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
Three Belden Data Cable Patents, Targets of Inter Partes Review Requests in Week of November 19, 2012
| November 26, 2012
Last Wednesday Belden filed separate complaints for patent infringement against Hitachi Cable and Nexans, accusing them of infringing four patents claiming cables for transmitting data. In apparent anticipation of those suits, Nexans requested inter partes review of three of the Belden patents (see inter partes review Request Nos. (3), (4) & (5)). A request against the fourth patent might be on the way.
Google requested reexamination of an information filter patent owned by I/P Engine (see ex parte Request No, (1)). The companies are involved in an infringement action in the Eastern District of Virginia, where a jury has already determined that I/P’s patent is valid and infringed. A post-trial motion by Google asserting that the patent is obvious is pending before the trial judge.
APJs Need to Clarify the Pro Hac Vice Standard
| November 26, 2012
The APJs are taking very seriously motions by an attorney for pro hac vice permission to practice in an IPR or a CBM, as well the APJs should. Such an attorney is required to submit a declaration answering specific questions regarding his or her legal experience and character. Among those questions is whether the attorney has ever been denied permission to practice before any court or before any administrative agency.
Does such “denial” include instances where an attorney has failed to pass a bar exam or failed to pass the PTO’s patent agents’ exam? One would think not. But a very capable acquaintance of mine, who was required to file a declaration for pro hac vice permission and who had failed the patent agents’ exam, called the Patent Office to be sure. The answer was essentially “I-don’t-know-but-you-should-mention-that-failure-in-your-declaration.” And so my acquaintance complied with the advice and included the failure in the declaration.
Many of our colleagues, including some of the most capable, have at one time or another failed to pass an admissions test, and such failure in no way calls into question their ability or character. The APJs should therefore clarify their declaration requirements so that such failures need not become part of the public record in IPR and CBM proceedings.
A First Glimpse on the Scope of Discovery in the New Post-Issuance PTO Proceedings
| November 20, 2012
A major concern for practitioners contemplating the new post-issuance proceedings at the Patent Office has been the scope of discovery that the APJs would permit the parties. Would it be as expansive and expensive as discovery in the District Courts? In its various publications, the Patent Office indicated that it would not allow open-ended discovery, but that it would enforce narrow discovery requests that pin-point documents and information having a clear relevance to the case-determinative issues.
Last Thursday in SAP America v. Versata, CBN2012-00001, the Patent Office gave a concrete example of what it meant. Summarizing a conference call among the parties, three APJs, including Lead Administrative Law Judge Michael Tierney, ruled on a series of discovery requests.
They granted requests for specific expert reports, deposition transcripts and a JMOL motion. On the other hand, they did not grant a request for the exhibits and appendices attached to these five documents; still, they suggested that the two parties discuss the relevance of these documents, and they invited the requesting party to renew its discovery requests if the parties could not agree. Finally, the APJs denied outright a broad request for “any documentation relating to the ‘R/3’ documentation.”
The message to the bar is to make specific discovery requests, explaining the relevance of the requested information to the case.
Apple will not Face Trial on MobileMedia Claims Amended in Reexamination
| November 19, 2012
MobileMedia Ideas’ infringement action against Apple was pared back a bit this week, when Judge Sue Robinson ruled that she would not permit certain claims of U.S. Patent No. 6,427,078 to go to trial. The ‘078 patent – that claims a camera-cell phone with “a means for transmitting image information processed by said processing unit to another location using a radio frequency channel” – emerged from reexamination in September. The Patent Office determined that the claims were valid over the prior art, but only after MobileMedia had made a substantial number of changes to claim 1 and therefore to claims 2 and 3 that depend on claim 1.
Citing these amendments, Apple asserted that it would be unfair for MobileMedia to assert claims 1-3 of the ‘078 patent at trial, and moved to exclude them. Judge Robinson granted Apple’s motion.
The Judge began her analysis by analogizing Apple’s “fairness” issue to an assertion of intervening rights where the patentee has amended its claims in reexamination or reissue.
