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
Corning Files Eight Inter Partes Review Requests, Week of November 12, 2012
| November 19, 2012
Corning Inc. instantly became the new league leader in the number of inter partes review requests, when it filed against eight DSM IP Assets B.V. last week (see inter partes review Request Nos. (1) to (7)). Each DSM patent relates to curable coating compositions for optic fibers. It is not yet clear whether there is litigation between the companies, and as late as last year, Corning and DSM appeared to be partners, announcing a “more than 30 year supply relationship and track record [between the companies] in providing telecom operators with world-leading optical fiber products.”
An as yet undisclosed party requested reexamination of U.S. Patent No. 5,641,805 for ophthalmic compositions (see ex parte Request No. (2)). The ‘805 patent was the subject of a CAFC decision last year and is owned by Kyowa and Alcon.
APJs Refuse to Consider Redundant Proposed Grounds for Rejection in Covered Business Method Petition
| November 16, 2012
A panel of eight APJs, including Chief APJ Smith, ordered withdrawal of redundant grounds for rejection in the Petition filed in Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., CBM2012-00003.
Writing for panel, APJ Jameson Lee stated that “numerous redundant grounds would place a significant burden on the Patent Owner and the Board, and would cause unnecessary delays.” A Petitioner “has the burden of proof to establish that it is entitled to the requested relief” and must draw a “meaningful distinction between” its proposed rejections. “A petitioner who does not state the differences between a challenged claim and the prior art, and relies instead on the Patent Owner and the Board to determine those differences based on the rest of the submission in the petition risks having the corresponding ground of obviousness not included for trial for failing to adequately state a claim for relief.”
APJs Deny Pro Hac Vice Admission of Litigation Attorney to PTO Bar
| November 14, 2012
Because the new post-grant proceedings resemble infringement litigation in a number of ways, the PTO Rules provide for the pro hac vice admission of lawyers not licensed to practice before the Patent Office, i.e., litigators. 37 C.F.R § 42.10(c). Such admission to the “Patent Office Bar,” however, is by no means automatic, as was demonstrated last week by an order in SAP America v. Versata Development Group, CBM2012-00001.
There, the Patent Owner moved for pro hac vice admission of the lawyer who was its lead counsel in a parallel infringement action. The Patent Owner made the assertions normally sufficient to secure such admission in District Court cases: working on the instant case, bar admissions and absence of a criminal record. The Petitioner opposed the admission, stating that the participation of the Patent Owner’s litigation counsel at the PTO could effectively circumvent the restrictions of the underlying District Court’s protective order in the parallel infringement action. The Petitioner also noted findings by the District Court judge that there had already been violations of the protective order. The District Court judge’s comments were quoted by the APJ’s
Page Limits – the APJs Send a Message to the Bar
| November 13, 2012
Page limits, yes, page limits. A petition seeking to initiate an inter partes review of a patent is limited by the PTO Rules to 60 pages. Rule 42.24(a)(1)(i). Waiver of the rule is possible (Rule 42.24(a)(2)), but only after a showing that such a waiver would be in the interests of justice.
But the grant of a waiver, permitting a party to exceed the 60-page limit on petitions, is not automatic, as the parties discovered last Friday in Illumina v. Columbia University, IPR2012. There, the Petitioner requested waiver, stating essentially that it needed an extra 24 pages because there were so many reasons that the claims were invalid
