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
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What to Know about Petitions for an Interview in Patent Reexamination
| October 3, 2012
First, ex parte reexamination. Interviews between a patent owner and the examiner on the merits of the proceeding are permitted. After an interview, a patent owner must provide an interview summary as required by 37 CFR 1.560(b). Under that provision, a patent owner must complete and separately file a written statement on the substance of the interview (and not simply an interview agenda). This statement must be filed within one month from the date of the interview.
Failing to file a timely statement will result in a termination of the reexamination (37 CFR 1.550(d)) (see Star Scientific, 90/009,372 & 90/009,375). A patent owner can file a petition to revive the reexamination proceedings for unavoidable or unintentional delay, but this is not optimal because such petitions are sometimes denied and the petitioner might again fail to comply with the procedural requirements of the petition for revival.
What about inter partes reexamination? Interviews are not permitted in inter partes proceeding (37 CFR 1.955). Even so, a patent owner can file a petition under 37 CFR 1.183 to waive or suspend 37 CFR 1.955 to permit an interview in the reexamination. Most often, a patent owner files the petition after a requester has withdrawn from the inter partes proceeding (typically when the parties have settled in a parallel litigation). When a requester has not officially withdrawn from the proceedings, it appears that the petition is rarely granted due to concerns over the substantive rights of the requester.
Intellectual Ventures Attack on Xilinx Patents among the Filings in the Two Weeks September 16-28, 2012
| October 1, 2012
The feud between Intellectual Ventures and Xilinx heated up last month when IV requested inter partes review of four Xilinx patents (see inter partes review Request Nos. (6) to (8) and (10)). Xilinx sued IV for declaratory judgment of invalidity and non-infringement last year, and has since requested reexamination of a number of IV patents.
Microsoft requested inter partes review of U.S. Patent No. 6,757,717owned by Proxyconn claiming a data access system (see inter partes review Request No. (11)). The two companies are involved in litigation in the Central District of California.
Judge Robinson Distinguishes Between Reexamination and Reissue
| September 24, 2012
Judge Sue Robinson of Delaware ruled last week that patentees Senju and Kyorin and their licensee Allergan were precluded from suing Apotex a second time for infringement of a single patent. The dispute between the parties began several years ago when the patentees filed a first action against Apotex for infringement of claims 1-3, 6-7 and 9 of U.S. Patent No. 6,333,045 that claimed compositions comprising gatifloxacin and methods of treating eye disorders with those compositions.
Apotex ultimately prevailed in that first litigation, when Judge Robinson ruled that the asserted claims of the ‘045 patent were invalid over certain prior art references and the CAFC later affirmed her judgment of invalidity. During the pendency of that first litigation, the patentees requested and pursued a reexamination of the ‘045 patent. (They did so, Judge Robinson notes with apparent annoyance, “without the court’s knowledge” or informing Apotex). In that reexamination, the PTO rejected the original ‘045 claims as obvious over the prior art, and the patentees amended their claims to distinguish over that art. Ultimately, the PTO issued a reexamination certificate cancelling claims 1-3 and 8-11 and allowing amended claim 6 and added claims 12-16. The surviving claims were narrower in scope than the original claims.
Old Era of Post-Grant Examination Ended and New Era Began Sunday Morning
| September 17, 2012
IP360 is reporting this morning that the first petition under the new post-grant examination provisions of the America Invents Act was filed Sunday – a petition for post-grant review filed by SAP challenging the validity of U.S. Patent No. 6,553,350 owned by Versata.
The petition includes an argument that certain claims are invalid as anticipated by a printed publication – an argument available under the old law. But the petition also includes a number of assertions that are possible only under the new provisions: that claims are invalid because they recite patent-ineligible subject matter, they lack written description support in the specification, they are indefinite, and they were known in the United States. There is even an argument that the claims invalid over “admitted prior art” based on the patentee’s infringement allegations.
