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
- CAFC Alert
- FDA Law Blog
- IPWatchdog
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- Patently-O
- PLI Patent Law Practice Center
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Recent Requests
PTO Statistics
Investors in a Separate Corporation that Files an IPR Petition Are Not Real Parties in Interest
| April 2, 2014
Clouding IP is the assignee of U.S. Patent No. 6,738,799 (the ‘799 patent). The ‘799 patent is related to a method of file synchronization using a signature list. Clouding asserted the ‘799 patent in a host of lawsuits, including one against Google. More than one year after the Google case was filed, Unified Patents filed a petition to institute Inter Partes Review (IPR) of certain claims of the ‘799 patent.
More IPR Requests Filed against Intellectual Ventures’ Patents, Among the Requests Week of March 24, 2014
| March 31, 2014
As Intellectual Ventures has begun to enforce its vast patent portfolio in court, more and more of IV’s targets are looking to the Patent Office for help. This past week, Canon filed three IPR requests against a single IV patent (see inter partes review Request No. (6)). And Marvell Semiconductor attacked three IV patents that are the subject of infringement actions against Canon, Ricoh and Sendai Nikon (see inter partes review Request Nos. (15), (16) & (18)).
Ricoh, Xerox, and Lexmark International have requested inter partes review of two computer architecture-document management patents owned by MPHJ (see inter partes review Request Nos. (7) & (8)). Several state attorneys general, including the New York Attorney General, the Minnesota Attorney General and the Vermont Attorney General have taken action against MPHJ’s alleged deceptive practices in asserting its patents. The two patents are the subject of five patent infringement actions in the Eastern District of Texas and the District of Delaware. MPHJ has also filed a complaint against the Federal Trade Commission (FTC) in response to FTC’s investigation of MPHJ for unfair or deceptive commercial acts or practices (MPHJ Technology Investments, LLC v. Federal Trade Commission (Case No. 6:13-cv-00011 (W.D. Tex.)).
We are also seeing a growing number IPR requests being filed jointly by multiple companies. Last week, Google and Samsung teamed up to file requests against three Micrografx patents (see inter partes review Request Nos. (3), (4) & (5)).
Mitsubishi Plastics Seeks Inter Partes Review of Lithium Battery Separator Patent, Among the Requests Week of March 17, 2014
| March 24, 2014
In January Celgard – a subsidiary of Polypore International – sued LG for infringement of U.S. Patent No. 6,432,586. The ‘586 patent broadly claims a separator for lithium batteries, that includes “a ceramic layer is adapted … to block dendrite growth and to prevent electronic shorting … .” This case follows earlier infringement actions against Sumitomo and SK. Mitsubishi Plastics has now filed for inter partes review of Celgard’s ‘586 patent (see inter partes review Request No. (5)).
Ericsson requested review of an Intellectual Ventures wireless patent, U.S. Patent No. 7,496,674, that IV has asserted against four telephone companies (see inter partes review Request No. (8)). The ‘674 patent has an unusually long and complex assignment history at the Patent Office.
ZTE asserted a novel legal theory against a wireless device patent owned by InterDigital: the challenged claims are invalid, in part, because the claims of a related patent were found by the U.S. ITC to be invalid over similar art, see In the Matter of Certain Wireless Devices with 3GCapability and Components Thereof, USITC Inv. No. 337-TA-800, Comm’n Op. (Dec. 20, 2013) (see inter partes review Request No. (6)).
And Oxford Nanopore won the Alacrity Prize last week by filing two inter partes review requests against nanopore patent, U.S. Patent No. 8,673,550, on the very day it issued (see inter partes review Request No. (3)).
APJs’ View of Claim Construction Thwarts Petitioner
| March 21, 2014
A major appeal of ex parte and inter partes reexamination was the high rate at which the Patent Office granted requests and initiated proceedings. On the other hand, the APJs in recent months are becoming much more discriminating in their consideration of inter partes review petitions, denying a sizeable percentage of such requests for failing to present a complete and convincing argument for unpatentability.
The APJs’ decision denying review this Monday in Pride Solutions v. Not Dead Yet Manufacturing (IPR2013-00627) is a case in point. The patent claimed a “connect/disconnect coupling for securing a stalk stomper to a tool bar.” (In case you don’t know, “a stalk stomper” stomps on stubble from harvested crops, reducing the possibility of the stubble damaging tractors, etc.). The exemplary claim included the limitation of “a retention means on the plate member” for engaging a pin to prevent desirable longitudinal movement of certain component parts.
