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
Truth is not always a Complete Defense: an Update on the Press release Case
| August 22, 2012
Last week we reported on TASER International v. Stinger Systems et al., where Taser has accused its rival Stinger and its lawyer of various acts of unfair competition, including violation of Lanham Act, all centered around a series of press releases allegedly designed to mislead the public and thereby injure TASER. On Monday Judge Miranda Du denied a motion by Stinger’s lawyer for summary determination, giving us a better glimpse into the dispute.
The motion essentially argued that the defendants were entitled to judgment because the statements in the press releases were accurate. Judge Du wasn’t buying. First, she cited the basic case law that the requirement of “falsity within the meaning of the Lanham Act, a plaintiff may show that the statement was literally false, either on its face or by necessary implication, or that the statement was literally true but likely to mislead or confuse consumers.” (Emphasis added; citation omitted). Thus, the “literal truth of statements contained in the releases does not defeat the Lanham Act claim.”
Motorola Mobility Seeks Reexamination of Two Intellectual Ventures Portable Computer Patents, Week of August 13, 2012
| August 20, 2012
On Thursday Motorola Mobility requested reexamination of U.S. Patent Nos. 7,120,462 and 7,409,450 owned by Intellectual Ventures, that concern the transfer of files between computers, often for game devices (see inter partes Request Nos. (3) & (4)). IV has sued Motorola for infringing the two patents, plus four other patents.
Two paper-filed reexamination requests came to light last week. They challenge U.S. Patent Nos. 6,465,961 and 6,634,770 (see inter partes Request Nos. (17) & (18)) owned by the CAO Group and claiming semiconductor lighting systems. The requests were filed several weeks ago by GE Lighting who has been sued by CAO for infringement of the two patents. Reexamination requests filed by paper, rather than electronically, often do not appear on the Patent Office files for many days.
Some Courts Stay Infringement Actions even where Parties are Direct Competitors
| August 16, 2012
All trial judges apply the customary three-part test when ruling on a defendant’s motion to stay a patent infringement action pending completion of a reexamination proceeding at the Patent Office, specifically a balance of factors: (1) the stage of the litigation, (2) the likelihood that reexamination would simplify the issues for trial, and (3) whether the patent owner would be unduly prejudiced by the requested stay. Judges have been most inclined to deny a stay where the parties are direct competitors and delay of the infringement is likely to damage the patentee in a way that cannot be later cured by an award of damages, i.e., where there is prejudice to the patentee from potential loss of market share.
Lately, however, a number of trial judges have concluded that a stay is justified even though the parties directly compete. In DuPont v. MacDermid, the patent owner opposed a stay motion, asserting, inter alia, that it and the accused infringer competed directly against one another in the market for the patented product and that it would lose market share during a stay, for which it could not later be adequately compensated. 2102 U.S. Dist. LEXIS 101678 (July 23, 2012). Magistrate Judge Tonianne Bongiovanni acknowledged the patent owner’s concern regarding “eroding … market share and … substantial loss of profits and goodwill.” But she determined that such loss could be compensated in the event that the patent owner ultimately prevailed on the merits. Her determination on this point seems to have been strongly affected by the fact that the patent owner had not sought a preliminary injunction – if loss of market were truly irreparable, why hadn’t the patent owner tried to stop as soon as legally possible?
Challenge to Suffolk Technologies “Snippet” Internet Search Patent Among the Reexamination Requests Filed Week of August 3, 2012
| August 13, 2012
Suffolk Technologies sued AOL and Google in June for infringement of U.S. Patent No. 6,334,132 that claims an apparatus for summarizing “data sets” for use in searching the Internet. On Friday, an undisclosed party requested reexamination of the ‘132 patent (see ex parte Request No. (9)). Companies such as AOL and Google typically choose inter partes reexamination, but only ex parte reexamination was available against the ‘132 patent because of its early filing date. The ‘132 patent and a second patent in Suffolk’s case, U.S. Patent No. 6,081,835, were originally assigned to British Telecommunication but later transferred to Suffolk. A request against the ‘835 patent is expected soon.
Sony Computer Entertainment requested reexamination of a Walker Digital patent concerning an on-line tournament system (see inter partes Request No. (2)). . Walker Digital has sued Sony and host of other software companies for infringing the patent.
