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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District Court Developments
| February 15, 2013
Two reexamination issues that frequently face District Court trial judges in patent infringement actions are (1) whether to stay the action pending completion of a parallel reexamination proceeding at the PTO and (2) whether to bar the patent owner’s litigation attorneys from participating in the reexamination. This week saw interesting examples of both.
STAYS
In Reiber v. TDK, 2013 U.S. Dist. LEXIS 19658, Judge William Shubb issued the tersest, yet most nuanced stay decision we have ever seen.
Considering the stage of the litigation, the potential simplification of the proceedings, and the potential for undue prejudice or tactical disadvantage to the plaintiffs should a stay issue … the court finds that the balance of the equities favors a stay as to dispositive motions, any Markman hearings, the final pretrial conference, and trial, but does not favor a stay as to discovery, discovery-related motions, and status (pretrial scheduling) conferences.
In a single sentence Judge Shubb identified and analyzed each of the three factors required for determination of whether to stay his case. He then split the baby in half, suspending the substantive events of the litigation, but allowing discovery between parties to continue.
Volkswagen Takes on Five Norman IP Holdings, Week of February 4, 2013
| February 11, 2013
Volkswagen requested reexamination of five WiFi circuitry patents owned by Norman IP Holdings (see ex parte Request Nos. (1) & (3) to (6)). The patents were originally assigned to Advanced Micro Devices, but later transferred through a series of companies, among them RPX, to Norman IP Holdings.
RPX describes itself as “the industry leader in comprehensive patent risk management through our defensive acquisition, litigation insurance, patent intelligence and strategic advisory services. For our clients, the result is strong, broad-based defense against NPE litigation and dramatically lower operating costs and financial risk.” Bloomberg describes Norma IP as “an intellectual property licensing company[that] controls patents covering a variety of consumer devices, which include Bluetooth enabled devices, camcorders, cameras, cellular telephones, copiers, cordless telephones, data storage devices, desktop personal computers, home entertainment electronics, laptops, PDAs, portable MP3 players, printers, speech recognition, WiFi enabled devices, work stations.” Norman IP used to be Saxon Innovations, LLC and is located in Tyler, Texas.
IPR Petitioners should Avoid Boilerplate Allegations
| February 8, 2013
It is common for lawyers to include generic allegations in their pleadings and motions, for instance the boilerplate plea for relief at the end of many complaints, “and such other relief as the Court might deem appropriate.” The notion is to invite the tribunal to consider other favorable possibilities not specifically identified in the pleading.
Such open-ended assertions, however, are not good practice in IPR proceedings, as shown by the APJs’ treatment of such a boilerplate plea in Oracle’s IPR Requests against patents owned by Clouding IP. Oracle has petitioned for IPR of 11 Clouding IP patents and in each Petition Oracle included the following paragraph:
The references addressed below each provide[s] the teaching believed by the Examiner to be missing from the prior art and variously anticipate or render obvious the claimed subject matter. It should be understood that rejections may be premised on alternative combinations of these same references.
RIM Seeks Reexamination of MobileMedia Ideas’ Communication Terminal Patent, Week of January 28, 2013
| February 4, 2013
On Thursday RIM requested reexamination of U.S. Patent No. 6,070,068 for a communication terminal device, owned by MobileMedia Ideas (see ex parte Request No. (8)). In December MobileMedia Ideas won when a jury returned a verdict against Apple that its iPhone 3G, 3GS and 4 infringed three MobileMedia patent, the ‘068 patent and U.S. Patent Nos. 6,253,075 and 6,427,078.
The Patent Office ordered reexamination of the ‘078 patent in November, based on an ex parte request filed by RIM. MobileMedia has also sued RIM and HTC for infringement of these patents. MobileMedia is jointly held by MPEG LA LLC (50.2%), a Sony subsidiary (24.9%), and a Nokia subsidiary (24.9%). The ‘068 patent was originally owned by Sony and the ‘075 and ‘078 patents, by Nokia. MobileMedia is said to own 300 patents.
InvenSense, Inc. has asked for reexamination of four patents owned by STMicroelectronics, Inc. (see ex parte Request Nos. (4) to (7)). The companies are in an infringement action regarding the patents in the Northern District of California.
