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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PTO Statistics
Oracle Case Against Google’s Android® Headed for a Stay?
| July 21, 2011
Reexamination offers a number of benefits to those accused of infringement. The most important of those benefits may very well be the prospect of a stay of the infringement action pending completion of the reexamination proceeding. Where a stay is granted, the reexamination becomes the primary focus of the case, with potentially enormous advantage to the accused infringer. But where a stay is denied, the benefits are often limited by the extent to which the trial judge allows the results of the reexamination to be used at trial.
The stay issue is now center stage in Oracle’s patent infringement action in the Northern District of California against Google and its Android®, involving seven Java platform patents and a series of related copyrights. Although a three week trial is scheduled to begin at the end of October, Judge William Alsup is concerned about the feasibility of a trial involving the large number of patent claims asserted by Oracle. The judge has therefore strongly encouraged Oracle to reduce its claims at issue, and indicated that he might stay the case pending completion of a series of reexaminations initiated by Google against the Oracle patents.
Yesterday, in response to an order from Judge Alsup, the parties filed a “Joint Summary” informing the Judge of the status of those reexaminations. For four of the patents, non-final rejections have issued against the claims asserted by Oracle. The PTO has confirmed the validity of the claims of U.S. Patent No. 6,061,520 (90/011,489) asserted by Oracle against Google. And reexamination has been granted for the two other Oracle patents, but the PTO has not yet issued a substantive Action, either confirming or rejecting those claims.
Judge Randa Denies Preliminary Injunction Motion & Stays Case Pending Reexamination
| July 12, 2011
In recent days, a number of writers in the blogosphere have remarked on the strength of reexamination as a defense for parties accused of patent infringement, some bemoaning that strength, others cheering it on. The influence of reexamination on an infringement case, however, largely depends upon the strength of the prior art asserted. This link between reexamination and the strength of prior art was much in evidence in Judge Rudolph Randa’s decision last week on competing motions to stay and for a preliminary injunction in Generac Power Systems v. Kohler, 2011 U.S. LEXIS 72817 (E.D. Wisc.)).
Generac sued Kohler last October for infringing U.S. Patent No. 7,230,345 related to a specific method of operating engine-driven electrical generators. Kohler defended by filing a request for ex parte reexamination in December and a more robust request for inter partes reexamination at the end of February. The PTO granted both requests for reexamination and might soon merge them. Kohler also moved to stay the case pending completion of the reexamination proceedings. In the meantime, Generac asked that Kohler be preliminarily enjoined from “making, using, selling [or] offering to sell generators that feature the method” of the ‘345 patent.
Judge Randa addressed the stay motion first, but his primary interest was clearly directed to the request for preliminary relief. The Judge first considered the likelihood that Generac would ultimately succeed on the merits. Since Kohler “neither contested nor conceded infringement,” the sole issue on the merits was Kohler’s challenge to the validity of the ‘345 patent. Kohler “must [therefore] put forth a ‘substantial question of validity’ to show that the claims at issue are vulnerable, [though] the showing of a substantial question of invalidity requires less proof than the clear and convincing standard to show actual invalidity” at trial (emphasis added).
Court Stays Case on Basis of Reexamination Grant
| June 15, 2011
Last Wednesday Judge Ruben Castillo of the Northern District of Illinois stayed the case Chicago Mercantile Exchange v. Technology Research Group pending completion of a reexamination. What makes the stay interesting is that Judge Castillo did not expressly identify the three-factor standard generally applied to stay motions – the stage of the case, the possible simplification of issues, undue prejudice to the patentee – and then balance those factors. Rather, he appears to have carefully considered the merits of the reexamination request and then assessed the probability of the patent claims being held invalid in the reexamination.
Chicago Mercantile filed a declaratory judgment action against Technology Research in June 2009 seeking a judgment of non-infringement and invalidity of U.S. Patent No. 5,963,923; and Technology Research counter-claimed for infringement of the ‘923 patent. A request for reexamination of the ‘923 patent was filed in February, and at the beginning of May, the PTO ordered reexamination. When Judge Castillo learned of the reexamination, he sua sponte asked the parties for briefing on whether a stay should issue pending completion of the reexamination.
Florida Court Stays Case Three Weeks before Trial
| June 3, 2011
The other day a judge told me, essentially, that he did not care for reexaminations and that he would never stay an infringement case pending completion of a reexamination proceeding. The judges of the Southern District of Florida take a different view. On Tuesday, Judge Marcia Cooke stayed the case Plasticos Vandux de Colombia v. Robanda Int’l, pending completion of a reexamination of one of the three patents-in-suit, despite the fact that trial in the case was scheduled to start June 20th.
