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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- All Things Pros
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- FDA Law Blog
- IPWatchdog
- Patent Docs
- Patently-O
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- Think IP Strategy
- US Patent Post-Grant Opposition
Recent Requests
PTO Statistics
Auburn v. IBM, among the Reexamination Requests the Week of March 14, 2011
| March 21, 2011
Auburn v. IBM is not a “sweet-sixteen” match-up. It’s an infringement litigation pending in the District Court in Alabama since 2009. IBM has now requested reexamination of Auburn’s patents – U.S. Patent Nos. 7,194,366 & 7,409,306, both claiming ways of estimating the reliability of integrated circuits and thereby reducing the cost of making chips (see inter partes Request Nos. (2) & (3)).
Xilinx continued its assault on Intellectual Ventures’ patents – this week requesting reexamination of U.S. Patent No. 7,080,301 (see inter partes Request No. (7)), and perhaps U.S. Patent Nos. 6,065,880 and 6,687,865 (see ex parte Request Nos. (16) & (18)). The PTO records are, as yet, unclear regarding the requester of the latter two requests, but it appears to have been Xilinx.
Apple, the clear leader in recent times in the number of requests filed, continued its practice of seeking reexamination of each patent-in-suit whenever it is sued (see ex parte Request Nos. (10), (11) & (13)). Other noteworthy requests include those filed against Lincoln Global and 3M patents (see inter partes Request Nos. (1) & (11) and ex parte Request No.(1)).
Complying with the Duty of Disclosure in Reexamination
| March 14, 2011
In a case with parallel reexamination and District Court proceedings, a patentee sometimes faces annoying problems in attempting to comply simultaneously with the PTO’s duty of disclosure and the Court’s protective order. For instance, counsel for the patentee may receive documents from the accused infringer that contain confidential business information – for instance expert reports on infringement – and that also contain information that would be material to the reexamination. Last week in Sloan Valve v. Zuru, 2011 U.S. Dist. LEXIS 23269 (N.D. Ill.), Judge Amy J. St. Eve modified her protective order and in doing so, provided a nice roadmap for patentees in such parallel proceedings.
In December Judge St. Eve stayed the patent infringement pending completion of the PTO’s reexamination of the patent-in-suit. Shortly thereafter, the patentee filed a motion to reopen the case for the limited purpose of amending the protective order to allow submission of material information to the PTO. The patentee explained that the PTO’s duty of disclosure in reexamination proceedings requires submission of all information that may be material to the patentability of the patent. The protective order, however, did not “expressly permit submission of confidential information to the PTO.” Because of these conflicting obligations, the patentee asked that the protective order be changed to recite an express exception that the disclosing party must submit “confidential” or “highly confidential” information using the specific procedure outlined in MPEP 724.02.
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Toshiba Attack on Two Rovi V-Chip Patents among Reexamination Requests filed Week of March 7, 2011
| March 14, 2011
Late last year, Rovi sued Toshiba, alleging that it infringes two patents covering V-Chip technology, U.S. Patent Nos. 6,305,016 and 6,701,523. Toshiba has now replied to that allegation by requesting reexamination of both Rovi patents (see ex parte Request Nos. (16) & (17)).
The winner for the most reexaminations requested was TiVo who filed requests against seven Microsoft TV programming patents (see ex parte Request Nos. (3) to (9)).
Finally, Xilinx’s assault on Intellectual Venture patents continued last week with requests filed against IV’s U.S. Patent Nos. 6,993,669 and 6,408,415 (see inter partes Request No. (3) & ex parte Request No. (31)).
The following inter partes requests were filed:
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Star Scientific Tobacco Curing Patent Update
| March 14, 2011
This past Thursday the PTO issued Notices of Intent to Issue Ex Parte Reexamination Certificate (here, here) for Star Scientific’s U.S. Patent Nos. 6,202,649 and 6,425,401 claiming processes for curing tobacco so as to avoid the formation of harmful nitrosamines. The ‘649 and ‘401 are the subject of a prolonged infringement battle between Star Scientific and RJ Reynolds Tobacco, which is now on its second trip to the CAFC. The reexamination certificates themselves are likely to issue sometime in June.
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Challenges to Two More Intellectual Venture Patents, among the Reexamination Requests Filed Week of February 21, 2011
| February 28, 2011
Last week Xilinx requested reexamination of one of the five patents that Intellectual Ventures has accused Xilinx and three other companies of infringing (here). The same lawyer who filed that request for Xilinx has now requested reexamination of a second Intellectual Ventures patent – U.S. Patent No. 5,687,325 – from the same case, as well of a third Intellectual Ventures patent not in the case, U.S. Patent No. 6,252,527 (see ex parte Request Nos. (8) & (9)). Since the requests are for ex parte, not inter partes, reexamination, the identity of the real party in interest need not be disclosed.
In August EVM Systems sued Cordis, Boston Scientific and Abbott for infringement of two patents related to stents having a “slotted memory metal tube,” U.S. Patent Nos. 6,780,175 and 7,037,321. Last week, Cordis requested reexamination of the ‘175 patent and Abbott requested reexamination of the ‘321 patent (see inter partes reexamination Request No. (5) and ex parte Request No. (15)). Although inter partes reexamination was possible for both patents, lawyers for Abbott chose ex parte reexamination. The choice between ex parte and inter partes reexamination is sometimes complex and one addressed in a recent post (here).
