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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Another Infringement Action Stayed for IPR
| March 13, 2013
Initially, at least, trial judges appear to favor staying infringement actions to allow the Patent Office to resolve the prior art validity issues in the new AIA inter partes review proceedings. In earlier practice with reexamination, trial judges were often reluctant to stay an infringement case where the parties directly compete, i.e., where the patentee is at greater risk of suffering irreparable harm from a stay. With the shorter pendency promised by inter partes review, judges might be less concerned with the possibility of such prejudice.
That is certainly true for Judge Steven Merryday of the Middle District of Florida who on Monday stayed Capriola Corp et al. v. LaRose Indus. et al., (8:12-cv-2346), pending completion of an inter partes review requested by the accused infringer at the end of January. Judge Merryday acknowledged the fact that the parties are direct competitors for the patented product, but characterized the parties’ assertions on this and other points as “the usual array of accusations and counter-accusations.” He pointedly noted “the statutory arrangement [for inter partes review] promis[ing] an expeditious response from [the] PTO,” reasoning that “if the PTO declines inter partes review, little time is lost, but if [the] PTO grants inter partes review, the promise is greater for an important contribution by the PTO to resolution of the governing issues in the litigation.”
Hyundai Requests Second IPR Against Clear with Computers Patent, Week of March 4, 2013
| March 11, 2013
Clear With Computers’ U.S. Patent No. 8,121,904 claims an “electronic system for creating customized product proposals stores a plurality of pictures and text segments to be used as building blocks in creating the proposal.” Clear With Computers has sued Hyundai for infringing the ‘904 patent, and last week Hyundai replied by filing two inter partes review petitions against the patent (see inter partes review Request No. (3)). The current petition challenges claims 1-21 of the ‘904 Patent. Hyundai had previously requested reexamination of claims 22-40 the same patent (see IPR 2013-00104). Hyundai’s dual filings demonstrate the technique of sidestepping the page limit on petitions by requesting multiple IPR trials.
The following inter partes review requests were filed:
(1) IPR2013-00174 (electronically filed) – U.S. Patent No. 6,217,049 entitled BICYCLE SUSPENSION SYSTEM WITH SPRING PRELOAD ADJUSTER AND HYDRAULIC LOCKOUT DEVICE and owned by SRAM Corp. Filed March 4, 2013 by HBPSI – Hong Kong Ltd. The ‘049 patent is currently the subject matter of a litigation styled SRAM v. Hayes Bicycle Group, Inc. (Case No. 1:12-cv-03628 (N.D. Ill.)).
(2) IPR2013-00175 (electronically filed) – U.S. Patent No. 7,633,673 entitled SYSTEM AND METHOD FOR GENERATING INFRARED LIGHT FOR USE IN MEDICAL PROCEDURES and owned by Cheetah Omni, LLC. Filed March 4, 2013 by BAE Systems Information and Electronic Systems Integration, Inc. The ‘673 patent is currently the subject matter of a litigation styled Cheetah Omni, LLC v. U.S. (Case No. 1:11-cv-00255-FMA (Fed. Cl.)).
APJs Reject Inter Partes Review Request on the Merits, Applying Rigorous Review
| March 5, 2013
The APJs have already shown that they insist on full compliance with the relevant rules for a party petitioning for inter partes review of a patent and for a patent owner opposing such a petition. The APJs have now shown, in Synopsys v. Mentor Graphics, IPR2012-00041, that they are willing to deny a petition, in toto, where they see such a failure.
Synopsys sought inter partes review of Mentor’s U.S. Patent No. 6,947,882. Synopsis’ petition acknowledged the requirement in the rules that the limitations of the claims be construed before being applied to the cited prior art, but asserted that each of the limitations could be understood according to its “plain meaning.” The patent owner did not dispute this point, but the APJs did, finding that the key limitation did require construction and proceeding to construe it without input from the parties.
Zynga Patents Target of IPR Requests, Week of February 25, 2013
| March 4, 2013
Last week Personalized Media Communications requested inter partes review of three mass media programming patents owned by Zynga (see inter partes review Request Nos. (2), (3) & (8)). Zynga’s patents claim unified systems for programming mass communication, including uses for television, radio, broadcast hardcopy, and computer communications. The two companies are involved in an infringement action regarding the patents, in the Eastern Disrtict if Texas.
General Electric saw attacks by Vibrant Media, Inc. on two of its hypertext patents (see inter partes review Request Nos. (6) & (9)). GE has sued Vibrant and others for infringement of the patents.
