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- 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?
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- 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)
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- "The Interplay between Reexaminations, Preliminary Injunctions and Stays of Litigation" - by Dennis Crouch at PATENTLYO.COM
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CAFC Marine Polymer Decision Changes Law of Intervening Rights, Again
| March 20, 2012
Last September a divided panel of the CAFC ruled in the Marine Polymer case that intervening rights could be triggered in reexamination, not only by the patentee’s actual amendment of claims, but also by the patentee’s arguments that “effectively amend” the claims. Although the Marine Polymer decision did not reverse any previously controlling CAFC precedent, it did confound the patent bar by upsetting a decades-long assumption that intervening rights could not be created without a substantive amendment of the claim text itself.
Last week the CAFC, now sitting en banc, reversed the panel decision, holding that intervening rights in reexamination do, in fact, require amendment of the claim text; they cannot arise from the patentee’s argument alone. The en banc decision, while a squeaker – the vote was 6 to 4 with Judges Moore and O’Malley not participating – was undoubtedly correct. The literal wording of the relevant statutory provisions (35 U.S.C. §§ 252, 307(a) & (b)) indicates that an amendment of the claim text is needed. Moreover, the CAFC’s adoption of “an intervening-rights-by-argument” regime could have resulted in an enormous forfeiture of patent rights, that forfeiture caused by the simple fact that for many years reexamination lawyers had been unaware of the legal effect of their arguments against prior art rejections. Such forfeiture should be based on clear statutory wording, not a new, judicially-created doctrine.
Challenges to Six Mad Dogg Exercise Bicycle Patents, among the Reexamination Requests Filed Week of March 12, 2012
| March 19, 2012
Mad Dogg Athletics has vigorously enforced its exercise bicycle patents against a host of exercise equipment makers, including Nautilus. Last Wednesday competitor BH North America struck back, requesting reexamination of six Mad Dogg patents (see ex parte Request Nos. (7) to (12)).
Boston Scientific filed another request against an Orbusneich intraluminal endoprosthesis patent, continuing the run of reexamination requests regarding medical devices (see inter partes Request No. (8)).
And a reexamination was requested, for the first time in my memory, of a plant patent – U.S. Plant Patent No. 17,637 entitled “Plum Tree Named ‘Constanza’” (see inter partes Request No. (10)).
The following inter partes requests were filed:
(1) 95/001,933 (electronically filed) – U.S. Patent No. 7,226,459 entitled RECIPROCATING ROTARY ARTHROSCOPIC SURGICAL INSTRUMENT and owned by Smith & Nephew, Inc. Filed March 12, 2012, by Hologic, Inc. The ‘459 patent is currently the subject of a litigation styled Smith & Nephew, Inc. v. Interface Medical, Inc v. Hologic, Inc., 1:11-cv-12064-RWZ (D. Mass.).
(2) 95/001,934 (electronically filed) – U.S. Patent No. 6,742,161 entitled DISTRIBUTED COMPUTING DOCUMENT RECOGNITION AND PROCESSING and owned by Nuance Communications. Filed March 12, 2012, by Abbyy USA Software House, Inc. The ‘161 patent is currently the subject of a litigation styled Nuance Communications, Inc. v ABBYY USA Software House, Inc., et al, Case Nos. 08-0212-JSW, 08-04227-HJSW, 08-04942 (N.D. Cal.).
(3) 95/001,935 (electronically filed) – U.S. Patent No. 7,338,684 entitled VAPOR GROWN CARBON FIBER REINFORCED COMPOSITE MATERIALS AND METHODS OF MAKING AND USING and owned by Performance Polymer Solutions, Inc. Filed March 13, 2012, by University of Dayton Research Institute.
(4) 95/001,936 (electronically filed) – U.S. Patent No. 7,927,701 entitled VAPOR GROWN CARBON FIBER REINFORCED COMPOSITE MATERIALS AND METHODS OF MAKING AND USING and owned by Performance Polymer Solutions, Inc. Filed March 13, 2012, by University of Dayton Research Institute.
(5) 95/001,937 (electronically filed) – U.S. Patent No. 6,310,090 entitled PROCESS AND PRODUCT FOR ENHANCING IMMUNE RESPONSE IN COMPANION ANIMALS USING A COMBINATION OF ANTIOXIDANTS and owned by The Iams Co. Filed March 13, 2012, by Nestle Purina PetCare.
