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
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- IPWatchdog
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- Patently-O
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Recent Requests
PTO Statistics
Dell Attacks on Three Round Rock Research Patents among the Reexamination Requests Filed Week of May 29, 2012
| June 4, 2012
On Wednesday Dell requested reexamination of three computer systems patents owned by Round Rock Research (see ex parte Request Nos. (4), (5) & (6)). Last October Round Rock sued Dell in Delaware for infringement of ten other patents. Each of the patents is part of the portfolio that Round Rock bought from Micron.
Xilinx filed a reexamination request against another Intellectual Ventures mobile network patent (see inter partes Request No. (6)). Xilinx has sought reexamination of quite a number of IV patents over the past year.
The winner for the most requests was Hayward Industries who filed against four Pentair Water Pool and Spa (see inter partes Request Nos. (7) to (10)). The two companies are in an infringement action in North Carolina.
Anonymous Attack on Facebook’s User News Feed Patent among the Reexamination Requests Filed the Week of May 21, 2012
| May 29, 2012
This past March Yahoo! sued Facebook for infringement of 10 social networking patents, and soon thereafter Facebook counter-claimed for infringement of 10 of its own social networking patents, most notably U.S. Patent 7,669,123 claiming a method for displaying “a news feed in a social network environment,” specifically, a news feed about people a user knows. An unnamed party has now requested reexamination of Facebook’s ‘123 patent (see ex parte Request No. (2)). Yahoo! denies that it filed the request. The ‘123 patent attracted a fair amount of negative comment in the blogosphere when it issued in 2010, most of it suggesting that the ‘123 claims were impossibly broad and could stifle competition.
Samsung requested reexamination of a video pixel labeling patent owned by ObjectVideo (see inter partes Request No. (1)). ObjectVideo has sued Samsung and others in the ITC for infringement of the patent. A parallel infringement action in the Eastern District of Virginia has been stayed pending completion of the ITC case.
Finally, reexamination was requested by an undisclosed party for U.S. Patent No. 7,479,949, that claims a touch screen and names Steve Jobs as an inventor (see ex parte Request No. (8)). Apple has sued Motorola, Samsung and others for infringing the ‘949 patent. Apple’s case against Motorola is scheduled to go trial in June before Judge Posner. Excellent reports on these Apple cases can be found on almost a daily basis at http://www.fosspatents.com/ written by our friend Florian Mueller.
How does the Patent Office Get out of a Fix?
| May 25, 2012
The PTO Board of Appeals found itself in a difficult situation yesterday in the inter partes reexamination of Google v. Function Media (95/001,061). The reexamination examiner had adopted a number of prior art rejections proposed by Requester Google, and the Patentee Function Media had appealed to the Board. Function Media’s rejected claims were the original, unamended claims. Accordingly, those claims could be rejected only if they were anticipated or made obvious by “patents or other printed publications” – other rejections, such as rejections under § 112, were prohibited.
The problem was that the claims recited a series of means-plus-function limitations that lacked corresponding structure in the specification. On the one hand, the Board was forbidden by statute from rejecting the claims under § 112, ¶ 6, and on the other hand, the Board could not review the examiner’s prior art rejections because it could not construe those limitations in the manner required by § 112, ¶ 6.
Choose Inter Partes Reexamination
| May 23, 2012
The CAFC categorized its decision yesterday in PlaSmart v. Kappos as “non-precedential,” but the case teaches important lessons regarding the current state of reexamination. First, one cannot assume that each reviewing panel strives to affirm the decision from below – the PTO Board scrutinizes the examiner’s decision, and the CAFC is equally careful in reviewing the Board’s decision. Second, the obviousness analysis established in KSR remains a potent weapon for those challenging the validity of a patent. And finally, inter partes reexamination – with its option for the reexamination requester to participate even through the CAFC appeal – is much superior to ex parte reexamination.
The patent claimed a scooter (tricycle) with a safety improvement, reducing the likelihood of the scooter flipping over. The significant limitation recited “a supporting arm frontwardly extended from said driven portion of said twister member,” with a safety wheel mounted to the free end of the “supporting arm.” During reexamination, the examiner found that the primary reference satisfied this “supporting arm” limitation; the examiner then rejected claim 1 as anticipated by the primary reference and as obvious over a second reference in view of the primary reference. On the other hand, the examiner found a series of dependent claims, added in the reexamination, to be patentable because the references failed to show attachment of the safety wheel in the same position as required by those added claims.
The PTO Board reversed the anticipation rejection of claim 1, finding that the primary reference failed to disclose the claimed attachment of the “supporting arm” to the tricycle; specifically, the Board found that the arm disclosed in the prior art drawing was attached to a base plate, not the twister member as required by all the claims. The Board also faulted the combination of art relied upon by the examiner, for resulting in a ridiculous scooter having two safety wheels, both raised off the ground. Thus, the PTO refused to reject claim 1 as anticipated and refused to reject the new claims as obvious.
The requester appealed this refusal to reject to the CAFC who affirmed the PTO’s refusal to reject claim 1 as anticipated, the CAFC agreeing with the PTO that the prior art arm drawing was attached to a base plate, not the twister member.
The CAFC, however, was not so charitable regarding the PTO’s refusal to reject the claims as obvious over the prior art references. It concluded that the primary references disclosed each aspect of the claimed invention, except for the claimed safety driving structure discussed above. It acknowledged that the primary reference failed to “place those universal wheels in the exact locations” required by the patent claims. It found, however, the primary reference disclosed an additional wheel placed in front of the twister member to improve stability. The CAFC then determined that “modifying the scooter [of the secondary reference] to prevent tipping by placing [ ] a safety wheel in front of the twister member would thus be obvious for one skilled in the art of trying to increase stability in the direction of movement.”
Tracking KSR, the CAFC concluded that “such modification is nothing more than a predictable use of prior art elements (universal wheels in contact with the ground in the front of the twister member) to address a known problem (stability), and would thus have been obvious.”
Regarding the PTO Board’s refusal to reject the newly added dependent claims, the CAFC found that the limitations recited therein were “only minor, predictable variations” of claim 1, without even mentioning any of limitations. The CAFC therefore reversed the PTO’s refusal to reject the patent claims.
We thus see a real hop-scotch of rulings through the reexamination process, as well as a heavy reliance on KSR at the CAFC. Finally, and most importantly, the superiority of inter partes reexamination, over ex parte, is once again on display. Without the full participation of the requester at the CAFC, the validity of the claims would have been confirmed.
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