Judge Cooke’s decision is notable in two respects. The first was her analysis of the delay of the litigation caused by a stay, quoting the 2008 Roblor Marketing decision from the Southern District of Florida: “[r]ather than being a reason for denying a stay, the resulting delay in proceedings serves the interests of correctness and finality, by assuring that any decision by the PTO can be taken into account by the court prior to further proceedings even though it necessarily results in deferral of the final outcome of this case” (emphasis added).
Second, Judge Cooke granted the stay based on a reexamination rejection of the claims of one patent-in-suit; there are two other patents-in-suit, as well as false marking and unfair competition counts. The Judge explained that the claims of the other two patents were quite similar to the rejected claims, implying that the claims of all three patents were likely to rise or fall together. Regarding the other counts, she stated that a “court may stay a case in its entirety pending reexamination despite the existence of unrelated claims in the interest of judicial economy and efficient case management,” citing an opinion from earlier this year by Judge William Alsup of the Northern District of California.
Google Off to Good Start in Reexamination of Oracle Patents
| May 24, 2011
Oracle’s patent infringement action against Google and its Android®, involving seven Java platform patents and a series of related copyrights, is scheduled for a three-week trial starting October 31, 2011. But as Florian Mueller reported last week, Judge William Alsup is quite concerned about the feasibility of a jury trial, given the large number of patent claims that Oracle is currently asserting. In a written comment on the parties’ joint case management memo, the Judge cautioned that the “larger number of patents and patent claims asserted … the more practical it will then seem to simply stay this case and see which claims survive PT re-examination,” alluding to the reexamination proceedings currently pending at the PTO for each of Oracle’s seven patents.
Clearly, Judge Alsup is encouraging Oracle to trim the number of patent claims for trial, without actually ordering it to do so. Faced with substantial uncertainty on how its patents will fare in reexamination between now and the October trial, Oracle, just as clearly, does not want to make any premature commitment to specific patent claims. For its part, Google has not expressed its preference between a stay and a trial, stating that it “defers to the Court’s discretion to grant a stay pending reexamination.”
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Will Reexamination Rescue Lawson from an Injunction?
| May 23, 2011
Patent infringement litigation and reexamination proceedings are rarely synchronized, but the resolution of two reexaminations might arrive just in time to save Lawson Software from being enjoined in the ePlus v. Lawson in the Eastern District of Virginia. The patentee, ePlus, sued Lawson in 2009 for infringement of U.S. Patent Nos. 6,023,683 and 6,505,172 relating to systems for searching catalogs for product information to generate requisition orders, specifically electronic sourcing systems commonly used by healthcare facilities and government agencies. At the conclusion of a trial in January, the jury found that the ‘683 and ‘172 patents were valid and infringed. Judge Robert Payne is now considering whether to enjoin Lawson from future acts of infringement.
Running in parallel with the infringement case are reexamination proceedings at the PTO, one requested in 2006 by SAP[1] for the ‘683 patent (90/008,104) and two others, by Lawson in 2009, for the ‘683 patent (90/011,066) and the ‘172 patent (95/000,487). Judge Payne has so far rejected Lawson’s requests that the litigation be stayed pending completion of the reexaminations or that final rejections from the reexaminations be considered at the trial.
