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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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Recent Requests
PTO Statistics
Reexamination Requested of Apple “Double-Sided Touch-Sensitive Panel” Patent, Week of July 29, 2013
| August 5, 2013
An unknown party has requested ex parte reexamination of Apple’s U.S. Patent No. 7,920,129 that claims “double-sided touch-sensitive panel” (see ex parte Request No. (2)). Apple has sued HTC in Delaware for infringement of the ‘129 patent, as well as for three other patents. The request could have sought inter partes review, which is much more common than ex parte reexamination for such cell phone patents, but such a review request would have required disclosure of the filer’s identity. With an ex parte reexamination request, Apple is left to guess the filer’s name.
Ex parte reexamination was also requested for Apple’s U.S. Patent No. 7,663,607 (see ex parte Request No. (3)). Apple’s ‘607 patent was declared invalid over the prior art in an ITC investigation last year – such invalidity determinations by the ITC are not binding on the courts. As with the ‘129 patent, the identity of the filer is not shown in the Patent Office records.
Facebook, LinkedIn, and Twitter have requested inter partes review of a patent that is owned by Software Rights Archive, and that claims for a system for searching texts (see inter partes review Request No. (6)). Software Rights has sued those companies for infringement of the patent.
NetApp Requests Reexamination of PersonalWeb, Week of July 22, 2013
| July 29, 2013
On Friday, NetApp requested ex parte reexamination of PersonalWeb’s U.S. Patent No. 5,978,791 (see ex parte reexamination No. (9)). The ‘791 patent claims a data processing system in which “the identity of a data item is independent of its name, origin, location, address, or other information not derivable directly from the data, and depends only on the data itself.” PersonalWeb Technologies has asserted the ‘791 patent in 18 separate infringement actions, including cases against Facebook (Case No. 5:13-cv-01356 (N.D. Cal.)), Google (Case No. 5:13-cv-01317 (N.D. Cal.)), IBM (Case No. 6:12-cv-00661 (E.D. Tex.)), Apple (Case No. 6:12-cv-00660 (E.D. Tex.)), Microsoft (Case No. 6:12-cv-00663 (E.D. Tex.)), Yahoo! (Case No. 6:12-cv-00658 (E.D. Tex.)), and Amazon (Case No. 6:11-cv-00658 (E.D. Tex.)).
At the request of EMC and VMware, the Patent Office instituted an inter partes review of most of the claims of the ‘791 patent on May 17th. NetApp’s stated goal in Friday’s reexamination request is to challenge one of the ‘791 claims not under consideration in the review proceeding. Given the advanced stage of the review, it seems unlikely that the Patent Office would merge the review and reexamination. Earlier in the week, the Board denied a petition by NetApp for inter partes review of the ‘791 patent, finding the petition was filed more than one year after PersonalWeb had served a complaint for infringement of the ‘791 patent on NetApp.
Inter Partes Review Requested for P&G Teeth Whitening Patents, Week of July 15, 2013
| July 22, 2013
Last year Procter & Gamble sued three companies – Clio USA, Inc., Team Technologies, Inc., and Brushpoint Innovations, Inc. – for using its patented method and system for whitening teeth. The three accused infringers have now requested inter partes review of P&G’s patents (see inter partes review Request No. (1) & (3)).
Healthcare Hero Network owns a series of patents related to “a networked system for remotely monitoring individuals and for communicating information to the individuals through the use of script programs.” Eight of those patents are now in reexamination. Cardiocom has now requested inter partes review of three other related Healthcare Hero patents (see inter partes review Request Nos. (2), (4) & (12)). The companies are involved in an infringement action in the Eastern District of Texas.
What Does Default Look Like in IPR Cases?
| July 18, 2013
As expected, the APJs have applied their rules very strictly to ensure compliance with the statutorily imposed deadlines for inter partes review and post-grant review proceedings. How will the APJs handle cases involving parties who are unfamiliar with those rules, particularly foreign companies?
So far, the answer has been that the APJs will treat such parties carefully, giving them a fair opportunity to participate to the proceeding. For instance, in UKing Universe, Inc. v. Chang-Kang Chu, IPR2013-00212, the challenger filed its petition at the end of March, asserting that each of the claims of the patent are unpatentable over the prior art. The APJs sent a notice to the patent owner, requiring it to submit mandatory notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of the Petition. The patent owner did not reply.
Three times – on April 19, 2013, April 29, 2013, and May 9, 2013 – the APJs contacted the patent owner, reminding it that its filing was overdue and notifying it that a mandatory telephone conference would occur on May 14, 2013. Soon thereafter, a representative of the patent owner sent the APJs an email which read: “Thank you for this notice [concerning the May 14, 2013 telephone conference]. The Patent Owner would like to abandon the patent. Thus, he will not give any response to the petition.”
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