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
Judge Grewal Compromises in Prosecution Bar Cases
| May 9, 2013
Disputes over the role of infringement litigation counsel in parallel reexamination/review proceedings at the Patent Office are becoming commonplace.
The patent owner typically prefers that its lawyers who are handling the litigation also work on the prosecution before the PTO – they hope to minimize attorney fees and to avoid conflicting arguments in the two forums. The accused infringer, on the other hand, worries that the patent owner’s litigation counsel might improperly use proprietary information obtained through the protective order to gain an unfair advantage in reexamination or review. The accused infringer therefore asks that the protective order prohibit the patent owner’s litigation counsel from participating in any way in PTO proceeding.
Judge Paul Grewal of the Northern District of California was called upon to resolve this dispute in two cases this week – Grobler v. Apple, Inc. 2013 U.S. Dist. LEXIS 65048 & John v. Lattice Semiconductor Corp., 2013 U.S. Dist. LEXIS 65121 – and managed a compromise between the respective positions. In two nearly identical decisions, Judge Grewal will allow the limited participation of the patent owner’s litigation counsel in the co-pending reexamination, but prohibit litigation counsel from participating in the amendment of original claims or the addition of new claims.
Board Takes “Hard Line” with Patent Owners in IPR Institution Decisions
| May 6, 2013
We have previously commented that the Board has been strict with petitioners in its decisions on whether to institute inter partes review. Inter partes review is denied where the petition fails to abide by all the formal requirements prescribed by the PTO Rules, or where it fails to clearly explain and link the claim limitations to specific prior art disclosures. Proposed grounds for review are rejected, as well, where they appear to overlap other proposed grounds.
We also see that the Board is equally strict with patent owners. The Board’s decision last Tuesday instituting inter partes review in Innolux v. Semiconductor Energy Laboratory, IPR2013-00064 is a good example. In that case, the patent owner SEL filed a preliminary response asserting that the proposed combinations of prior art references did not justify review, but also asserting that review should not be instituted because of two other, “more procedural,” reasons. With the same rigor as it applies to petitioners’ arguments, the Board looked at the patent owner’s arguments and found them lacking.
First, the patent owner contended that the petition was improper under 35 U.S.C. § 325(d) because each of the cited references, except for a cumulative secondary reference, had been cited during the prosecution of the application leading to the patent. The Board was not persuaded – it explained that the fact that the references were considered in the original prosecution is a factor which the Board “may take into account” under 35 U.S.C. § 325(d). The patent owner, however, failed to show that the original examiner had considered “substantially the same . . . arguments,” as presented in the petition. “Absent a showing of ‘substantially the same . . . arguments,’ id., and considering that petition includes evidence not before the original patent examiner,” including the secondary reference, even if cumulative, and an expert declaration, the patent owner “does not show that the inter partes review of the ‘311 Patent would be improper under 35 U.S.C. § 325(d).”
Sprint Requests Reexamination for Three More Comcast Patents, Week of April 29, 2013
| May 6, 2013
Last Monday we reported that Sprint had requested ex parte reexamination of two telecommunications data accessing patents owned by Comcast IP Holdings. Sprint has since requested reexamination of three more Comcast patents (see ex parte Request Nos. (2), (3) & (8)). The two companies are involved in an infringement action in Delaware, related to the patents.
Motorola Mobility has filed inter partes review petitions against two Internet content display patents owned by SoftView (see inter partes review Request Nos. (1) & (2)). Softview has sued Apple and AT&T Mobility for infringement of the patents.
Oracle has requested inter partes review of two Clouding IP patents (see inter partes review Request Nos. (5) & (6)). Oracle had previously filed a petition for inter partes review of the ‘799 patent, challenging a number of claims of the ‘799 patent (see IPR2013-00073). In the instant petition, Oracle is now seeking review of the remaining three independent claims of the ‘799 patent that were not addressed in the earlier petition. The second petition follows an earlier request for inter partes review of the ‘891 patent, in which Oracle requested review of claims 1 to 8 of the patent (see IPR2013-00100). In the instant petition, Oracle seeks review of independent claim 9.
Is the APJs’ Decision to Institute Design Patent IPR also their Final Decision?
| April 30, 2013
The APJs’ decision last week to institute inter partes review in Munchkin, Inc. et al. v. Luv’n Care, Ltd., IPR2013-00072 (involving Patent D617,465 for a baby’s drinking cup) has drawn a good deal of attention as the first IPR of a design patent, and rightfully so. If earlier experience with reexamination of design patents is any clue, inter partes review is likely to become a highly effective weapon for accused infringers to pursue validity challenges. Whereas original prosecution of design patents often resembles a registration system, reexamination of such patents is sometimes more like a killing field – the “kill rate” of design patents in both ex parte and inter partes reexamination being quite high.
Review of the text of the Munchkin decision itself, however, reveals what might be an even harsher outcome: that, at least in the case, the APJ’s decision to institute inter partes review is actually their final decision, holding the ‘465 patent invalid.
