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
Examiner’s “Hypothetical” Does not Create a Written Description Problem
| September 17, 2010
An inter partes reexamination, pending since November 2004, came to a favorable conclusion for the patentee today, with the PTO Board reversing the examiner on a written description issue. Essentially the Board found in Light & Motion Industries, Inc. v. Sartek, LLC (95/000,060) that two claim limitations had written description support in a provisional application, thereby removing the examiner’s primary prior art reference.
The claimed invention was a portable high intensity lighting system for underwater use by divers. The claims included the limitation that a “ballast container [be] potted with a material to eliminate vacant spaces therein so that said potting material is in direct contact with the interior of said ballast container” (emphasis added). The examiner acknowledged the disclosure in the provisional application that the ballast container “has been filled with a material to eliminate vacant spaces within.” But he then imagined a container lined with an insulator and then filled with potting material, so that the potting material would not be in direct contact with the interior of the container.
The Board disagreed, dismissing the examiner’s insulator-lined container as a “hypothetical scenario.”
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Reissue Patent Invalid for Violating Recapture Rule
| September 9, 2010
The “Recapture Rule” generally arises where an applicant makes a narrowing amendment to overcome a rejection in the original prosecution, and later attempts to “recapture” the abandoned subject matter through a reissue application. In AIA Engineering Limited v. Magotteaux International S/A, decided last Friday, it was the applicant’s argument traversing a rejection in the original prosecution that triggered the Recapture Rule, invalidating the patent.
The original patent claimed a wear component of an apparatus used to grind surfaces. Claim 1 recited a “porous ceramic pad consisting of a homogeneous ceramic composite solid solution” alumina and zirconia (emphasis added). During the prosecution of the original patent, applicant repeatedly referred to the “solid solution” limitation to distinguish the claimed invention from the prior art, e.g., “the invention is based on the observation that the ceramic pad must be a homogeneous solid solution on Al2O3/ZrO2” (emphasis added). The examiner allowed the application on the basis of that distinction.
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Reexamination Admissible as Evidence to Negate Willfulness
| September 7, 2010
Judge Roslyn Silver ruled last Thursday in Integrated Technology v. Rudolph Technologies that the accused infringer Rudolph could introduce evidence at trial of a reexamination against one of the two patents in dispute.
Integrated sued Rudolph in 2006 for infringement of two patents related to systems for inspecting integrated circuit probe cards, including U.S. Patent No. 6,118,894. In July 2009, Rudolph filed a request for reexamination against the ‘894 patent (90/009,551). The PTO granted reexamination against all 22 claims of the ‘894 patent. Since then, however, the patentability of claims 4-22, several of which are independent claims, has been confirmed. Only claims 1-3 stand rejected.
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Judge Robinson Comments on Reexamination Pendency Periods
| September 7, 2010
Trial court decisions on motions to stay a patent case pending completion of reexamination have become common place and do not normally attract attention. Judge Sue Robinson’s denial of a motion to stay last Thursday in Belden Technologies Inc. v. Superior Essex Communications LP, however, included some noteworthy analysis of the length of reexamination proceedings.
Judge Robinson duly noted the statistic published by the PTO, that inter partes reexamination has an historical average pendency of 31.4 months. But this average is only part of the story; a judge must also consider the time required for an appeal.
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Preliminary Injunction Denied Because of Reexamination Grant
| September 2, 2010
A reexamination request is an obvious way for an accused infringer to attack the validity of a patent during litigation. But reexamination may also have collateral benefits for the accused infringer. For instance, a court’s analysis of a motion for a preliminary injunction may be affected by a reexamination, as was demonstrated this week in Fusilamp, LLC v. Littelfuse, Inc., Case No. 10-20528-CIV-Altonaga, in the Southern District of Florida.
There, the patentee Fusilamp moved in June for a preliminary injunction to stop Littelfuse from selling the products alleged to infringe the patent. Littelfuse opposed the motion, asserting that Fusilamp had failed to show “a substantial likelihood of success on the merits of the underlying claim.” Littelfuse relied, in part, on the fact that the PTO had granted a request for reexamination of the patent.
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Microchip Wins Second Reexamination Victory at Board
| September 2, 2010
Microchip Technology won today its second victory at the PTO Board of Appeals in less than a month.
Microchip’s U.S. Patent No. 6,483,183 claimed an integrated circuit package with an IC chip including a microcontroller having an n-bit data bus and up to n pins electrically coupled to the microcontroller. The examiner had determined that the claimed IC package was obvious over the prior art. Significantly, the examiner found that the “microcomputer” disclosed in the primary reference corresponded to the “microcontroller” recited in the pending claims.
The Board has now reversed the examiner, holding that one skilled in the art would construe “microcontroller” as having all the functions of a complete computer, essentially, a computer-on-a-chip that includes a central processing unit, a memory, and input/output interfaces.
