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
Nike Shoe Patent Target of Inter Partes Review Request, Week of November 26, 2012
| December 3, 2012
Rival adidas requested inter partes review of a Nike shoe patent (see inter partes review Request No. (3)). There does not yet appear to be any litigation between the companies over this patent.
Chimei Innolux continues to challenge Semiconductor Energy Lab patents, last week requesting inter partes review of three Innolux thin film patents (see inter partes review Request Nos. (1), (2) & (4). There were so many bases for attacking SEL’s ‘311 patent, that Chimei split them into two Requests.
APJs Give Further Guidance on Petition Arguments
| December 3, 2012
In an earlier post, we reported that a panel of eight APJs had ordered withdrawal of grounds for rejection from a Petition that were redundant with other proposed grounds for rejection. Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., CBM2012-00003. Since then, the Petitioner has asked for rehearing, but the APJs have refused to alter their earlier order. The APJ’s refusal gives insight into how they will treat future Petitions.
The Petitioner asked for reconsideration for two reasons. First, it argued that it could rely solely on expert testimony to show that a particular claim limitation is known in the art, and separately and alternatively, cite a specific prior art reference to show that the limitation is known. The APJs say no: the “references should be cited in support of the expert’s opinion.” To propose “different grounds based separately on expert opinion and on references creates redundancy, promotes inefficiency,” etc.
More generally, the Petitioner asserted that it should be free to present different alternatives for meeting a particular claim limitation. The APJs agreed with Petitioner’s general proposition, but added that “alternative grounds may be presented if an actual need for presenting alternatives exists and is adequately explained in the petition” (emphasis added). The APJs conceded that the Patent Owner might later amend its claim to distinguish over the expert opinion or prior art reference. But the APJs also noted that such an amendment may accomplished only by motion to the APJs, and that the Petitioner would be free to oppose the motion and to respond to the new issues raised by the amendment. Clearly, the APJs want a Petition to be limited to the claims as they appear in the issued patent and not to anticipate claim changes that the Patent Owner might later make.
A Pointer from Reexamination Practice
| November 29, 2012
Not every grievance against an examiner in reexamination can be resolved through appeal to the Board. In fact, the Board’s appellate jurisdiction is limited to “final rejection[s] of any claim by the primary examiner … .” 35 U.S.C. § 134(b). Stated differently, a patent owner “may appeal … with respect to any decision adverse to the patentability of any original or proposed amended or new claim of the patent.” 35 U.S.C. § 315(a)(1).
In Weatherford Int’l v. Tesco, 95/000,418 decided yesterday, the patent owner found that it could not contest, by appeal to the Board, the examiner’s refusal during the prosecution of the reexamination to enter a claim amendment. The Board explained that the patent owner’s “recourse was to seek review of the Examiner’s decision via petition to the Director, not appeal to the Board.”
Nonetheless, the case ended happily for the patent owner – the Board reversed the examiner’s prior art rejection of the claims, based on the patent owner’s technical arguments and a § 131 Declaration removing one of the prior art references. Regarding the Declaration, the Board concluded that although “the Examiner takes the view that the evidence is insufficient [to show an earlier reduction of the claimed invention to practice], it is not apparent what claim features the Examiner considers absent or unaccounted for in connection with the Schneider Declaration and evidence submitted therewith.”
Reexaminations Concurrent with IPR, Normally Not Stayed
| November 27, 2012
When the Patent Office institutes an inter partes review of a patent, should the APJs stay any concurrent proceedings, such as a co-pending reexamination of the same patent? In CBS Interactive v. Helferich Patent Licensing, IPR2013-00033, APJ Joni Chang answered that ordinarily, reexaminations would not be stayed – “because in the absence of good cause, reexaminations are conducted with special dispatch.”
The answer, however, was different because of the specific facts of in the CBS case. APJ Chang first acknowledged that there was no overlap of claims between the reexamination and the IPR – only the patent’s independent claims were challenged in the reexamination and only its dependent claims, in the IPR. On the other hand, there was substantial overlap between the two proceedings: the same grounds for unpatentability were asserted, the same prior art was applied, and four of the five petitioners in the IPR were also requesters in the reexamination.
