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"The Interplay between Reexaminations, Preliminary Injunctions and Stays of Litigation" - by Dennis Crouch at PATENTLYO.COM

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Reexamination Filing Data – December 31, 2012

Inter Partes Review Sought for Honeywell Refrigerant Patent, Week of September 9, 2013

| September 16, 2013

Mexichem Amanco Holding requested inter partes review of Honeywell’s U.S. Patent No. 8,444,874 (see inter partes review Request No. (1)). The ‘874 patent claims a specific tetrafluoropropene used in heat transfer systems such as refrigerators. Such fluorocarbons are considered to be more environmentally friendly than traditional CFCs and have been the subject of intense litigation in recent years, though the ‘874 patent does not appear to be the subject of any infringement actions.

GSI Commerce Solutions requested post-grant review of a Clear With Computers patent (see CBM Request (2)). CWC has sued 17 companies for infringement of the patent.

And Fritsch of Germany filed for ex parte reexamination of a General Mills dough cutter patent (see ex parte Request No. (1)). The two companies are in litigation over the patent in Minnesota.

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Category: Recent Requests

Samsung Requests Inter Partes Review of Five Multimedia Display Patents, Week of September 2, 2013

| September 9, 2013

This past Thursday, Samsung requested inter partes review of five patents, owned by Virginia Innovation Sciences, that claim methods and computer readable media for converting video signals on a mobile terminal so that they may be reproduced on other display terminals (see inter partes review Request Nos. (8) through (12). Virginia Innovation has sued Samsung in the Eastern District of Virginia for infringement of the patents. Last month, Samsung filed a motion for summary judgment that the Virginia Innovation patents were invalid over the prior art (“VIS accused Samsung’s products of infringing the asserted claims based on their supposed use of well-known industry standard specification, notwithstanding that these same industry standard specifications were prior art”; emphasis in original). The District Court is likely to move more quickly than the Patent Office, in this race of filings.

Microsoft requested inter partes review of two information storage and retrieval patents (see inter partes review Request Nos. (4) & (5)). The owner of the patents, Enfish, has sued Microsoft in the Central District of California for infringement.

The ex parte reexamination request filed Tuesday by Brookwood against a silicone coated web patent owned Nextec Applications (see ex parte Request No. (2)) is interesting because there is parallel infringement action pending against the United States in the Court of Federal Claims. How might the Court consider a stay request?

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Category: Recent Requests

What May a Patentee Argue in its Preliminary Response?

| September 6, 2013

A patent owner’s first opportunity to challenge a request for inter partes review is by filing a “preliminary response.” The relevant portion of the AIA states:

[i]f an inter partes review petition is filed under section 311, the patent owner shall have the right to file a preliminary response to the petition, within a time period set by the Director that sets forth reasons why no inter partes review should be instituted based upon the failure of the petition to meet any requirement of this chapter.

(35 U.S.C. § 313: emphasis added). Are there any limits on what the patent owner may include? Is there anything that the patent owner must include?

Those questions were raised Tuesday in Athena Automation v. Husky Injection, IPR2013-00290. Petitioner asked for authorization to strike patentee’s preliminary response, arguing that it did not comply with 35 U.S.C. § 313 because it was directed solely to the doctrine of assignor estoppel. According to the petitioner, the patent owner’s preliminary response may include only arguments that the petition fails to meet one or more of the requirements recited in the inter partes review provisions in the AIA. Arguments unrelated to those provisions – such as assignor estoppel –are not permitted, the patentee contended.

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