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
Apple Files Reexamination “RCE”
| February 25, 2013
An aspect of patent prosecution – much-discussed of late in some circles – is the Request for Continued Examination (RCE). An RCE allows a patent applicant, unhappy with the developments in its prosecution, to begin prosecution of its application anew. A similar phenomenon sometimes occurs in reexamination, where a Requester, dissatisfied with the progress of its reexamination, requests a new reexamination rather than acquiesce in an adverse ruling from the PTO. There was an example of such an “RCE” last week.
In 2007 MedioStream sued Apple and a number of others for infringement of U.S. Patent No. 7,009,655. Apple replied by requesting inter partes reexamination of the patent and was largely successful: the examiner rejected all the claims and the PTO Board affirmed the rejection, except for claims 10 and 11 which the Board found to be patentable over Apple’s prior art. Evidently, claims 10 and 11 are of some commercial significance because Apple requested that the Board reconsider its adverse decision, specifically, to find that claims 10 and 11 are inherently anticipated or made obvious by the prior art. Apple added that “[d]esignating a new ground of under 103 in this instance [would] also serve the interests of judicial economy as it [would] avoid the inefficiency of piecemeal appellate review that would result if Requester must institute a new reexamination proceeding to determine the obviousness of claims 10 and 11.” MedioStream opposed Apple’s reconsideration request, describing it an attempt to “assert[] new arguments not previously raised in the appeal.”
ZTE Challenges Six Phone Security Patents, Week of February 11, 2013
| February 19, 2013
Last week the Chinese telephone giant ZTE requested inter partes review of six patents owned by ContentGuard Holdings and covering systems for protecting telephone content (see inter partes review Request Nos. (1) through (6)). ContentGuard has sued ZTE for infringement of the six patents.
Three times, Veeam Software used the tactic of filing two inter partes review requests against a single patent, to avoid the length limitation on such requests (see inter partes review Request Nos. (7) through (10)). Veeam filed a total of seven requests against four patents owned by Semantec. Semantec has accused Veeam of infringing the patents.
Lawyers Need to be Very, Very Careful in IPR & Post-Grant Cases
| February 19, 2013
We have previously reported that the APJs are strictly applying the rules in inter partes review and covered business method post-grant review proceedings. Those rules require adherence by the parties to a very precise sequence of procedural steps. A number of lawyers, accustomed to the freer rein they enjoy in District Court cases, have already run afoul of those rules.
In Wowza Media v. Adobe Systems, IPR2013-00054, the Patent Owner filed a letter stating that it intended to file “a preliminary response in the inter partes reexamination.” The APJs pointed out that the “communication … does not comply with the rules” and expunged it from the record. The Patent Owner also appears to have failed to timely file its Mandatory Notice identifying the real party in interest, related matters, lead and back-up counsel, and service information, as required by § 42.14(a)(1). The APJs sua sponte granted an extension of time, and the required Notice has now been filed.
Trial Judge Permits Limited use of Reexamination Results before Jury
| February 19, 2013
Most trial judges do not allow the parties in patent infringement trials to disclose the results of a reexamination proceeding to the jury. Judges worry that the jury might misunderstand the meaning of the reexamination, causing unjustified prejudice to one party or the other. In Syntrix Biosystems, Inc., v. Illumina, Inc., 2013 U.S. Dist. LEXIS 20270 (February 14, 2013), however, Judge Benjamin Settle of the Western District of Washington determined that certain aspects of an earlier reexamination of the patent-in-suit could be presented to the jury, for two limited purposes. Interestingly, in both instances, the disclosure of the reexamination to the jury would help the patent owner, not the accused infringer.
First, Judge Settle found that the jury could be told that the prior art asserted by the accused infringer had already submitted to, and reviewed by, the Patent Office during the reexamination. The Judge believed that confirmation of the patentability of the claims by the PTO during reexamination could rightfully enhance the statutory presumption that the claims are valid over the prior art considered in the reexamination.