(6) 95/001,938 (electronically filed) – U.S. Patent No. 7,066,433 entitled ARM APPARATUS FOR MOUNTING ELECTRONIC DEVICES WITH CABLE MANAGEMENT SYSTEM and owned by Innovative Office Prods. Filed March 15, 2012, by SpaceCo Business Solutions. The ‘433 patent is currently the subject of two litigation styled Innovative Office Prods v. SpaceCo Business Solutions (Case No. 05-cv-4037 (E.D. Pa.)); and Office Prods. v. Smed (Case No. 07-cv-192 (C.D. Cal.)).
(7) 95/001,939 (electronically filed) – U.S. Patent No. 6,349,291 entitled METHOD AND SYSTEM FOR ANALYSIS, DISPLAY AND DISSEMINATION OF FINANCIAL INFORMATION USING RESAMPLED STATISTICAL METHODS and owned by InvestPic. Filed March 15, 2011, by Algorithmics, IBM and SAS Inst. The ‘291 patent is currently the subject of a litigation styled InvestPic v. Algorithmics et al. (Case No. 1:10-cv-1028 (D. Del.)).
(8) 95/001,940 (electronically filed) – U.S. Patent No. 6,821,292 entitled CRIMPABLE INTRALUMINAL ENDOPROSTHESIS HAVING HELICAL ELEMENTS and owned by Orbusneich. Filed March 16, 2011, by Boston Scientific. The ‘292 patent is currently the subject of a litigation styled Orbusneich v. Boston Scientific (Case No. 1:09-cv-10962 (D. Mass.)).
(9) 95/001,941 (electronically filed) – U.S. Patent No. 7,331,313 entitled CONTINUOUS STEAM GENERATOR WITH CIRCULATING ATMOSPHERIC FLUIDISED-BED COMBUSTION and owned by Alstom Technology. Filed March 16, 2012, by Foster Wheeler North America.
(10) 95/001,942 (electronically filed) – U.S. Plant Patent No. 17,637 entitled PLUM TREE NAMED ‘CONSTANZA’ and owned by Jose Domingo Godoy Huidobro. Filed March 16, 2012.
(11) 95/000,660 (paper filed) – U.S. Patent No. 7,711,857 entitled METHOD AND SYSTEM FOR DATA MULTIPLEXING and owned by Implicit. Filed March 2, 2012, by Juniper Networks. The ‘857 patent is currently the subject of four infringement actions.
The following ex parte requests were filed:
(1) 90/012,184 (electronically filed) – U.S. Patent No. 6,030,047 entitled CHILD VEHICLE SEAT WITH CHILD-RESTRAINT HARNESS ADJUSTMENT MECHANISM and owned by Cosco, Inc. Filed March 12, 2012.
(2) 90/012,185 (electronically filed) – U.S. Patent No. 8,008,804 entitled METHODS, SYSTEMS AND APPARATUS FOR REGULATING FREQUENCY OF GENERATED POWER USING FLYWHEEL ENERGY STORAGE SYSTEMS WITH VARYING LOAD AND/OR POWER GENERATION and owned by Beacon Power Corp. Filed March 12, 2012, by Temporal Power Ltd.
(3) 90/012,187 (electronically filed) – U.S. Patent No. 8,013,096 entitled PERFLUOROETHER MOIETY-CONTAINING POLYMER AND A SURFACE TREATING AGENT COMPRISING THE SAME and owned by Shin-Etsu Chemical. Filed March 12, 2012.
(4) 90/012,188 (electronically filed) – U.S. Patent No. 5,684,514 entitled APPARATUS AND METHOD FOR ASSEMBLING CONTENT ADDRESSABLE VIDEO and owned by Patent Harbor. Filed March 12, 2012, by Anchor Bay Entertainment. The ‘514 patent is currently the subject of ten infringement actions.
(5) 90/012,189 (electronically filed) – U.S. Patent No. 7,363,090 entitled BAND STOP FILTER EMPLOYING A CAPACITOR AND AN INDUCTOR TANK CIRCUIT TO ENHANCE MRI COMPATIBILITY OF ACTIVE IMPLANTABLE MEDICAL DEVICES and owned by Greatbatch, Ltd. Filed March 13, 2012, by Owner.
(6) 90/012,190 (electronically filed) – U.S. Patent No. 7,213,744 entitled REGULATED WIRE TRANSFER COMPLIANCE SYSTEMS AND METHODS and owned by The Western Union Company. Filed March 13, 2012.
