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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- IPWatchdog
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再審査証の発効日前の行為に関する賠償責任を免責する中用実施権
| December 29, 2010
バージニアの西地区地方裁判所のNorman K. Moon判事は、University of Virginia Patent Foundation v. General Electric Company, et alのケースで、GEは、米国特許法252条に基づく中用実施権（intervening rights）を有していいるので、再審査証の発行前において米国特許5,245,282 (“282特許”)のクレーム1を侵害しないと判決した。換言すると、GEは、282特許の発行時から再審査で有効な特許になるまでの17年に及ぶ期間について実施権を得たことになる。
一般にこの実施権は、査定系再審査の間に問題の特許クレームが補正され（非実質的な補正では足りない）あるいはクレームが追加された場合に与えられる（米国特許法307条および252条）。しかしながら、本ケースでは、問題のクレーム（クレーム1）は再審査手続きで補正されていないし、クレームが追加もされてもいない。他方、再審査でクレーム1の或る文言を明確にするため、再審査手続きでクレーム4が削除された。これにより唯一変わったのはクレーム1の範囲（解釈）である。
米国特許法307条(b)項は、再審査証の発行前の侵害被疑者に対する再審査特許の効力を規定している。この条項が252条の権利を生じさせる。Moon判事は、クレーム4の削除の結果、クレーム1は事実上補正され（amended in effect as a results of ….）、これによりクレーム1の範囲が変わったので、本ケースに307条が適用されると判断した。
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TiVo Attack on AT&T Network Tracking Patent among the Reexamination Requests Filed the Week of December 20
| December 29, 2010
Earlier this year, AT&T Intellectual Property sued TiVo for infringement of U.S. Patent No. 6,983,478 entitled “METHOD AND SYSTEM FOR TRACKING NETWORK USE.” TiVo, which has enjoyed success in earlier reexaminations, has now requested reexamination of AT&T’s ‘478 patent (see Inter Partes Request No. (4)).
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Verizon Attack on EMSAT Cell Phone System Patent among Reexamination Requests Filed Week of December 13, 2010
| December 21, 2010
The most interesting reexamination request last week was filed by Verizon Wireless against EMSAT’s U.S. Patent No. 7,289,763 for a cellular telephone system (see Inter partes Request No. (6)). EMSAT had sued nine companies for infringement of the ‘763 patent, including Verizon.
But perhaps most noteworthy was the fact that Apple did not file any requests.
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Apple Requests for Reexamination of MONKEYMedia Patents among those Filed Week of December 6, 2010
| December 14, 2010
When sued for patent infringement, Apple’s strategy this year has been to request reexamination of the patents-in-suit as soon as possible. It repeated that strategy this week by filing inter partes requests against two MONKEYMedia patents (see Inter partes Request Nos. (3) & (5))..
DNA2.0, Inc. has requested reexamination of U.S. Patent No. 5,786,464 owned by NIH for “Over-expression of Mammalian and Viral Proteins” (see Ex parte Request No. (12)). An ironic aspect of this conflict is that DNA2.0 is a past recipient of grant money from NIH.
And finally, HTC appears to have completed its assault on Fractus by requesting reexamination of three more Fractus patents (see Inter partes Request Nos. (8) to (10)).
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HTC Attacks on Fractus Patents among Reexamination Requests Filed Week of November 29
| December 8, 2010
In previous weeks, Samsung and Kyocera have requested reexamination of the patents that Fractus had accused them and other cell phone makers of infringing. Last week, it was HTC’s turn, as it requested reexamination of five of the nine Fractus patents-in-suit (see Inter partes Request Nos. (3), (4), (5), (6) and (7)). The infringement litigation is Fractus S.A. v. Samsung Electronics Co. et al. in the Eastern District of Texas.
Requests were also filed against four AT&T patents (see Ex parte Request Nos. (13) to (16)) that are the subject of AT&T Intellectual Prop. V. TiVo Inc. in the Northern District of California. Though the identity of the filer is not yet clear from PTO files, it is presumably TiVo, no stranger to reexamination proceedings.
Finally, LG is attacking Whirlpool’s ‘130 patent that LG was found by a Delaware jury to infringe earlier this year (see Ex parte Request No. (20)).
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CRU Denies Apotex Petition Challenging Denial of Second Request for Reexamination of PLAVIX® Patent
| December 3, 2010
The PTO’s refusal last week to grant Microsoft’s second request for reexamination of i4i’s U.S. Patent No. 5,878,449 because no substantial new question of patentability (SNQ) had been raised, reminds us that we need to update our report regarding Bristol-Myers/Sanofi’s U.S. Patent No. 4,847,265.
