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
Retailers Escalate Fight with Round Rock Research on RFID Patents
| February 2, 2012
This past December Round Rock Research launched a barrage of complaints against a who’s-who of American retailers — American Apparel, Dole Food, Fruit of the Loom, Hanesbrands, J.C. Penney, Macy’s, PepsiCo., The Gap and VF Corporation – accusing them of using ultra high frequency RFID tags and readers that infringe five patents: U.S. Patent Nos. 5,500,650, 5,627,544, 5,974,078, 6,459,726 and Re 41,531.
On Tuesday, reexamination requests were filed anonymously against the ‘650, ‘544, ‘726 and ‘531 patents, undoubtedly by one or more of the accused retailers. A request had already been filed and granted against the ‘078 patent.
The case will be interesting to follow if only for ubiquity of the accused tags and readers – J.C. Penney alone is believed to use them in 1,100 stores.
Will the Marine Polymer Expansion of Intervening Rights be Reversed?
| January 30, 2012
A few days ago the CAFC issued a notice that it would review, en banc, last September’s 2-1 panel decision in Marine Polymer v. HemCon, specifically the holding that absolute intervening rights arise where a patentee narrowly construes its claims in reexamination, thereby “effectively amending” those claims, even without an actual amendment of the claims. See 35 U.S.C. §§ 252 and 307(b). Such intervening rights, of course, eliminate all damages for the period before the issuance of the reexamination certificate concluding the reexamination. Until Marine Polymer, only a single trial had found intervening rights derived from argument alone.
There was, however, a dissent by Judge Alan Lourie who did not accept the “amendment in effect” argument. For him, there is “threshold requirement in §§ 307(b) and 316(b) that intervening rights apply only to amended or new claims.” Since that threshold requirement was not satisfied, there could be no intervening rights, Judge Lourie argued.
eBay Attack on Purple Leaf Electronic Transaction Patent among the Reexamination Requests filed Week of January 23, 2012
| January 30, 2012
Last week eBay replied to an infringement action filed against it in the Eastern District of Texas by Purple Leaf by seeking reexamination of the patent-in-suit (see inter partes Request No. (2)). The Purple Leaf patent claims a process for conducting electronic transactions and making payments over the Internet.
The winner for the most reexamination requests filed was Nanosolar that challenged three Solannex patents related to photovoltaic cells (see ex parte Request Nos. (5), (6) & (7)). The companies are in litigation over these patents in the Northern District of California.
Ex parte Request No. (4), involving U.S. Patent No. 5,337,753 owned by Biosig Instruments and claiming a heart rate monitor, is interesting in that it expressly calls for the PTO to “clarify the record” regarding the meaning of the claims. The Request notes the ‘753 patent has been through an earlier reexamination, but that the trial judge in a pending infringement action has refused to rely on the patentee’s assertions in that earlier reexamination because they are “ambiguous.”
Google Victorious Over Function Media Internet Advertising System Patents
| January 27, 2012
The PTO Board of Appeals handed Google an important victory today in its battle with Function Media over three Internet advertising patents – U.S. Patent Nos. 6,829,587, 7,240,025 and 7,249,059. Function Media sued Google and Yahoo! in the Eastern District of Texas in 2007, asserting that these patents were infringed on by “Google’s AdSense and AdWords technologies, Google Print Ads, and other products and services related to internet and print advertising.” Google replied to the suit in July 2008 by requesting inter partes reexamination of the patents.
This past September, after a jury trial, Magistrate Judge Everingham issued a judgment that two of the patents were not infringed and that all but four of the claims of the patents were invalid over the prior art. The judgment is now on appeal to the CAFC. (The third Function Media patent appears to have been dropped from the Texas case).
And today the Board compounded Google’s success in Texas by affirming prior art rejections of all the Function Media claims in reexamination.
