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
Facebook Attack on Wireless Ink Patent among the Reexamination Requests Filed Week of May 14, 2012
| May 21, 2012
Last Monday Facebook requested reexamination of Wireless Ink’s U.S. Patent 8,135,801 which claims a system for enhancing accessibility to data over a network (see inter partes Request No. (1)). The ‘801 patent is the subject of an infringement action between the companies in New York. Notably, Facebook has filed this reexamination request before answering Wireless’s complaint in court. Facebook – like Apple and Google – has been quick to resort to reexamination when sued for infringement. Wireless has also accused Facebook of infringing two other patents – U.S. Patent Nos. 7,599,983 and 7,908,342 – in unrelated infringement actions.
For the most part, foreign companies have been slow to use reexamination as a tool for attacking U.S. patents owned by competitors. An exception is Chinese companies, who seem to be quick studies when it comes to reexamination. For instance, last week Zhejiang Trimone and Fujian Hongan filed a request against a circuit interrupter patent owned by Leviton (see inter partes Request No. (4)).
Reexamination was also requested by CBS Interactive and a series of other media companies for two more wireless messaging patents owned by Helferich Patent Licensing (see inter partes Request Nos. (3) & (7)). See last week’s post for other Helferich reexaminations.
If at first you don’t succeed ….
| May 18, 2012
In Re Baxter International, Inc. (Fed. Cir. 2012)
(Reexamination No. 90/007,751)
Summary
The CAFC’s decision in In re Baxter Int’l, Inc. (Fed. Cir. 2012) highlights the distinction between a reexamination and a district court proceeding. Specifically, the CAFC affirmed the Board of Patent Appeal and Interferences (“Board”) determination in a reexamination proceeding that claims 26-31 of U.S. Patent No. 5,247,434 (“the ‘434 patent”) are invalid – despite having previously held in a parallel litigation proceeding that the same claims were not invalid – because the courts and the USPTO use different standards to address validity. However, the CAFC cautioned that had the claims been found to be invalid in the litigation proceeding after all appeals had been exhausted, then the PTO “ideally should not arrive at a different conclusion” during a parallel reexamination proceeding when presented with the same arguments.
Details
In Fresenius Med. Care Holdings, Inc. v. Baxter Int’l, Inc., No. C 03-1431 SBA, 2007 WL 518804 (N.D. Cal. Feb. 13, 2007), the district court concluded that Fresenius failed to show by clear and convincing evidence that claims 26-31 were not valid. The CAFC affirmed the district court’s decision, explaining that Fresenius “failed to present any evidence … that the structure corresponding to the [claimed function], or an equivalent thereof, existed in the prior art” and did not identify “the structure in the specification that corresponds to the [claimed function] or compare the identified structure to those structures present in the prior art. Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288 (Fed. Cir. 2009). The CAFC held that the clear and convincing burden of proof “cannot be carried without clearly identifying the corresponding structure in the prior art.”
Kyocera Challenge to ADC Personal Communicator Patent among the Reexamination Requests Filed Week of May 7, 2012
| May 14, 2012
This past Friday Kyocera requested reexamination of an ADC Technology patent – U.S. Patent No. 6,985,136 – for a “personal communicator,” i.e., a portable computer for wireless data transmission (see inter partes Request No. (4)). ADC is currently pursuing an infringement action against Kyocera in Illinois. The ‘136 patent survived an earlier reexamination attempt, with the patentability of all claims confirmed.
Axis Communications requested reexamination of two Walker Digital Internet surveillance patents (see ex parte Request Nos. (13) & (14)). The companies are currently involved in an infringement action in Delaware regarding the patents.
Reexamination Stay Granted even though Parties are Direct Competitors
| May 10, 2012
A trial judge’s decision on whether to stay an infringement action pending completion of a parallel reexamination, is obviously critical, in some cases determines the outcome of the litigation. In making this decision, trial judges tend to fall into one of two camps: those judges who are attracted to stays because of their potential to simplify the dispute and who are therefore normally inclined to grant a stay, and those judges who are more concerned that a stay would unduly prejudice the patentee and who are therefore normally inclined to deny a stay. For the second group, the fact that the patentee and the accused infringer are direct competitors is often the kiss of death for a stay motion – those judges almost always deny the stay motion because they conclude that the patentee could not be fairly compensated for its loss of market share to the accused infringer during the stay, even if the patentee ultimately prevails in both the reexamination and the infringement action.
Despite the long odds against the grant of a stay where the parties compete, Defendant Owens Corning in Air Vent v. Owens Corning, 2012 U.S. Dist. LEXIS 64294 (W.D. Pa. May 8, 2012) found an antidote to the “direct competitor problem.” The patentee Air Vent had opposed the Owens Corning’s stay motion, arguing that it would “suffer undue prejudice as a result of a stay because Owens Corning is a direct competitor and a ‘protracted delay’ will allow Owens Corning to gain market share at the expense of Air Vent’s permanent loss of market share” (emphasis added).
