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
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CAN A PRESS RELEASE BE A TORTIOUS ACT?
| August 8, 2012
Press releases are a common feature of patent disputes, particularly patent disputes involving reexamination proceedings at the Patent Office. An accused infringer announces that its reexamination request has been granted, that the patent claims have been rejected, or that a rejection has been affirmed by the PTO Board. Or patent owner announces that its claims have survived reexamination. Often the author of the press release tells its story in “a favorable light.” Almost always, a party’s goal in issuing a release is to convince the public that it will ultimately prevail.
But can a press release, by itself, expose its author to potential civil liability? Yes it can. A story of such potential liability is now playing out in Taser International v. Stinger, (Case No. 2:09-cv-289 (D. Nev.)). Taser, the developer of the TASER weapon for use by law enforcement, originally sued Stinger Systems for selling devices that infringed a number of Taser patents. The infringement action lasted three years and ended with a judgment that Stinger infringed one of the patents and an injunction prohibiting future infringement of that patent.
Challenge to Immersion Touchpad Patent Among the Reexamination Requests Filed Week of July 30, 2012
| August 6, 2012
Immersion Corporation is currently suing HTC both in District Court in Delaware and at the U.S. ITC for infringement of six patents that claim “haptic feedback for touchpads.” The accused products are cellular telephones and smart phones. A third party, perhaps HTC, has now requested ex parte reexamination of one of those patents, U.S. Patent No. 7,969,288 (see ex parte Request No. (2)). Requests for the other five patents are likely to follow. Reexamination requests for patents of this type of technology are normally inter partes, especially with a requester such as HTC.
Patent disputes have a way of escalating dramatically if a good deal of money is involved, even where the technology is comparatively simple. A good example is the fight going on between Brass Smith and Advanced Design Manufacturing over U.S. Patent No. 6,588,863 which claims sneeze guards. Brass Smith sued ADM for infringement of the ‘863 patent, and two ex parte reexamination requests were subsequently filed against the patent. Most of the ‘863 claims were rejected, so Brass Smith added 125 more. And on Friday, an unidentified third party, presumably ADM, filed a 500 page reexamination against the original claims and the 125 new claims (see ex parte Request No. (8)).
Attack on CareFusion Medication-Delivery Patent Among the Reexamination Requests Filed Week of July 23, 2012
| July 30, 2012
An as-yet unknown party has requested reexamination of CareFusion 303’s U.S. Patent No. 7,171,277 which claims system for controlling the delivery of medications to a patient (see inter partes Request No. (3)). CareFusion is pursuing separate actions against Hospira and Braun Medical for infringement of the ‘277 patent. CareFusion has also sued for infringement of a second related patent, U.S. Patent No. 7,835,927 which is the subject of an earlier reexamination, already on appeal to the Patent Office Board.
There were also requests filed against two Ronald Katz telephone-interface patents (see ex parte Request Nos. (2) & (5)).
Petitions to Revive a Terminated Reexamination Proceeding
| July 26, 2012
Petitions to revive a terminated reexamination give the patent owner a procedural safeguard if it accidentally misses a due date.
While it seems that such petitions are more frequently filed in ex parte than inter partes proceedings, petitions to revive are commonly granted in both types of proceedings.
Usually a patent owner files a petition to revive, asserting an unintentional delay under 37 CFR 1.137(b). The patent owner must also file the petition pursuant to 37 CFR 1.550(e) (for ex parte reexamination) or 37 CFR 1.958 (for inter partes reexamination).
Petitions to revive are relatively simple and straightforward. To file a successful petition, a patent owner must (1) file the late response along with the petition, (2) pay the petition fee as set forth in 37 CFR 1.17(m) ($810 for small entities; $1540 for non-small entities), and (3) include a proper statement under 37 CFR 1.137(b) that the “entire delay” from the response due date to the filing date of the petition was “unintentional.”
