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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PTO Statistics
Judge Marra Finds that Examiner’s “Clarifying” Amendment Triggers Intervening Rights
| March 29, 2012
This past Tuesday Judge Kenneth Marra of the Southern District of Florida granted summary judgment in Cobra International v. BCNY International (2012 U.S. Dist. LEXIS 42140) that the accused infringer was entitled to absolute intervening rights. Because of an amendment made to the claims in reexamination, damages for any act of infringement that occurred prior to the reexamination certificate are eliminated.
Of interest to reexamination practitioners is the twist that the amendment in question grew out of an interview with the examiner and was characterized by the examiner as “clarifying.” The patent was for a “lighted shoe” including a series of LEDs and other electrical components. The patent successfully emerged from reexamination twice; at the end of the second reexamination the examiner stated:
Challenge to ObjectVideo Patent in ITC Case, among the Reexamination Requests Filed Week of March 19, 2012
| March 26, 2012
Last Friday a 916-page request for inter partes reexamination was filed against ObjectVideo’s U.S. Patent No. 7,613,424 (see inter partes Request No. (4)). The ‘424 patent is one of six patents that are the subject of an ITC investigation – Certain Video Analytics – instituted last July against Bosch, Samsung and Sony. Although the identity of the Requestor is not yet apparent from the PTO docket, it is likely one of these three Respondents in the ITC case. Reexamination has less impact on ITC investigations than on infringement actions in the District Courts because the ITC refuses to stay its cases. On the other hand, one wonders whether the ITC, given its focus on protecting the public interest, would be willing to maintain an exclusion order where the patent-in-question has been determined in reexamination at the PTO to be unpatentable. Perhaps the ObjectVideo case will present that issue.
In an unusual twist, an unidentified third party requested reexamination of U.S. Patent No. 6,307,955 last Monday, and on Friday, the ‘955 patentee, Topaz Systems, filed its own request (see ex parte Request Nos. (1) & (7)).
Rambus Suffers Setback in ‘109 Reexamination at the PTO Board
| March 22, 2012
Rambus’ hopes for preserving its U.S. Patent No. 7,287,109 suffered a setback this morning when the PTO Board of Appeals denied its petition to modify an earlier Board decision. In that earlier decision, the Board affirmed a rejection of certain ‘109 claims as being obvious over the “Farmwald” reference; Rambus’ petition asked that the affirmed rejection be treated as a “new ground for rejection,” allowing Rambus to resume prosecution of the ‘109 patent claims before the examiner. After today’s denial by the Board of Rambus’ petition, Rambus’ only remedy is to pursue an appeal of the rejection at the CAFC.
Rambus had argued in its petition that the Board’s earlier decision affirming the prior art rejection relied on “new facts” not considered by the examiner. Rambus argued, essentially, that it had not received a fair opportunity to address the new facts relied upon by the Board.
Broadcom Wins Important Victory in Reexamination of its ‘080 GPS Patent
| March 21, 2012
Broadcom and its subsidiary Global Locate received good news Monday when the PTO Board of Appeals reversed a rejection in the reexamination of Global’s U.S. Patent No. 7,158,080, claiming a method and apparatus for acquiring satellite signals using “long term tracking data” received at a remote receiver. On the basis of a reexamination request filed by SiRF Technology in 2010, the examiner had rejected the ‘080 claims as being anticipated by and obvious over several prior art references.
In 2009 the ITC found that the ‘080 patent, along with five other Global patents, were infringed by GPS systems imported by SiRF and others and issued a limited exclusion order against the future importation of infringing systems. Broadcom and Global later filed an enforcement complaint alleging that SiRF was violating the exclusion order. Accordingly, the ‘080 patent is clearly of considerable commercial significance.
The Board’s analysis will interest reexamination practitioners because it hinges on the Board’s claim construction. Specifically, the Board found that the examiner had construed the phrase “long term tracking data” too broadly and that once the phrase was properly construed, the claims in reexamination were patentable over the prior art. Significantly, the Board relied not only on the ‘080 specification, but also on expert declarations submitted by the ‘080 patentee and the requester. It is common for the Board to rely upon expert declarations for analyzing the technical meaning of prior art or whether a claim is obvious over prior art, but not so common for it to cite such declarations to support its legal conclusions on claim construction.
Update on one of the Callaway Golf Ball Patent Reexaminations
Last Thursday the PTO Board affirmed the rejection of Callaway’s U.S. Patent No. 6,495,633 claiming a “dual core” golf ball (95/000,445). The request had been filed by Acushnet, whom Callaway has sued for infringing the ‘633 patent.
