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
Judge Koeltl Grants Summary Judgment of Intervening Rights
| March 6, 2012
The patent infringement case brought by Dey and Mylan against Sepracor (now Sunovian) came to an abrupt end last week when Judge John Koeltl of the Southern District of New York granted two summary judgments in favor of the accused infringer. Sepracor was accused of infringing two families of patents – the claims were for compositions and methods for treating certain pulmonary diseases with the drug formoterol. First, Judge Koeltl granted summary judgment that the claims of one family of patents were invalid because of an anticipatory public use. What will interest reexamination practitioners, however, is the Judge’s grant of summary judgment that the accused infringers are entitled to intervening rights with respect to the second family of patents.
After commencement of the infringement action, Sepracor requested reexamination of the patents in the second family. Reexamination was granted, the claims rejected, but then confirmed in light of the patentees’ arguments and the following representative claim amendment:
A pharmaceutical composition, comprising formoterol, or a derivative thereof, in a pharmacologically suitable fluid [aqueous solution], wherein the composition is stable during long term storage, the fluid comprises water, and the composition is formulated at a concentration [effective for bronchodilation by nebulization, and the composition is] suitable for direct administration to a subject in need thereof [without propellant and without dilution of the composition prior to administration].
Attack on MobileMedia Ideas Audio Delivery Data Patent, among the Reexamination Requests Filed Week of February 27, 2012
| March 5, 2012
Last Friday reexamination was requested of a MobileMedia Ideas audio data delivery patent, likely by HTC (see ex parte Request No. (14)). In 2010 MobileMedia sued HTC in the Eastern District of Texas for infringement of that patent, as well as 10 other related data delivery patents.
Bosch Security Systems has sought reexamination of four video surveillance patents owned by ObjectVideo (see inter partes Request Nos. (9), (10), (11), (12)). An infringement action is pending in the Eastern District of Virginia between the companies, regarding these four patents.
And three new requests against medical device patents (see ex parte Request Nos. (6), (7) & (8)), continuing a recent trend.
Inter Partes Reexaminations Moving More Quickly, at least most of the Time
| February 28, 2012
There is a good deal of anecdotal evidence that the PTO is handling inter partes reexaminations very expeditiously, some might even say precipitously. Yet, from time-to-time, an outlier case arises casting doubt on the capacity of the reexamination system to substitute for the District Courts as an efficient arbiter of prior art validity issues.
Such a case is Tempo Lighting v. Tivoli (95/000,067) where, today, the PTO Board of Appeals confirmed the rejection of two of the claims in reexamination, but reversed the rejection of the remaining 11 claims. The PTO docket does not show an inordinate amount of activity caused by the patent owner or the requester (though there was a brief period of abandonment). The request was filed at the end of 2004, followed by multiple non-final rejections, an action closing prosecution in May 2009, a right of appeal notice in June 2010, the patent owner’s appeal brief in September 2010, and an oral hearing at the Board this past November.
How is Interference Practice Doing? Alive & Well, Thank You.
| February 27, 2012
Where should we look for guidance in following the recently proposed rules for the various post-issuance proceedings created by the AIA? A prime source for such guidance will be rich lore of past interference practice, as suggested by the many parallels between the proposed AIA rules and existing interference rules. The PTO suggested as much when it identified interferences as “contested cases” in its comments on the proposed rules.
Interference cases themselves – not just the case law they have generated over the years – will also continue, at least in some instances, to be an effective means for challenging patents for years to come, despite our recent adoption of a first to file system. In particular, interference is often a recommended approach for a party to assert that it has been improperly omitted as an inventor from an issued patent.
