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
Acer & Microsoft Attacks on MedioStream Video Recording Patent among Reexamination Requests Filed Week of January 31, 2011
| February 8, 2011
On January 7, 2011, Apple requested reexamination of MedioStream’s U.S. Patent No. 7,843,508 covering a way of recording video data directly onto disks. Now, both Acer and Microsoft have filed their own requests for reexamination of the ‘508 patent (inter partes Request Nos. (2) & (5)). Each of these new requestors has been accused by MedioStream of infringing the ‘508 patent. These requests continue a trend among the huge electronic companies, especially Apple, of using reexamination to reply to infringement allegations.
As an update to our posts of June 30 & November 9, 2010 and January 19, 2011 – regarding inter partes reexamination requests filed by Whirlpool against four LG refrigerator patents – Judge Garrett Brown, in a parallel infringement action between the parties in the District Court of New Jersey, has denied Whirlpool’s motion to stay the case pending completion of the reexamination proceedings. Judge Brown explained that inter partes reexaminations “could take more than five years if the parties fully exhaust their appeal rights” and that delay could cause LG irreparable loss because the parties are direct competitors: “[t]he goodwill lost during the reexamination proceedings could be difficult to measure and difficult to compensate fully with money damages after trial.”
The dispute we reported January 31, 2011, between Abbott Diabetes Care and DexCom, appears to have escalated last week (see ex parte Request Nos. (5) to (7)).
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Was Reexamination the Answer in Tokai v. Easton?
| February 6, 2011
The CAFC’s 2-1 panel decision in Tokai v. Easton has caused quite a stir in the patent blogosphere. The majority opinion affirming a summary judgment that the three patents-in-suit were obvious over the prior art, plus Judge Newman’s vigorous dissent, have raised concerns that KSR may be applied too broadly by the CAFC, to the detriment of worthy patents and worthy patent owners whose success is vital to economic recovery.
These concerns are serious and deserve debate. But the question that interests us is whether the outcome would have been different if the obviousness issue had been determined in reexamination, rather than in the courts? Could the accused infringer have obtained the same result through reexamination? With 20-20 hindsight, plus a healthy amount of speculation, we conclude that it could have.
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DNA Patents Dominate Reexamination Requests Filed Week of January 24, 2011
| February 2, 2011
In August, Helicos Biosciences sued Pacific Biosciences of California, Life Technologies and Illumina in Delaware for infringing four patents claiming methods for nucleotide sequencing. Pacific Biosciences has now replied by requesting reexamination of each of the four patents-in-suit (inter partes Request Nos. (2) to (5)).
Also, a request was filed for one of the Ronald Katz telephone patents (see ex parte Request No. (3)).
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RIM Attack on MobileMedia Image Data Compression Patent among Reexamination Requests Filed Week of January 17, 2011
| January 27, 2011
Late last year, MobileMedia Ideas filed law suits against RIM and Hyundai asserting infringement of its U.S. Patent No. 7,349,012 for an apparatus for compressing image data. RIM has now requested reexamination of the ‘012 patent (ex parte Request No. (18)), and may now file a motion to stay its case with MobileMedia.
Another reexamination request of obvious commercial significance was filed by Boston Scientific against Cordis regarding U.S. Patent No. 5,922,021 for intravascular stents. (ex parte Request No. (2)). The parties are currently in litigation regarding the ‘021 patent. Requests were also filed against patents owned by Ronald Katz (ex parte Request No. (1)) and David Breed (ex parte Request Nos. 13 & 14)).
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PTO Director Initiates Reexamination against Gift Tax Patent in Week of January 10, 2011
| January 19, 2011
In a very unusual step, the Director of the PTO has initiated a reexamination of U.S. Patent No. 6,567,790 claiming a method of estate planning (ex parte Request No. (17)). In its reexamination order, the PTO explained that Director initiates reexamination when it appears “that an examining procedure has not been followed which has resulted in the issuance of a claim in a patent that is prima facie unpatentable, and there is a compelling reason to order reexamination at the Director’s initiative.”
In this instance, the original examiner’s failure to consider a specific article “has created an extraordinary situation” requiring reexamination. According to the reexamination order, the article was not considered or discussed in the original prosecution, even though it disclosed the claimed feature noted by the original examiner as the reason for allowance. Whether such methods related to legal and tax matters should be eligible for patent protection has been hotly disputed.
