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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)
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Noteworthy Links
- "The Interplay between Reexaminations, Preliminary Injunctions and Stays of Litigation" - by Dennis Crouch at PATENTLYO.COM
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When can the Patentee use the Reexamination Prosecution History for Arguing Claim Construction?
| October 28, 2010
Accused infringers in District Court and ITC litigation often rely upon remarks made in the prosecution history of reexamination proceedings to argue for favorable construction of the claims in dispute. But can a patentee rely upon its own remarks from the reexamination history? The answer – according to Judge Sean F. Cox of the Eastern District of Michigan – depends on whether the patentee’s remarks in the reexamination were made for the purpose of affecting the litigation.
This Tuesday in Dura Global v. Magna Donnelly, Judge Cox issued a Markman ruling construing patent claims that were the subject of pending reexamination proceedings. Dura had filed a complaint against Magna in 2007 accusing it of infringing two patents for power slidable rear windows in cars. Magna later requested reexamination of the two patents.
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NVIDIA Attack on Rambus Patent Among Reexamination Requests Filed the Week of October 18th
| October 26, 2010
In their litigation/reexamination wars, Rambus and NVIDIA often look like two boxers trying to slug each other into submission. That was true last Wednesday. The same day that the PTO issued its Notice of Intent to issue a reexamination certificate, confirming the claims of Rambus’ U.S. Patent No. 6,715,020, NVIDIA requested another reexamination (Inter Partes Request No. 2 below). The ‘020 patent is just one of 17 patents that Rambus has accused NVIDIA of infringing in their case pending in the Central District of California. Five of those Rambus patents in litigation were the subject of a recently settled ITC investigation. The ‘020 patent is related to Rambus’ U.S. Patent No. 7,209,997, which is also part of the California litigation and the subject of two pending reexaminations. NVIDIA is now appealing the reexamination examiner’s decision to confirm the patentability of the ‘997 claims (95/000,471).
The following inter partes requests were filed:
(1) 95/001,471 (electronically filed) – U.S. Patent No. 6,426,600 owned by Lautzenhiser Technologies, LLC and entitled PROPORTIONAL ACTUATOR CONTROL OF APPARATUS. Filed October 19, 2010 by PG Drives Technology, Inc. The ‘600 patent is currently the subject of a litigation styled Lautzenhiser Technologies, LLC v. Sunrise Medical HHG, Inc. et al. (S.D. Ind., Case No. 4:07-cv-00084-TWP-WGH, filed June 18, 2007).
(2) 95/001,472 (electronically filed) – U.S. Patent No. 6,715,020 owned by Rambus Inc. and entitled SYNCHRONOUS INTEGRATED CIRCUIT DEVICE. Filed October 20, 2010 by NVIDIA Corporation. The ‘020 patent is currently the subject of a litigation styled Rambus Inc. v. NVIDIA Corporation (N.D. Cal., Case No. 3:08-cv-03343-SI, filed July 10, 2008).
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Stay Pending Reexamination Denied, where Request was Ex Parte
| October 26, 2010
A recent trend in trial judges’ consideration of motions to stay litigation pending completion of reexamination at the PTO, has been for the judge to be suspicious of ex parte requests, as opposed to inter partes requests. Judge Stadtmueller of the Eastern District of Wisconsin expressed such suspicions last week, when he denied a stay motion filed by the accused infringer in Adaptor v. Sealing Systems, 09-cv-1070.
Adaptor filed a complaint in November 2009 seeking a declaratory judgment that Sealing Systems’ U.S. Patent No. 5,876,533 was invalid and not infringed. Sealing Systems counter-claimed, asserting infringement by Adaptor. In April 2010 Adaptor filed a request for ex parte reexamination of the ‘533 patent, and in May the PTO granted the request. Adaptor then moved to stay its own declaratory judgment action and Sealing Systems’ counter-claim, pending completion of the reexamination.
