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
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Apple Wins Stay of Infringement Action in Favor of PTO’s Post-Grant Review of Covered Business Method Patent
| June 7, 2013
Judge Donnetta Ambrose of the Western District of Pennsylvania has stayed the infringement action SightSound Technologies v. Apple, 2013 U.S. Dist. LEXIS 79319, pending resolution of the PTO’s post-grant review of the patent in issue. Judge Donnetta began her analysis by citing the AIA standard for considering a stay request:
1) whether a stay, or the denial thereof, will simplify the issues in question and streamline the trial;
2) whether discovery is complete and whether a trial date has been set;
3) whether a stay, or the denial thereof, would unduly prejudice the nonmoving party or present a clear tactical advantage for the moving party; and
4) whether a stay, or the denial thereof, will reduce the burden of litigation on the parties and on the court.
Will AIA Post-Issuance Cases Increase ITC’s Popularity?
| June 6, 2013
In recent years, District Court judges have tended to favor stays of infringement actions pending completion of the PTO reexamination proceedings of the patents-in-suit. Anecdotally, at least, that tendency to stay has increased for the new AIA inter partes review and covered business method post-grant proceedings.
By contrast, the U.S. International Trade Commission has resolutely refused to suspend its investigations to allow reexaminations at the Patent Office to play through. The Commission’s attitude is based largely on that fact that it, unlike the District Courts, has no authority to award money damages to patentees at the end of its investigations – only prospective relief (by an exclusion order and/or a cease and desist order) is available at the ITC.
Reexamination Requests Filed Against Two Apple iPhone Design Patents
| June 4, 2013
Ex parte reexamintion requests were filed Friday against Apple’s D618,677 and D618,678.
The ‘677 patent was one of the Apple patents in its successful case last year against Samsung in the Northern District of California. And ALJ Pender at the U.S. International Trade Commission has determined that Samsugn infringes the ‘678 patent, a determination now before the Commission for review.
It is not yet clear from the PTO files who filed the requests, and in fact, ex parte reexamination might have been chosen to avoid disclosure of the filer’s identity. Inter partes review is normally the weapon of choice for companies like Samsung.
Drawings from the two patents are shown below.
The ‘677 Patent
The ‘678 Patent
Guidance from the Board on Claim Amendments in Inter Partes Review
| June 4, 2013
In the earlier days of the new AIA post-issuance proceedings, the Patent Trial & Appeal has written a series of decisions, intended to explain to practitioners of the procedures to be followed in those proceedings.
Yesterday, in Nichia v. Emcore, IPR2012-00005 (Paper 27), the Board summarized what is required of a patent owner hoping to amend its claims. The Petitioner Nichia had initiated a conference call with the Board and the Patent Owner Emcore to clarify whether the latter had complied with its duty to “confer with the Board” before filing its motion to amend its claims.
The Board determined that Emcore had complied with that duty, noting (1) that Emcore had filed notice indicating that it intended to file a motion to amend, and (2) that the Board had issued an order from an earlier conference call in which the patent owner was cautioned that it “must explain how the proposed substitute claims obviates the ground of unpatentability authorized in this trial and clearly identify where in the written description support can be found.” In the present order, the Board also indicated that Emcore must avoid submitting “an unreasonable number of substitute claims … .”
