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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- All Things Pros
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Recent Requests
PTO Statistics
Computer File Synchronization Patent among the Targets, Week of December 3, 2012
| December 11, 2012
Oracle, that is enmeshed in an infringement action brought by Clouding IP, has requested inter partes review of one of the patents in that action, U.S. Patent No. 6,738,799 (see inter partes review Request No. (4)). Oracle also indicated that review requests against the other patents in that case are on the way. Apple has also been sued for infringement of the ‘799 patent.
The following inter partes reviewrequests were filed:
(1) IPR2013-00069 (electronically filed) – U.S. Patent No. 7,663,061 entitled HIGH PERFORMANCE DATA CABLE and owned by Belden, Inc. Filed December 3, 2012 by Nexans, Inc.
(2) IPR2013-00071 (electronically filed) – U.S. Patent No. 6,218,930 entitled APPARATUS AND METHOD FOR REMOTELY POWERING ACCESS EQUIPMENT OVER A 10/100 SWITCHED ETHERNET NETWORK and owned by Network-1 Security Solutions, Inc. Filed December 5, 2012 by Avaya, Inc. The ‘930 patent is currently the subject of a litigation styled Network-1 Security Solutions, Inc. v. Alcatel-Lucent USA Inc., et al. (Case No. 6:11 cv492 (E.D. Tex.)).
(3) IPR2013-00072 (electronically filed) – U.S. Patent No. D617,465 entitled DRINKING CUP and owned by Luv n’ Care, Ltd. Filed December 5, 2012 by Munchkin, Inc. and Toys “R” Us, Inc. The ‘465 patent is currently the subject of a litigation styled Luv N’ Care, Ltd. v. Toys “R” Us, Inc. (Case No. 1:12-cv-00228-LLS (S.D.N.Y.)).
(4) IPR2013-00073 (electronically filed) – U.S. Patent No. 6,738,799 entitled METHODS AND APPARATUSES FOR FILE SYNCHRONIZATION AND UPDATING USING A SIGNATURE LIST and owned by Clouding IP, LLC. Filed December 8, 2012 by Oracle. The ‘799 patent is currently the subject of a litigation styled Clouding IP, LLC v. Oracle Corp. (Case No. 1:12-cv-00642 (D. Del.)); Stec IP v. Apple (Case No. 1:12-cv-00638 (D. Del.)). Ten other patents were asserted in the litigation, and Oracle indicated that petitions for inter partes reviews of these patents will be filed in the forthcoming weeks.
Specific Threat Required for Reexamination Prosecution Bar against Patentee’s Litigation Counsel
| December 10, 2012
In cases where a patent is simultaneously involved in litigation in District Court and reexamination at the Patent Office, it is common for the accused infringer to ask that the protective order bar the patentee’s litigation counsel from participating in the reexamination. Trial judges, however, are often reluctant to grant such a reexamination prosecution bar, unless the accused infringer identifies specific threats that would justify the bar. This reluctance was on display last week in Helferich Patent Licensing v. Phoenix Newspapers, 2012 U.S. Dist. LEXIS 172422 (D. Ariz.).
The case is a consolidation of four infringement actions, involving seven patents, each of which is now in reexamination. The accused infringers noted that the patentee is “currently pursuing additional claims” in the reexaminations, and asked Judge Neil Wake to bar the patentee’s litigation counsel from participating in the prosecution of the reexaminations. The accused infringers were evidently concerned that patentee’s litigation counsel might use confidential information, obtained under the protective order, to fashion new claims that would cover the accused infringer’s intended future products.
Micron Scores Victory over Rambus Patent at PTO Board
| December 7, 2012
The comparative strength of inter partes reexamination, over ex parte reexamination, was demonstrated anew today when the Patent Trial & Appeal Board rejected claims 1and 4 of Rambus’ U.S. Patent No. 6,751,696. (95/001,133). The ‘696 patent is one of the famous Farmwald patents that claim synchronous memory devices and that have been the subject of a number of ITC and District Court proceedings.
The examiner had initially confirmed the claims as being valid over a proposed combination of prior art references. Micron, one of the parties that had requested reexamination, appealed to the Board, and the Board has now found that those claims are invalid over the cited references, reversing the examiner. Of course, in an ex parte reexamination, the requester would not have been able to appeal the examiner’s initial confirmation of the claims.
In a bit of “inside baseball” that might interest reexamination practitioners, the Board rejected Rambus’ argument that Micron had no standing to pursue the appeal was not proper. Rambus correctly pointed out that Samsung, not Micron, had proposed the specific combination of prior art in a separate reexamination request that was merged with the reexamination requested by Micron.
What is an “Involved Application” in IPR Practice?
| December 6, 2012
The Petitioner in Chi Mei Innolux v. Semiconductor Energy Laboratory, IPR2013-00028, has tried an interesting gambit: it has asked that the prosecution of two applications that are related to the patent in inter partes review (IPR) be stopped.
SEL’s U.S. Patent No. 6,404,480 – that is the subject of the inter partes review – is also a member of a large family of patents, as shown by the following chart that appears in Chi Mei’s Petition.