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Requester Appeals PTO’s Refusal to Adopt Rejections, and Wins (Corrected Version)
| October 22, 2010
Much is made of the fact that the PTO grants the overwhelming majority of requests for reexamination and then adopts at least some of the rejections proposed in the request. So what do you do if the PTO does not adopt your rejections? In May 2009 NuVasive requested inter partes reexamination of Warsaw Orthopedic’s U.S. Patent No. 6,969,390 for a medical appliance, proposing ten distinct prior art rejections. When the examiner granted the request, but refused to adopt the proposed rejections, NuVasive appealed. Yesterday the Board reversed the refusal and remanded the case to the examiner, with instructions to adopt NuVasive’s first proposed rejection of claim 1 and to reconsider four other proposed rejections of certain dependent claims.
The ‘390 patent claims a “plating system” for application to the human spine, including a cervical plate and a bone screw. The primary reference relied upon by NuVasive discloses each of the claim limitations, except for certain structural features of the screw. A secondary reference, however, discloses a plating system with a screw having those structural features. In denying the request for reexamination, the examiner concluded that there would be no reason for one skilled in the art to replace the screw of the primary reference with the screw of the secondary reference.
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Reexamination Request Against Taser Patent Among Those Filed Week of October 11th
| October 19, 2010
The clear stand-out among the reexamination requests filed last week was one against U.S. Patent No. 6,999,295, the patent for the famous Taser® stun gun, owned by Taser International. The preamble of one of the ‘295 claims euphemistically recites a “dual operating mode electronic disabling device for immobilizing a target.” Taser successfully sued Stinger Systems in Arizona for infringement of the ‘295 patent, culminating in an infringement judgment in August. Taser owns another patent, U.S. Patent No. 7,102,870, claim 3 of which has been held to be invalid as obvious over the prior art.
A request was also filed against Apple’s U.S. Patent No. 5,946,647 (Ex parte No. 10). As reported by our friend Gene Quinn in IPWatchdog, Apple has sued HTC and Exeda for infringement of the ‘647 patent, among many other patents.
The following inter partes requests were filed:
(1) 95/001,464 (electronically filed) – U.S. Patent No. 7,578,439 owned by e2Interactive, Inc. and entitled SYSTEM AND METHOD FOR AUTHORIZING STORED VALUE CARD TRANSACTIONS. Filed October 11, 2010 by Blackhawk Network, Inc. The ‘439 patent is currently the subject of a litigation styled e2Interactive, Inc. et al. v. Blackhawk Network, Inc. (W.D. Wis., Case No. 3:09-cv-00629-slc, filed Oct. 14, 2009).
(2) 95/001,465 (electronically filed) – U.S. Patent No. 7,317,173 owned by Alto-Shaam, Inc. and entitled OVEN INCLUDING SMOKING ASSEMBLY IN COMBINATION WITH ONE OR MORE ADDITIONAL FOOD PREPARATION ASSEMBLIES. Filed October 13, 2010 by Cleveland Range LLC. The ‘173 patent (along with the ‘668 patent – see below) is currently the subject of a litigation styled Alto-Shaam, Inc. v. The Manitowoc Company et al. (N.D. Tex., Case No. 7:09-cv-00018-O, filed Jan. 27, 2009).
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Judge Acknowledges Shift of “Validity Issue” to PTO in Staying Court Case
| October 19, 2010
Judge Larry Alan Burns of the Southern District of California has stayed the case DJO v. VitalWear, pending completion by the PTO of reexaminations of the two patents-in-suit. He applied the traditional three-part test for considering such stays – the stage of the litigation, possible prejudice to the patentee, and potential for simplification of the issues. It was Judge Burns’ comments on the issue of simplification, however, that were noteworthy.
First, he found that no one “can predict which claims, if any, will be cancelled, which will be amended, and which will emerge unscathed.” Accordingly, any litigation of the patents now would “likely be duplicative” of the reexamination proceedings.
More significantly, Judge Burns held that the patentee’s assertions (1) that the prior art cited in the reexamination proceedings is cumulative over the art cited in the original prosecution and (2) that the accused products would infringe any narrowed claims, “are precisely the types of disputes that the PTO is better equipped to resolve” than a trial court (emphasis added).
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Reexamination Request Against Honeywell’s HFC Patent Among Those Filed Week of October 4th
| October 13, 2010
Honeywell has obtained a number of patents in recent years for hydrofluorocarbon (HFC) patents. HFCs are environmentally friendly alternatives to the hydrochlorofluorocarbons for use in aerosols and refrigerants. Inter partes Request No. 2 below challenges Honeywell’s patent.
