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- 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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Samsung Attack on Two Mobile Phone Antenna Patents Owned by Fractus among the Reexamination Requests Filed the Week of November 8th
| November 17, 2010
Last year Fractus S.A of Spain sued Samsung and a host of other mobile telephone makers in the Eastern District of Texas for infringing nine patents related to internal antennas for mobile telephones. Samsung has now filed reexamination requests against two of those Fractus patents (Inter partes Request Nos. (1) & (2) below). Requests for reexamination have now been filed against all nine Fractus patents-in-suit.
Also of special interest are reexamination requests filed by TiVo against two EchoStar patents for TV programming (Ex parte Request Nos. (3) & (5) below).
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TiVo Files New Requests to Extend Reexamination of EchoStar Patents
| November 12, 2010
TiVo is now testing in EchoStar v. TiVo, (E.D. Tex., 5:05-cv-00081) the limit to which an accused infringer may stay litigation pending completion of the reexamination process.
EchoStar sued TiVo in 2005 for infringement of U.S. Patent Nos. 5,774,186 and 6,208,804 related to direct access TV technology. TiVo replied by requesting reexamination of the patents, and the trial court stayed the litigation pending completion of the reexaminations. After vigorous and prolonged prosecution, the PTO issued Notices of Intent to Issue a Reexamination Certificate (NIRC) for the ‘186 and ‘804 patents, in August and July respectively. It appeared that the patents were on their way out of reexamination, and on October 29th, EchoStar asked the trial judge to lift the stay and resume the litigation.
TiVo, however, moved quickly to keep the patents in reexamination and the litigation in check.
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Intervening Rights Absolve GE of Damages for Activities before Reexamination Certificate Issue Date
| November 11, 2010
Judge Norman K. Moon of the Western District of Virginia has held in University of Virginia Patent Foundation v. General Electric Company, et al., that pursuant to 35 U.S.C. §252, GE has “intervening rights” and cannot be held liable for any infringement of Claim 1 of U.S. Pat. No. 5,245,282 (“282 patent”) prior to issuance of the reexamination certificate.
In other words, GE gets a pass for the near 17-year period between issuance of the original ‘282 patent and its conversion through reexamination to a valid patent.
This pass is typically given when the claims at issue have been amended (more than insubstantially) or added during an ex parte reexamination request. 35 U.S.C. §307 and 35 U.S.C. §252.
However, in this case, the claim at issue (Claim 1) was not amended (or added) during the reexamination proceeding. The only thing that appears to have changed is the scope of Claim 1.
§307(b) governs the effect of a reexamined patent on alleged infringers during the period prior to issuance of the reexamination certificate and triggers §252. Judge Moon decided that this statute applies in this case because Claim 1 was “amended in effect” as a result of the cancellation of Claim 4, which altered the scope of Claim 1.
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Reexamination Requests by Whirlpool against Two LG Refrigerator Patents among those Filed the Week of November 1st
| November 9, 2010
The most commercially significant requests filed last week are likely the ones filed by Whirlpool against two LG refrigerator patents (Inter partes Nos. (4) & (5) below). LG sued Whirlpool for infringement of those patents a little more than a year ago. In early 2008, Whirlpool filed an ITC complaint against LG for several patents covering refrigerators (Inv. No. 337-TA-632), and in February of this year, the Commission issued its final determination finding no violation of Section 337.
Also of interest is a request filed by DexCom against an analyte sensor patent owned by TheraSense (Ex parte No. (9)).
The following inter partes requests were filed:
(1) 95/001,477 (electronically filed) – U.S. Patent No. 7,588,048 having Ying-Che Huang as its first named inventor and entitled AIR PUMP NOZZLE. Filed November 2, 2010 by Jiun-Wei Chang.
(2) 95/001,478 (electronically filed) – U.S. Patent No. 7,062,514 owned by Elbert Harris Living Trust and entitled CONSTRUCTION PROJECT SUBMITTAL MANAGEMENT. Filed November 2, 2010.
(3) 95/001,479 (electronically filed) – U.S. Patent No. 7,316,614 having Michael J. Dietz as its first named inventor and entitled METHOD AND APPARATUS FOR CONDUCTING A SWEEPSTAKES. Filed November 2, 2010 by VS2 Worldwide Communications, Inc. The ‘614 patent is currently the subject of a litigation styled Houchin v. VS2 Worldwide Communications, LLC et al. (M.D.N.C., Case No. 1:08-cv-00368-WO-PTS, filed June 3, 2008).