Whirlpool requested reexamination of an LG refrigerator patent (inter partes Request No. (2)). The two companies have been in litigation regarding refrigerator patents in the past. A request was filed against a Nikon patent, but it is not yet clear who filed it (inter partes Request No. (3)).
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Acushnet Breached Agreement by Requesting Reexamination, Judge Rules
| January 17, 2011
In May we reported the patent dispute between golf ball-makers Callaway and Acushnet – Callaway accused Acushnet of selling golf balls that infringed four Callaway patents, and Acushnet requested inter partes reexamination of each of Callaway’s patents. A jury found all four patents to be invalid over the prior art, and the reexamination examiner rejected the claims of all four patents. The jury’s verdict for Acushnet is now on appeal to the CAFC, and the examiner’s rejections are before the PTO Board where oral argument is scheduled for January 19th. What interested us in the case was the trial judge and the examiner had construed the claims differently.
The case took a dramatic turn on Thursday when Judge Sue Robinson of Delaware ruled that Acushnet had breached a contract with Callaway by filing its reexamination requests. In 1996 the parties had entered into an agreement to end an earlier dispute regarding the patents. The agreement included a dispute resolution clause stating that “either party may initiate legal proceedings but only in the United States District Court for the District of Delaware, and no other.” The agreement also provided that the procedures specified for dispute resolution “shall be the sole and exclusive procedure for resolution of such disputes.”
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Galderma Wins Important Victory in Fight Against Psoriasis Patent
| January 11, 2011
The PTO has issued a Right of Appeal Notice (RAN) to Leo Pharmaceutical Products in the inter partes reexamination of its U.S. Patent No. 6,753,013. The ‘013 patent claims a composition for “dermal use” comprising a vitamin D analogue, a corticosteroid, and a selected solvent for “once daily” application, as well as methods for treating various skin conditions with that composition. Galderma requested the reexamination in 2006 and has vigorously contested Leo’s assertions of validity.
Leo had tried to overcome several prior art rejections by incorporating the “once daily” limitation from certain dependent claims into the independent claims, and by citing a series of articles and declarations to show that the claimed composition gave unexpectedly superior treatment results. The examiner refused to enter the simple incorporation-type amendments because of the advanced stage of the reexamination, finding that the amendments should have been made earlier and would change the scope of other dependent claims – the amendments would require “more than a cursory review by the examiner, as further consideration is necessary and new issues may arise.” (Perhaps). The examiner was also skeptical of the “once daily” limitation as a patentable distinction over the prior art because the ‘013 specification does not indicate that it “is an essential feature of the claimed invention.”
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Attack on Famous Funai Digital TV Patent, Among Reexamination Requests Filed Week of January 3, 2011
| January 11, 2011
Funai’s U.S. Patent No. 5,329,369 for digital television picture compression has been the subject of three District Court cases and an ITC investigation. In October, the PTO Board of Appeals ruled in a reexamination proceeding that claims 1-18 were invalid over the prior art. Now, a third party has requested reexamination of the remaining ‘369 patent claims 19-29 for a video signal processor (see ex parte Request No. (8)).
Apple requested reexamination of MedioStream’s U.S. Patent No. 7,843,508 (see inter partes Request No. (4)), in response to MedioStream’s infringement action against Apple, Microsoft and others.
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Microsoft Files Petition in i4i Reexamination
| January 7, 2011
Subscribers may be interested in our report on Microsoft’s petition in the reexamination of i4i’s ‘449 patent, which was posted on IPWatchdog Thursday.
Sony Attack on L-3 Communications Patents Among Reexamination Requests Filed Week Of December 27, 2010
| January 5, 2011
The most commercially significant reexamination requests last week may be Sony’s filings against two L-3 Communications patents, following that company’s suit against Sony for infringement (see ex parte Request Nos. (6) & (7)). But standing out among last week’s new requests, at least in the size department, was a 697-page block-buster proposing 25 substantial new questions of patentability, filed by CME Group against a Realtime Data patent claiming data compression systems (see inter partes Request No. (1)). Finally, information became available from the PTO about yet another reexamination request against a Fractus patent, this time filed by HTC.
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