A request was also filed against Medicis’ patent (Ex parte Request No. 9) for foaming pad containing benzoyl peroxide, used to treat acne. The ‘355 patent is the subject of a contentious case in Arizona, filed earlier this year.
The following inter partes requests were filed:
(1) 95/001,463 (electronically filed) – U.S. Patent No. 7,023,969 owned by InfoNXX, Inc. and entitled COMMUNICATION ASSISTANCE SYSTEM AND METHOD. Filed October 7, 2010.
(2) 95/000,574 (paper filed) – U.S. Patent No. 7,524,805 owned by Honeywell International Inc. and entitled AZEOTROPE-LIKE COMPOSITIONS OF TETRAFLUOROPROPENE & HYDROFLUOROCARBONS. Filed October 5, 2010.
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TiVo’s Famous Time Warp Patent: from Setback to Comeback
| October 7, 2010
Last June we reported that TiVo had sustained a setback when the PTO made final its rejection of claims 31 and 61 of U.S. Patent No. 6,233,389. Claims 31 and 61 are the key patent claims for TiVo’s digital video software for simultaneously storing and playing multimedia data, e.g., for time-shifting television signals. But yesterday, the PTO indicated that it had mailed a Notice of Intent to Issue a Reexamination Certificate. Although not yet posted, the Notice is expected to state that the patentability of claims 31 and 61, without amendment, is confirmed.
TiVo’s present success is the result of an interview with the examiners, followed by two very powerful declarations.
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Samsung Attack on Antenna Patents among Reexamination Requests Filed Week of September 27th
| October 6, 2010
Samsung filed reexamination requests (Inter partes Nos. 4, 10 and 11) last week against three Fractus patents for antennas. Fractus had sued Samsung and quite a number of other wireless companies, including LG, Research in Motion, Kyocera, HTC, Sharp and Sanyo, for infringement of those patents.
Also of interest is a request (Inter partes No. 1) filed by CEJN AB against Westendorf Mfg.’s U.S. Patent No. 7,717,471 for a hydraulic line device. The two companies are already in a reexamination of Westendorf’s U.S. Patent No. 7,021,668 – the examiner’s rejection of the claims of the ‘668 is now before the PTO Board of Appeals.
Finally, Encore filed a request (Inter partes No. 12) against a Southwire patent for electrical cables. Southwire is noted among ITC practitioners for having filed in the late 1970’s the first major Section 337 complaint.
The following inter partes requests were filed:
(1) 95/001,446 (electronically filed) – U.S. Patent No. 7,717,471 owned by Westendorf Manufacturing Co., Inc. and entitled HYDRAULIC LINE ATTACHMENT DEVICE AND METHOD. Filed September 17, 2010 by CEJN, AB.
(2) 95/001,453 (electronically filed) – U.S. Patent No. 7,601,662 owned by BASF Catalysts LLC and entitled COPPER CHA ZEOLITE CATALYSTS. Filed September 28, 2010.
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Surviving Reexamination May Help Patentee Prove Willful Infringement
| October 6, 2010
The CAFC’s 2007 decision In re Seagate contains a passage suggesting that a patentee must successfully move for a preliminary injunction in order to show that the defendant’s infringement, after the filing date of the complaint, was willful. In dicta, the Court stated that a “patentee who does not attempt to stop an accused infringer’s activities in this manner [by seeking a preliminary injunction] should not be allowed to accrue enhanced damages based solely on the infringer’s post-filing conduct”).
Since Seagate numerous trial courts have considered this question of whether the patentee must seek preliminary relief. The consensus appears to be that there is no per se rule – whether post-complaint acts of infringement were willful depends on the facts of the individual case. Of special interest to us is the holding of the trial court in St. Clair Intellectual Prop. Consultants, Inc. v. Palm, Inc., specifically that when a patent has emerged from reexamination without narrowing amendment of the claims, the patentee had thereby established sufficient likelihood that the defendant infringed a valid patent, so that the patentee could assert willful infringement without first seeking a preliminary injunction.
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