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AppleとNikeによる訴訟手続き停止の申し立て（Motion To Stay）が判事により却下された
| May 20, 2011
侵害被疑者は再審査が係属するケースで訴訟手続きを停止するには、すばやく行動しなければならない この金曜日、Affinity Labs v. Nike and Apple, 2011 U.S. Dist. LEXIS 51665の事件で、カルフォルニア東地区裁判所のClaudia Wilken判事は、被告が再審査請求およびこれに基づく訴訟手続き停止の申し立てを遅らせたことを指摘し、被告の当該申し立てを却下した。
2010年2月、Affinityは、運動能力をモニターするシステム（例えば、万歩計）に関する2つの特許権侵害に基づき、NikeとAppleをテキサス東地区裁判所に訴えた。同年11月、同事件は被告の申し立てによりカルフォルニア地区裁判所に移管された。そして、その11日後、Appleは、問題の特許に対して特許庁に再審査請求を行った。2011年1月18日に再審査請求は特許庁に受理され、1月20日に拒絶理由が出された。同年3月22日、AppleとNikeは、地裁に手続の停止の申し立てを行った。
Wilken判事は、3つのテストを適用して判断した。すなわち、（１）訴訟の進み具合（Stage）、（２）再審査は訴訟の争点を単純化できるか、さらに、（３）訴訟停止は被申立て人側に不利益か（つまり申立て人の戦術的優位のためか）、これらを均一に適用して判断する。Wilken判事は、次のように判断した。まず第1ファクターを見ると、訴訟の段階は早期であり、これは停止する方に分がある。第2ファクターの単純化に関して、AppleとNikeは再審査請求人であり、再審査の拘束されることに法律上同意しているといえる。同判事は、再審査はすべての争点を解決する可能性があるとしながらも、実際に争点を単純化するかどうかの不確定さ（uncertainty）の観点から、第2ファクターはどちらともいえない（neutral）と述べた。
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Apple, Nike Motion to Stay Denied by Judge Wilken
| May 17, 2011
In an increasing number of District Courts, an accused infringer must act quickly if it wants to stay its case pending completion of a reexamination proceeding. For instance, on Friday, Judge Claudia Wilken of the Northern District of California denied defendants’ motion to stay in Affinity Labs v. Nike and Apple, 2011 U.S. Dist. LEXIS 51665, citing defendants’ delays in requesting reexamination and in filing their stay motion.
Affinity sued Nike and Apple in the Eastern District of Texas in February 2010, accusing the companies of infringing two patents related to systems for monitoring athletic performance (e.g., pedometers). Defendants’ motion to transfer to California was granted November 4, and 11 days later, Apple requested inter partes reexamination of the patents-in-suit. Reexamination of one patent was granted on January 18, 2011, and a rejection issued the next day; for the second patent, both a grant of reexamination and a rejection issued on January 20, 2011. On March 22, Apple and Nike moved to stay the District Court case pending completion of the case.
Updates on Stays for EchoStar v. TiVo, Sorenson ‘184 Patent, Alps v. Willow Wood
| March 30, 2011
1. EchoStar v. TiVo Case Resumes despite New Reexamination Requests
Last November (here) it appeared that EchoStar’s U.S. Patent Nos. 5,774,186 and 6,208,804 for direct access TV systems were about to emerge successfully from reexamination and that the trial judge would lift the stay of EchoStar’s case against TiVo for infringement of those patents. TiVo moved quickly, however, to try to stop the reopening of the litigation by filing new requests for reexamination of the ‘186 and ‘804 patents.
Magistrate Judge Caroline M. Craven has now lifted the stay of EchoStar’s case. She noted that the PTO has denied TiVo’s new request for reexamination of the ‘804 patent; and although a new reexamination was granted for one out of the five SNQs proposed by TiVo against the ‘186 patent, EchoStar has now provided TiVo with a covenant no to sue, thereby removing any reexamination of that patent as an obstacle to resumption of the litigation. Magistrate Judge Craven explained that “the current stay has been in place for four-and-a-half years,” so that to “continue the stay would only further delay this case without the likelihood of further simplification of the issues.” She also scheduled a June 2011 claim construction hearing and a June 2012 trial for the remaining ‘804 patent.
TRIAL COURTS CONTINUE TO LOOK DIFFERENTLY AT REEXAMINATION STAY MOTIONS
| March 24, 2011
On a number of occasions we have described the difficulty faced by District Courts in trying to balance the conflicting interests of potential prejudice to the non-moving party and possible simplification of issues (here). In each case trial judges try to do what is just in view of their own judicial experience.
And yet, the courts sometimes seem to look at the same facts and arrive at different conclusions. This phenomenon was on display Monday when two different judges, ruling on stay motions, considered the factor of whether a stay would simplify the issues, in view of the PTO’s statistics on the survival rate of patent claims in inter partes reexamination. Two judges looking at precisely the same statistics arrived at opposite conclusions.
In PDS Electronics v. Hi-Z Antennas, 2011 U.S. Dist. LEXIS 29211, Judge John R. Adams of the Northern District of Ohio took
judicial notice of the statistic from the PTO’s Quarterly Report that only 11% of inter partes reexamination result in confirmation of all of the claims presented. Therefore, it is highly likely that the issues in the present case will be affected by the outcome of the ‘588 reexamination. A stay pending these proceedings would allow the parties to preserve their resources by simplifying the issues in question. (Emphasis added).
