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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Will “Assignor Estoppel” Derail Monsanto’s Petition for Inter Partes Review?
| January 25, 2013
Pioneer has filed a Preliminary Response opposing Monsanto’s Petition for inter partes review of U.S. Patent No. 5,518,989, arguing that the Petition is merely to avoid the consequences of the doctrine of assignor estoppel.
Two of the three inventors of the ‘989 patent assigned their rights to Pioneer, and then left Pioneer to work at Monsanto. Pioneer argues that Monsanto was able to infringe the ‘989 patent because of the knowledge and assistance of these inventors/workers.
In support of its position, Pioneer cites the CAFC’s decisions in Checkpoint and Intel. “The doctrine of assignor estoppel prevents a party that assigns a patent to another from later challenging the validity of the assigned patent.” Checkpoint Sys., Inc. v. All-Tag Sec. S.A., 412 F.3d 1331, 1336 (Fed. Cir. 2005). The doctrine encompasses challenges by the assignor himself (typically the inventor), as well as challenges by the assignor’s privies. See, Intel Corp. v. U.S. Int’l Trade Comm’n, 946 F.2d 821, 839 (Fed. Cir. 1991). Pioneer holds that Monsanto, the inventors’ employer, are the assignors’ privy, and thus, barred from challenging the validity of the ‘989 patent.
An Inter Partes Review Practice Tip
| January 23, 2013
The Patent Office has a policy of granting pro hac vice permission to individual lawyers, who are not members of the agency’s Patent Bar, to participate in particular inter partes review proceedings. Such “litigation lawyers” are needed to help address the litigation aspects of inter partes review practice: motions, discovery, etc.
But how many pro hac vice lawyers does a party need? The answer, we learned last Thursday from the APJs in Apotex v. Alcon, IPR2013-00012, is two. The Patent Owner Alcon had moved for the admission of five lawyers, but the APJs denied that motion, asking Alcon to identify the two of those lawyers that it really wants.
The APJs’ order might not seem noteworthy, but it does reflect their firm intent to maintain limits on inter partes review cases so that they not expand into District Court-scale proceedings.
Short-But-Worthwhile Tip for Patentees in Inter Partes Review
| January 22, 2013
Should a patentee file an optional Preliminary Response, trying to persuade the APJs to deny a Petition for inter partes review?
In reexamination practice, patentees almost never file such a paper. They recognize the possibility that the Patent Office might not accept all (or even any) of the proposed grounds for rejection, and worry that a patent owner’s response to the reexamination request might create unnecessary prosecution history against the patent. Perhaps it is the low threshold for granting reexamination – establishing a substantial new question of patentability – that deters patentees from filing a response.
For inter partes review petitions, the practice has been the opposite. Most patentees have filed a detailed Preliminary Response, contesting each of the proposed grounds for rejection, often challenging the Petitioner’s right to pursue IPR.
Xilinx Seeks Inter Partes Review of Intellectual Ventures Video Projection Patent, Week of January 14, 2013
| January 22, 2013
The feud between Xilinx and Intellectual Ventures continued last week, when the former filed an inter partes review petition against U.S. Patent No. 5,779,334 owned by IV and claiming a system for enhanced video projection (see inter partes review Request No. (1)). The parent of the ‘334 patent, U.S. Patent No. 5,632,545, is the subject of an earlier petition for inter partes review (IPR 2013-0029), also filed by Xilinx.
Ex parte reexamination was requested for Apple’s U.S. Patent No. 8,245,924, related to podcasting (see ex parte Request No. (1)). Its main claim reads:
A portable media player, comprising: a communication port adapted for communication with an external device other than the portable media player; and a processor coupled with the communication port and adapted to update a podcast having episodes by accessing episode information for the podcast and then updating the podcast with a new episode if it is determined that there is a new episode of the podcast.
There was fair amount of comment on the Internet regarding this patent when it issued in August.