(7) 90/012,191 (electronically filed) – U.S. Patent No. 5,423,728 entitled STATIONARY EXERCISE BICYCLE and owned by Mad Dogg Athletics. Filed March 14, 2012, by BH North America. The ‘728 patent is currently the subject of several litigations.
(8) 90/012,192 (electronically filed) – U.S. Patent No. 6,155,958 entitled STATIONARY EXERCISE BICYCLE HAVING A RIGID FRAME and owned by Mad Dogg Athletics. Filed March 14, 2012, by BH North America. The ‘958 patent is currently the subject of several litigations.
(9) 90/012,193 (electronically filed) – U.S. Patent No. 6,468,185 entitled STATIONARY EXERCISE BICYCLE and owned by Mad Dogg Athletics. Filed March 14, 2012, by BH North America. The ‘185 patent is currently the subject of several litigations.
(10) 90/012,194 (electronically filed) – U.S. Patent No. 6,881,178 entitled METHOD OF EXERCISING ON A STATIONARY EXERCISE BICYCLE and owned by Mad Dogg Athletics. Filed March 14, 2012, by BH North America. The ‘178 patent is currently the subject of several litigations.
(11) 90/012,195 (electronically filed) – U.S. Patent No. 7,455,627 entitled STATIONARY EXERCISE BICYCLE and owned by Mad Dogg Athletics. Filed March 14, 2012, by BH North America. The ‘627 patent is currently the subject of several litigations.
(12) 90/012,196 (electronically filed) – U.S. Patent No. 8,057,364 entitled STATIONARY EXERCISE BICYCLE and owned by Mad Dogg Athletics. Filed March 14, 2012, by BH North America. The ‘364 patent is currently the subject of several litigations.
(13) 90/012,198 (electronically filed) – U.S. Patent No. 7,149,625 entitled METHOD AND SYSTEM FOR DISTRIBUTED NAVIGATION AND AUTOMATED GUIDANCE and owned by WRE-HOL. Filed March 15, 2012.
(14) 90/012,199 (electronically filed) – U.S. Patent No. 6,296,022 entitled WOVEN FABRIC WITH MACHINE-READABLE CODE and owned by J&J Cash. Filed March 16, 2012.
(15) 90/012,200 (electronically filed) – U.S. Patent No. 6,223,190 entitled METHOD AND SYSTEM FOR PRODUCING AN INTERNET PAGE DESCRIPTION FILE ON A DIGITAL IMAGING DEVICE and owned by FlashPoint Technology. Filed March 16, 2012.
Reexamination Stays: What about Prejudice to Defendant if Stay is Denied?
| March 13, 2012
The case law on reexamination stays shows that there are two categories of trial judge: those who are attracted by the possibility of the reexamination simplifying issues for trial and who are therefore likely to grant stay motions, and those who are especially concerned about the prejudice a stay might cause patent owner.
Magistrate Judge Douglas Arpert of the New Jersey District Court appears to fall within the former category, in view of his Order last Wednesday to stay Monosol RX v. Biodelivery Sciences Int’l (10-cv-5695) pending completion of PTO’s reexamination of the three patents-in-suit. Although the infringement case was in its early stages and the PTO granted the three reexamination requests, the patent owner vigorously argued that the parties were direct competitors and that it would be prejudiced by the stay. But Magistrate Judge Arpert was unconvinced, noting that “Plaintiff did not seek a preliminary injunction in this matter and [so] the Court declines to impose any restraints with respect to Defendants’ business activities at this time.”
Attacks on Medtronic & OrbusNeich Medical Device Patents among the Reexamination Requests Filed the Week of March 5, 2012
| March 12, 2012
Edwards Lifesciences requested reexamination of a Medtronic prosthetic valve patent last week (see inter partes Request No. (1)). The companies are involved in an infringement action in the Central District of California regarding ‘281 patent. And Boston Scientific requested reexamination of an OrbusNeich helical stent patent (see inter partes Request No. (9)). OrbusNeich has sued Boston Scientific in the Eastern District of Virginia for infringement of that patent, as well as trade secret misappropriation.
The winner for filing the most requests last week, however, was Verizon that sought reexamination of seven Realtime Data patent claiming data storage and retrieval systems (see inter partes Request Nos. (2) to (8)). The parties are involved in litigation in the Eastern District of Texas.