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When Should a Stay be Lifted?
| September 1, 2010
The reexamination process concludes with the PTO issuing a “Notice of Intent to Issue a Reexamination Certificate” (a NIRC). About three months pass, and then the PTO issues the actual reexamination certificate. If the patent has been involved in a law suit that has been stayed pending completion of the reexamination, the patentee typically waits until receipt of the reexamination certificate (assuming that it has been successful in the reexamination), to apply to the court to lift the stay.
In her recent decision in JAB Distributors, LLC v. London Luxury, LLC, 2010 U.S. Dist. LEXIS 88806 (N.D. Ill. June 29, 2010), Judge Amy J. St. Eve concluded that the patentee need not wait for the certificate to issue; rather, the NIRC date may be the appropriate date to resume the litigation.
There, Judge St. Eve had stayed the case for the reexamination, citing the lack of prejudice to the patentee, likely simplification of the issues, and reduction of litigation burdens. The PTO later issued a NIRC, and the patentee petitioned the court to lift the stay. Judge St. Eve did so, even though the reexamination certificate had not yet issued.
She explained that the original justification for the stay no longer existed. “Because the PTO is unlikely to reconsider its reexamination decision and subsequently simplify the issues or reduce the burden of litigation, staying the case is no longer appropriate.” Judge St. Eve cited the wording of the NIRC that prosecution is “closed” and that a reexamination certificate “will be issued.” Although the PTO retains jurisdiction over the reexamination until the certificate issues, the PTO is unlikely to change its decision regarding the validity of the claims.
How not to Ask for a Stay?
| August 25, 2010
Last Friday, in 3M Innovative Properties v. Envisionware, a court in Minnesota denied the accused infringer’s motion to stay the case pending completion of two reexaminations.
In June 2009 3M Innovative sued Envisionware for infringement of three patents related to RFID electromagnetic systems that help libraries to oversee the location of their books. Envisionware filed its Answer and five months later, in April 2010, it requested reexamination of two of the three patents-in-suit. In August it asked the Court for a stay, noting that reexamination had been ordered for one patent and that all the claims of the other patent had been rejected.
The Court has now denied that motion.
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Update on Furuno Requests against Honeywell Marine Navigation Patents
| August 19, 2010
In June we reported that Furuno had filed reexamination requests against five Honeywell patents claiming marine display and navigation systems. Honeywell had previously sued Furuno in Minnesota for infringing those five patents. Judge Michael Davis has now stayed that case pending completion of the five reexaminations.
In granting the stay, Judge Davis recited the familiar three-part test for determining whether to grant a stay: whether there would be prejudice to the patentee, whether a stay would simplify the issues, and the stage of the litigation. The stay order is noteworthy, however, in that the PTO had granted reexamination for only one of the five Honeywell patents. To reject Honeywell’s argument that a stay with respect to all five patents would therefore be premature, Judge Davis relied heavily on the PTO statistics showing that reexamination is granted in the great majority of cases.[1] This reliance on PTO reexamination statistics contrasts markedly with the skepticism recently expressed by Judge Keith Ellison in Tesco v. Weatherford Int’l (Civ. No. 08-cv-2531).
The stay order is also interesting in that Judge Davis noted a passage from the PTO’s reexamination grant “that Furuno U.S.A.’s marine navigation software, MaxSea, which Honeywell has accused of infringement, ‘is directed to a different field of endeavor, namely a seas based charting system rather than the flight display system as claimed.’” (Emphasis added). The reexamination may therefore have an effect on the infringement issues when the case returns to the court after the stay is lifted.
[1] Since Judge Davis granted the stay, reexamination has been granted for three of the remaining Honeywell patents, and the request for the fifth is still pending.
Rambus Wins Limited Exclusion Order at ITC against NVIDIA, despite Pending Reexaminations
| August 16, 2010
Traditionally, District Court judges have issued permanent injunctions to stop infringement of valid patents, regardless of any pending reexamination of the patent in question. Only if the rejection of the patent claims in reexamination is “final,” would the courts refuse to enjoin the accused infringer. A few judges – notably Judge James Cohn of the Southern District of Florida and Judge Sue Robinson of Delaware – have recently shown a willingness to defer a decision on injunctive relief even where the rejection of the patent in reexamination is not final.
The Rambus/NVIDIA investigation raises the question of the extent to which the ITC is willing to order relief on the basis of patents that are in reexamination at the PTO. Unfortunately for NVIDIA, its argument to the ITC that it stay relief against NVIDIA was weak because its attack on the Rambus patents by reexamination has been “an incomplete success” (to borrow a phrase from President Carter).
That weakness may account, in part, for NVIDIA’s agreeing at the end of last week to a license to the Rambus patents, effectively concluding the dispute between the parties. Still, the ITC’s analysis in the Rambus/NVIDIA investigation remains of great interest to the IP community, as it suggests that the ITC will be extremely reluctant to withhold relief against infringing imports on the basis of an uncompleted reexamination.
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