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
Challenge to Round Rock RFID Patent, among the Reexamination Requests Filed Week of January 16, 2012
| January 23, 2012
In September an unidentified party requested reexamination of four RFID patents owned by Round Rock Research. Last Tuesday, reexamination was requested of another Round Rock RFID patent, Reissue 41,562, again by an anonymous party (see ex parte Request No. (1)).
Traditionally, reexamination has been requested of a substantial number electronics and Internet patents, but it is much less common for pharmaceutical and medical delivery patents. In recent weeks, though, that pattern seems to be changing, with more reexamination requests directed to pharmaceutical and medical delivery patents. That trend continued last week when reexamination was requested for two patents owned by Monosol claiming film to be used in drug delivery systems (see ex parte Request Nos. (3) & (4)). Monosol has sued BioDelivery in New Jersey for infringement of the patents.
Florida Magistrate Recommends Stay of Infringement Judgment Pending Reexamination
| January 18, 2012
Stay of infringement actions pending completion of a reexamination, even after trial, continues to be a possibility, at least in some jurisdictions. In a decision that might be unthinkable in other courts, Magistrate Judge David Baker of the Middle District of Florida recommended a stay last Thursday in Peach State Labs v. Environmental Mfg. Sols. (EMS), 6:09-cv-395.
The patentee Peach State had alleged that EMS infringed its patent for calcium carbonate removal. The trial judge granted summary judgment that the EMS had failed to show that the patent was invalid, and at trial last April the jury issued a verdict that the patent was willfully infringed and awarded enhanced damages to Peach State. The trial judge later ruled that EMS had engaged in litigation misconduct and issued a permanent injunction against its further infringement of the patent.
HTC Attack on FlashPoint Image Capture Patent among the Reexamination Requests filed Week of January 9, 2012
| January 17, 2012
HTC has requested reexamination of FlashPoint Technology’s U.S. Patent No. 6,278,447 for video interface system (see ex parte Request No. (9)). The ‘447 patent has survived two earlier ex parte reexaminations without cancelation or amendment of claims.
Reexamination was requested of another MobileMedia Ideas patent for data storage, U.S. Patent No. 5,977,887 (see ex parte Request No. (2)). The PTO records do not indicate the identity of the requester, but it might be HTC.
CAFC Denies Petition for Mandamus to Stay Infringement Case
| January 13, 2012
Trial judges uniformly apply the same standard to decide whether to stay an infringement action pending completion of a reexamination of the patent-in-suit. And yet, the decisions of individual judges vary enormously: judges for whom potential simplification is appealing tend to grant stays, whereas judges more concerned with potential prejudice to the patentee tend to deny them. The main impediment to more uniform treatment of stay motions is the difficulty that a losing party faces in obtaining review by the CAFC of the grant or denial. That difficulty was illustrated by Judge Linn’s denial of a mandamus petition in In re SDI Technologies.
There, Bose sued five companies – including Memorex – for infringing a patent related to sound reproduction systems. In November 2009, one of the defendants requested reexamination of Bose’s patent. After reexamination was granted, the initial trial judge stayed the case “as long as [the] PTO proceedings were not taking too long.” Bose later asked that the stay be lifted in view of the length of the reexamination, but the second judge in the case decided to continue the stay “until resolution of summary judgment motions based at least in part on the prior art before the PTO in the reexamination.” The judge eventually denied the summary judgment motions and refused to continue the stay.