The ‘265 patent is the subject of an infringement suit between Apotex and Bristol in the Southern District of New York and is of even greater commercial significance than i4i’s ‘449 patent. It covers a chemical isomer clopidogrel bisulfate which is the active agent in the anti-blood clot drug, PLAVIX®. And as we reported in July, the examiner denied a second request filed by Apotex for reexamination of the ‘265 patent, finding no SNQ. Dissatisfied with the result, Apotex petitioned the Central Reexamination Unit (CRU) to reverse the examiner and to hold that Apotex’s request did, in fact, raise an SNQ regarding the patentability of the ‘265 patent.
The CRU has now denied Apotex’s petition. The CRU began its analysis with the definition of an SNQ: “when there is a substantial likelihood that a reasonable examiner would consider the prior art or printed publication important in deciding whether or not the claim is patentable.” Old art may be relied upon if presented “in a new light” as compared with previous examination, as opposed to art presenting “the same question of patentability” as before.
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Two Quick Updates
| December 3, 2010
1. Rambus Files Five Complaints
From time to time, we have reported Rambus’ efforts to enforce its portfolio of semiconductor patents, including the so-called “Barth I” patents that were the subject of an earlier ITC investigation. Rambus’ efforts have often in the face of numerous parallel reexamination proceedings.
Wednesday, Rambus filed five new complaints asserting infringement of a total of 19 patents, including the three Barth I patents: four complaints in the Northern District of California against Media Tek, STMicroelectronics, LSI and Broadcom, and a fifth at the U.S. ITC against those four companies and a long, long list of others. We strongly expect that reexamination will play a role in this conflict.
2. Cellectis Sues Precision BioSciences
At the beginning of November, we described Cellectis’ attempts to enforce four patents against Precision’s “Directed Nuclease Editor” for modifying plant genomes. Those attempts have been stymied so far by a series of reexamination requests filed by Precision.
On Tuesday, Cellectis received a new patent – U.S. Patent No. 7,842,489, entitled “Use of meganucleases for inducing homologous recombination ex vivo and in toto in vertebrate somatic tissues and application thereof” – and the same day filed a complaint against Precision accusing it of infringement of the ‘489 patent.
Fractus Patents Hit with Nine More Reexamination Requests, Among New Requests Filed Last Week
| December 1, 2010
In our post of November 22, 2010, we described Samsung’s strategy for defending against allegations that it and several other cell phone makers infringe nine antenna patents owned by Fractus – specifically by vigorously defending in the eastern District of Texas and requesting reexamination at the PTO against all nine Fractus patents. Now it appears that co-defendant Kyocera has filed its own set of reexamination requests against the “Fractus Nine” (Inter partes Nos. (4) to (11), (13) below). Not all the details of the new requests are publically available because these new requests were paper-filed and because of certain procedural problems. It is quite likely, however, that these requests will be granted and merged with Samsung’s earlier reexaminations.
Also of interest is a request filed by Abbott Diabetes Care Inc. against a DexCom patent for transcutaneous analyte sensors. Abbott and DexCom sparred in reexamination over that technology in the past, for instance regarding U.S. Patent Nos. 6,931, 327 and 7,276,029.
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PTO Refuses Microsoft Request for 2nd Reexamination of i4i Patent, but Supreme Court Grants Cert on Clear & Convincing Standard
| November 29, 2010
At the end of August, after the CAFC had affirmed a $290 million verdict for infringement of i4i’s U.S. Patent No. 5,787,449, and after the PTO had confirmed the validity of the ‘449 claims in reexamination, Microsoft requested that the Supreme Court review the verdict to determine whether a judgment of patent invalidity requires proof by “clear and convincing evidence.” This morning the Supreme Court granted Microsoft’s petition.
Of greater interest to this Blog, however, Microsoft also requested that the PTO conduct a second reexamination of those claims. The PTO, however, has now refused to grant any reexamination of the ‘449 claims.
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Apple Files Nine Reexamination Requests
| November 23, 2010
Apple has been especially active lately in defending against charges of patent infringement by filing requests for reexamination. In response to two separate infringement suits in Texas, it filed requests against two Mirror Works patents and three Affinity Labs patents, and for an ITC investigation, it filed requests against four S3 Graphics patents (See Inter partes Request Nos. (1) to (3) & (6) to (7), and Ex parte Request Nos. (16) to (19)).
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