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
Seventeen Inter Partes Review Requests Filed, Week of December 17, 2012
| December 26, 2012
That’s right, seventeen. Inter partes review, despite its high filing fee, certainly seems to be catching on, especially among the major electronics and Internet companies. Apple requested review of two information distribution patents owned by Achates Reference Publishing (see inter partes review Request Nos. (1) & (2)). The other requesters are EMC, Oracle, Sony/Axis, Motorola and Honeywell. Each of the patents is involved in an infringement action.
There were also a healthy number of ex parte requests filed, most notably an anonymous request filed against Apple’s U.S. Patent No. RE41,922 which is the subject of an ITC investigation pursued by Apple (see ex parte Request No (5)). The volume of filings appears to be returning to more normal levels, slowly recovering from the flood of requests filed the first two weeks of September to avoid the filing fee increases.
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Should I ask for Oral Argument in My Reexamination
| December 19, 2012
Once all the briefs have been filed, the Patent Owner has the option of requesting oral argument (with inter partes reexaminations, both the Patent Owner and the Requester have that option). So, should the Patent Owner ask for oral argument? Rule 41.73(a) reflects at least some ambivalence on the part of the Board:
An oral hearing should be requested only in those circumstances in which an appellant or a respondent considers such a hearing necessary or desirable for a proper presentation of the appeal. An appeal decided on the briefs without an oral hearing will receive the same consideration by the Board as an appeal decided after an oral hearing.
Thus, there should be some objective basis for believing that resolution of the issues on appeal would be facilitated by oral argument. Certainly, the Patent Owner should not ask for oral argument, only to repeat the arguments in its brief.
IBM Targets Data-Processing Patents in IPR Requests, Week of December 10, 2012
| December 17, 2012
IBM is the perennial winner in obtaining U.S. patents, but rarely appears in patent litigation. So it was noteworthy last year when Financial Systems Technology (Intellectual Property) Pty. Ltd. sued IBM in the Northern District of Illinois for infringement of two data-processing patents. IBM has now replied to that accusation by requesting inter partes review of those patents (see inter partes review Request Nos. (3) & (4)).
Chris Holman reports in his eponymous Holman’s Biotech IP Blog (http://holmansbiotechipblog.blogspot.com/2012/11/jury-finds-abis-sale-of-dna-sequencing.html) that Enzo Biochem won a $48,587,500 verdict last month against Applied Biosystems for infringement U.S. Patent No. 5,449,767. The ‘767 patent claims chemical compounds that are used in DNA analysis. An ex parte reexamination request (90/012,061) was filed against Enzo’s ‘767 patent at the end of last year. A non-final Action issued in July rejecting several of ‘767 claims as being anticipated by two prior art references. Enzo has replied to that rejection with a substantial expert declaration that challenges the PTO’s understanding of the prior art references. Last week a new reexamination request was filed against the ‘767 patent (see ex parte Request No. (4)). There is little detail yet available regarding the new request, but it might be an attempt by Enzo’s competitors to contradict Enzo’s arguments in the first reexamination.
Reexamination has not Saved Apple against MobileMedia Patents, So Far
| December 14, 2012
MobileMedia Ideas won an impressive victory in Delaware yesterday when a Federal jury returned a verdict that Apple’s iPhone 3G, 3GS and 4 infringe three MobileMedia patents: U.S. Patent Nos. 6,070,068, 6,253,075 and 6,427,078. The jury also found that none of the patents was anticipated or made obvious by the prior art. The first two patents claim certain call handling systems, and the third, camera technology.
Apple had followed its customary strategy for defending against claims of patent infringement – it filed substantial reexamination requests against each of the MobileMedia patents. But that strategy has not worked. The reexamination examiner confirmed the patentability of the specific claims of the ‘075 and ‘078 patents that Apple was found to infringe. And the claims of the ‘068 patent that were found to be infringed, were actually added to the ‘068 patent in the reexamination. So far at least, Apple’s reexamination approach has misfired.