The leader, however, in the number of requests filed last week was Airbus Americas that sought reexamination of four Firepass patents related to fire suppression in certain structures, for instance in computers. Firepass has accused Airbus of infringing those patents.
Xilinx Attack on Intellectual Ventures Patent, among Reexamination Requests filed Week of February 14, 2011
| February 21, 2011
Intellectual Ventures shook up the patent world in December when it filed three separate infringement suits against a series of large electronics companies. In one of the cases, Intellectual Ventures accused Altera, Microsemi and Lattice Semiconductor of infringing four patents programmable logic devices. On Tuesday of last week, Intellectual Ventures filed an amended complaint to add Xilinx as a defendant. Well, Xilinx is wasting no time, and on Friday it asked the Patent Office to reexamine one of the five patents-in-suit, U.S. Patent No. 6,272,646. Requests for reexamination of the other four patents may come soon (see inter partes Request No. (8)).
The other big news, which we reported in two posts last week, were requests by Google for reexamination of five of the seven Oracle patents-in-suit in the their case in California. (See inter partes Request No. (6) and ex parte Request Nos. (4) to (7)).
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Should I Request Ex Parte or Inter Partes Reexamination?
| February 14, 2011
Each quarter, the PTO compiles its reexamination statistics showing the number of ex parte and inter partes reexamination requests filed, the number of cases where the claims are confirmed, amended or canceled, etc. In recent years, the total number of reexamination requests has trended slightly upwards, with inter partes requests accounting for 25 to 35 % of the total. In the last three months of 2010 (here, here), the inter partes request portion of the total was at the upper end of that range.
What interests us, though, is the fact that for those patents where the requestor has the option between ex parte and inter partes reexamination, ex parte reexamination is chosen at least 50% of the time. (Where the patent issues from an application filed before November 29, 1999, the requestor’s only choice is ex parte reexamination (see Cooper v. Dudas, 87 USPQ2d 1705, 1706 (Fed. Cir. 2008)). One might expect that inter partes reexamination, despite its hefty PTO filing fee of $8,800.00, would the overwhelming choice. Why is ex parte reexamination, with essentially no right for the requestor to participate, chosen so often?
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Facebook Challenges to Three “Human Relationships” Patents, among Reexamination Requests Filed Week of February 7, 2011
| February 14, 2011
This being Valentine’s Day, we couldn’t help noticing the requests (see inter partes Request Nos. (1) to (3)) filed last week by Facebook against three patents owned by Mekiki Creates for computer systems for “registering human relationships.” Facebook and Mekiki are currently in a relationship in an infringement suit in the Northern District of California. Also look at inter partes Request No. (6) for a gem cutting apparatus patent.
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Virginia Patent Foundation’s Motion for Reconsideration Denied – Intervening Rights Still Absolve GE of Damages for Activities before Reexamination Certificate Issue Date
| February 10, 2011
On Tuesday, Judge Moon denied Virginia Patent Foundation’s (“VPF”) Motion for Reconsideration of his decision dated November 9, 2010 in which he had granted partial summary judgment for General Electric (“GE”) based on intervening rights stemming from VPF’s amendment “in effect” of claim 1. The effect of a reexamined patent on alleged infringers during the period prior to issuance of the reexamination certificate is governed 35 U.S.C. § 307(b) that triggers 35 U.S.C. § 252.
Judge Moon decided in his original Opinion that this statute applies because Claim 1 was “amended in effect” as a result of the statements the patent owner made in reexamination, together with its cancellation of Claim 4, which altered the scope of Claim 1. See Opinion 43-44.
The Patent Foundation predictably took issue with Judge Moon’s interpretation of §307(b), arguing that the term “amended” in the statute requires explicit change of the wording of a claim in reexamination, and that §252 is not triggered by §307(b) because the wording of Claim 1 was never explicitly changed during the reexamination.
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Right of Appeal Notice in RIM Reexamination of Visto Patent
| February 10, 2011
A Right of Appeal Notice (RAN) has issued in the inter partes reexamination of Visto’s U.S. Patent No. 7,363,349 which claims gateway servers and methods for real-time data retrieval. In the RAN, the examiner states that the amended claims are patentable over the prior art because of Visto’s amendment of each of the independent claims to recite a limitation from one of the dependent claims. The reexamination request had been filed by Research in Motion (RIM) who now has the option of appealing the examiner’s decision to the PTO Board.
Who won? The case demonstrates the uncertainty of “reexamination kill-rates.” Assigning success in a case to one side or the other, where claims have been amended, depends on the commercial realities. If the market for the claimed product is largely in the future, Visto is the winner as it emerges from reexamination (assuming that RIM does not pursue and win an appeal) with a patent enjoying an “enhanced presumption of validity.” On the other hand, if the market for the claimed product is largely in the past, RIM is the winner – Visto’s damages for infringement of its independent claims for the period prior to the PTO’s issuance of the reexamination certificate are eliminated by Visto’s claim amendments. That issuance date could be extended by a year or two if RIM appeals the examiner’s decision.
Visto had sued RIM for infringement of the ‘349 patent in 2008, but the case has been dismissed, apparently on the basis of a settlement agreement.
