in the Official Gazette approximately three months after filing. Such a delay in reporting requests, particularly requests that involve copending District Court litigation, is too long. We will therefore report new ex parte and inter partes reexamination requests filed the previous week as they appear on the Patent Office EFS. In some cases, the information available from the Patent Office is still incomplete.
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REQUESTS FILED THE WEEK OF MARCH 15TH

| March 25, 2010

Reexamination requests are typically reported in the Official Gazette approximately three months after filing. Such a delay in reporting requests, particularly requests that involve copending District Court litigation, is too long. We will therefore report new ex parte and inter partes reexamination requests filed the previous week as they appear on the Patent Office EFS. In some cases, the information available from the Patent Office is still incomplete.
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REQUESTS FILED LAST WEEK

| March 18, 2010

Reexamination requests are typically reported in the Official Gazette approximately three months after filing. Such a delay in reporting requests, particularly requests that involve copending District Court litigation, is too long. We will therefore report new ex parte and inter partes reexamination requests filed the previous week as they appear on the Patent Office EFS. In some cases, the information available from the Patent Office is still incomplete.
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