(4) 95/001,480 (electronically filed) – U.S. Patent No. 7,484,382 owned by LG Electronics Inc. and entitled REFRIGERATOR. Filed November 3, 2010 by Whirlpool Corporation. The ‘382 patent (along with the ‘475 patent – see below) is currently the subject of a litigation styled LG Electronics U.S.A., Inc. et al. v. Whirlpool Corporation et al. (D.N.J., Case No. 2:09-cv-05142-GEB-ES, filed Oct. 7, 2009).
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Examiner Applies Recapture Rule too Broadly
| November 9, 2010
The PTO Board ruled last week that the examiner in Ex parte James had misapplied the Recapture Rule when he rejected amended reissue claims under 35 U.S.C. § 251 for improper recapture.
The Recapture Rule prohibits a patentee from recapturing through a reissue application subject matter that it had surrendered by amendment or by argument during the prosecution of the original application to overcome prior art. It is based on the right of the public to rely upon such amendments or arguments as a permanent surrender of that subject matter. The question of whether “surrender” has occurred is considered from the perspective of “an ordinary observer viewing the prosecution history.”
The patent for which reissue was sought claimed a method for cutting and sealing two layers. During the original prosecution, applicants distinguished their claimed method from the prior art because of the location of a heater in an air space between V-belts.
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Request for Reexamination of GE’s ‘985 Wind Turbine Patent among the Requests Filed the Week of October 25th
| November 3, 2010
Last January the U.S. International Trade Commission issued a Final Determination that Mitsubishi Heavy’s importation of wind turbines did not violate Section 337, as had been alleged by General Electric. Part of the ITC’s Determination was a holding that there was no “domestic industry” with respect to GE’s U.S. Patent No. 6,921,985 because GE’s own turbines did not practice any claim of that patent. A request for reexamination (Inter partes Request No. 6 below) has now been filed against GE’s ‘985 patent. The ITC also found that GE’s two other patents – U.S. Patent Nos. 5,083,039 & 7,321,221 – in the investigation were not infringed by Mitsubishi’s turbines.
Also of special interest are requests for reexamination (Inter partes Request Nos. 2 & 3 below) filed by Hewlett-Packard and IBM against two ACQIS patents. ACQIS has sued HP and IBM, among others, in the Eastern District of Texas for infringement of those patents. We also note requests were filed (Inter partes Request Nos. 4 & 5 below) against a Netlist patent. Netlist has sued Google for infringement of that patent.
The following inter partes requests were filed:
(1) 95/001,474 (electronically filed) – U.S. Patent No. 6,856,540 owned by Kilopass Technology, Inc. and entitled HIGH DENSITY SEMICONDUCTOR MEMORY CELL AND MEMORY ARRAY USING A SINGLE TRANSISTOR. Filed October 25, 2010 by Sidense Corp. The ‘540 patent is currently the subject of a litigation styled Kilopass Technology, Inc. v. Sidense Corp. (N.D. Cal., Case No. 3:10-cv-02066-SI, filed May 14, 2010).
(2) 95/001,475 (electronically filed) – U.S. Patent No. 7,376,779 owned by ACQIS LLC and entitled MULTIPLE MODULE COMPUTER SYSTEM AND METHOD. Filed October 27, 2010 by Hewlett-Packard Company and International Business Machines Corporation. The ‘779 patent (along with the ‘416 patent – see below) is currently the subject of a litigation styled ACQIS LLC v. Appro International, Inc. et al. (E.D. Tex., Case No. 6:09-cv-00148-LED, filed Apr. 2, 2009).
(3) 95/001,476 (electronically filed) – U.S. Patent No. 7,363,416 owned by ACQIS LLC and entitled COMPUTER SYSTEM UTILIZING MULTIPLE COMPUTER MODULES WITH PASSWORD PROTECTION. Filed October 27, 2010 by Hewlett-Packard Company and International Business Machines Corporation. The ‘416 patent (along with the ‘779 patent – see above) is currently the subject of a litigation styled ACQIS LLC v. Appro International, Inc. et al. (E.D. Tex., Case No. 6:09-cv-00148-LED, filed Apr. 2, 2009).
