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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- FDA Law Blog
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- PLI Patent Law Practice Center
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Recent Requests
PTO Statistics
Inter Partes Review Sought for ZOLL’s Patient Monitoring Patent
| June 3, 2013
Late last year ZOLL Medical sued Respironics, the apnea treatment device-maker, for infringement of U.S. Patent No. 6,681,003 that claims a patient data monitoring system. Respironics has now replied by requesting inter partes review of the ‘003 patent (see inter partes review Request No. (5).
Oracle has filed a second inter partes review request against Clouding IP’s U.S. Patent No. 6,631,449 (see inter partes review Request No. (4). The two companies are locked in a sprawling patent dispute.
The following inter partes review requests were filed:
(1) IPR2013-00312 (electronically filed) – U.S. Patent No. 5,818,836 entitled METHOD AND APPARATUS FOR ANONYMOUS VOICE COMMUNICATION USING AN ONLINE DATA SERVICE and owned by Click-to-Call Technologies LP. Filed May 28, 2013 by Oracle. Click-to-Call Technologies asserted the ‘836 patent against a number of defendants, including Oracle, Carnival Cruise Lines, and BMO Harris Bank N.A., in a patent infringement litigation styled Click to Call Technologies LP v. Oracle Corporation, et al. (Case No. 1:12-cv-00468-SS (W.D. Tex.)). The ‘836 patent is also the subject matter of litigations styled Click to Call Technologies LP v. eHarmony, Inc. (Case No. 1:12-cv-00469-SS (W.D. Tex.)); Click to Call Technologies LP v. AT&T, Inc., et al. (Case No. 1:12-cv-00465-SS (W. D. Tex.)).
“$1,000 Per Employee” Scanning Patents Hit with Inter Partes Review Requests, Week of May 20, 2013
| May 28, 2013
The Vermont Attorney General made quite a splash last week when it filed a “Consumer Protection Complaint” against MPHJ Technology Investments, a patent assertion entity, accusing it of “unfair and deceptive acts” – specifically addressing misleading patent litigation warning letters to numerous small businesses in Vermont. The Patent Office will also play a role in this controversy, in view of an inter partes review request filed by Ricoh and Xerox against one of the MPHJ patents (see inter partes review Request No. (5)) and an inter partes review request filed by HP against a second MPHJ patent (see inter partes review Request No. (11)) Requests against the other two MPHJ patents in question are likely to be in the works.
According to the Attorney General’s Complaint, MPHJ sent the letters “through forty wholly-owned shell subsidiary companies,” each located at the same UPS store in Newark Delaware. The letters state that “[w]e have identified your company as one that appears to be using the patented technology” of four specific patents and one pending patent application. The letters summarize the technology as permitting “the scanning of a document directly to [an] employee email address as a pdf document.” Then comes the threat” “[a]s your organization almost certainly uses in its day-to-day operations digital copier/scanner/multifunction equipment which is interfaced to a separate central office computer (an office network), so that digital images may be scanned and transmitted to one or more destinations such as email accounts and other applications, you should enter into a license agreement with us at this time.” Finally, the punch-line: settlement without court action will require “a payment of $1,000 per employee.” (emphasis added; the per employee fees requested ranged from $900 to $1,200). This initial letter was typically followed by two, more threatening letters from the shell company’s legal counsel.
Norman IP Privacy Patent Challenged, Week of May 13, 2013
| May 20, 2013
Norman IP Holdings has filed many lawsuits alleging infringement of U.S. Patent No. 5,592,555, most recently in a case filed in Texas last Monday against ADTRAN, Inc. On Wednesday Creston Electronics requested inter partes review of the ‘555 patent (see inter partes review Request No. (1)) The patent, which claims methods for “privately communicating signals over a wireless communications network,” is already the subject of a reexamination (90/012,783) filed by Volkswagen.
The following inter partes review requests were filed:
(1) IPR2013-00278 (electronically filed) – U.S. Patent No. 5,592,555 entitled WIRELESS COMMUNICATIONS PRIVACY METHOD AND SYSTEM and owned by Norman IP Holdings, LLC. Filed May 15, 2013 by Creston Electronics, Inc. The ‘555 patent is currently the subject matter of a plethora of litigations initiated by Norman IP Holdings and Saxon Innovations LLC, including Norman IP Holdings, LLC v. Creston Electronics, Inc. (Case no. 6:20cv-00394 (E.D. Tex.)); Norman IP Holdings, LLC v. BMW North America, LLC (Case No. 6:12-cv-00510 (E.D. Tex.)); Norman IP Holdings, LLC v. Lexmark International, Inc. (Case No. 6:11-cv-00495 (E.D. Tex.)); and Saxon Innovations LLC v. Gateway Companies, Inc. (Case No. 6:08-cv-00464 (E.D. Tex.); to name a few.
(2) IPR2013-00285 (electronically filed) – U.S. Patent No. 8,019,479 entitled CONTROL ALGORITHM OF VARIABLE SPEED PUMPING SYSTEM and owned by Pentair Water Pool and Spa, Inc. Filed May 17, 2013 by Hayward Industries, Inc. The ‘479 patent is currently the subject matter of a litigation styled Pentair Water Pool and Spa, Inc. and Danfoss Drives A/S v. Hayward Industries, Inc. and Hayward Pool Products, Inc. (Case No. 5:11-cv-459 (E.D.N.C.)).
Ariosa Diagnostics Attacks Verinata Fetal Testing Patent, Week of May 6, 2013
| May 13, 2013
Ariosa Diagnostics filed two requests for inter partes review of U.S. Patent Nos. 8,318,430 owned by Verinata Health, one challenging claims 1-18 and the second, claims 19-30 (see inter partes review Request Nos. (11) & (12)). The ‘430 patent claims methods for detecting fetal abnormalities by testing a maternal blood sample for the number of DNA fragments to determine whether there is an abnormal level of DNA associated with the chromosome suspected of being “aneuploid.” Verinata has sued Ariosa for infringement of the ‘430 patent.
Oracle “completed,” in essence, earlier inter partes requests against two Clouding IP patents, this time attacking the claims that had not been attacked in the earlier petitions (see inter partes review Request Nos. (6) & (8)).
And Sprint Communications requested ex parte reexamination of three Comcast IP Holdings patents (see ex parte Request Nos. (3), (6) & (7)). The two companies are involved in an infringement action in Delaware regarding the patents.