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Steve Jobs Patent Stands out in Apple Infringement Case against Motorola
| November 3, 2010
Apple filed two complaints (here and here) in the Western District of Wisconsin last Friday, accusing Motorola of infringing a series of Apple patents. The accused products are imported “mobile devices and related software,” specifically, “the Droid, Droid 2, Droid X, Cliq, Cliq XT, BackFlip, Devour A555, Devour i1, and Charm.”
One patent in particular stands out – U.S. Patent No. 7,479,949, entitled “Touch Screen Device, Method, and Graphical User Interface for Determining Commands by Applying Heuristics” – because it has already survived a reexamination request. In April EMG Technology filed a substantial reexamination request, asserting a long series of potential prior art rejections against each of the ‘949 claims. In June the PTO refused to grant reexamination, finding that the request had failed to raise even a single substantial new question (SNQ) of patentability with respect to the ‘949 claims. EMG has not petitioned the PTO to reconsider. The PTO’s refusal to grant reexamination will certainly enhance the validity of the ‘949 claims.
Apple may also enjoy a certain psychological victory with respect to its other patents-in-suit – presumably Apple’s opponents selected for reexamination the patent most vulnerable to attack. Accordingly, the failure to obtain a grant of reexamination against the ‘949 patent may make Apple’s other patents seem more formidable.
The ‘949 patent also stands out because it names 25 inventors, among them Steve Jobs.
Earlier this year, Apple sued Nokia and HTC for infringement of a number of patents, including the ‘949 patent.
Precision BioSciences Wins Victory over Cellectis
| November 1, 2010
The PTO has issued a Right of Appeal Notice (RAN) in the inter partes reexamination of Cellectis’ U.S. Patent No. 7,309,605 entitled “Nucleotide Sequence Encoding the Enzyme I-SceI and the Uses Thereof.” The ‘605 patent now joins three other related Celectis patents – U.S. Patent Nos. 6,610,545, 6,833,252 and 7,214,536 – that have been rejected in reexamination and are now on appeal before the PTO Board. The reexamination proceedings were requested by Precision BioSciences.
Cellectis had filed a Complaint against Precision in the Eastern District of North Carolina in March 2008 for infringement of the ‘605 and ‘545 patents. Precision’s accused product is called a “Directed Nuclease Editor” (DNE). According to Cellectis, Precision’s DNE makes Group I intron coded endonucleases used to target site-specific DNA breaks and modify the genome of plants. The ‘605 and ‘545 patents are owned by Institut Pasteur and Universitie Pierre et Marie Currie; Cellectis is the exclusive licensee.
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Developments at the End of October
| November 1, 2010
1. Judge Refuses to Consider “Gamesmanship” Remarks in Claim Construction
Last week we reported the Dura Global case in which Judge Cox defined the standard by which a court may determine whether to construe claim terms in light of a patentee’s remarks in a reexamination proceeding. The patentee’s remarks in the reexamination of the patent in Beneficial v. Blockdot et al., 2:07-cv-263-TJW-CE, clearly failed that standard.
There, the patentee responded to a rejection in the reexamination of the patent-in-suit, stating that there was no disclosure in the cited reference of “‘unrequested’ advertising (e.g., advertising that just appears and is not in response to any immediately previous user input, e.g. a pop-up ad).” A week later, Judge Ward construed the claims. The accused infringer then requested reconsideration of that claim construction, and Judge Ward changed his construction of “unrequested” to mean “not in response to any immediate previous input by the user,” relying upon the patentee’s statements in reexamination.
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Examiner Misapplies Statutory Prohibition against Enlarging Claim Scope in Reexamination
| October 28, 2010
Qualcomm won an important victory yesterday when the PTO Board of Appeals reversed the reexamination examiner’s rejection of most of the claims of U.S. Patent No. 5,778,338 – see Ex parte Qualcomm. The ‘338 patent claims an apparatus and method for compressing speech for transmission. Qualcomm sued both Nokia and Broadcom for infringement of the ‘338 patent and later settled.
What interests us in the case, however, is the Board’s treatment of the examiner’s rejection of claims 9 and 10 for enlarging the scope of the claims, in violation of 35 U.S.C. § 305.
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