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
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Attacking Patents Already Adjudicated to be Valid
| December 13, 2011
Readers might be interested in reading our thoughts on last Friday’s Construction Equipment case. See our story posted by our good friend Gene Quinn on IPWatchdog.
http://ipwatchdog.com/2011/12/12/cafc-pto-power-to-reexamine-already-adjudicated-patents/id=21189/
Sara Lee’s Intervening Rights Affirmed
| December 12, 2011
Last year Judge Susan Cox in Yoon Ja Kim v. The Earthgrains Company (aka Sara Lee) Intervening Rights Order, 2010 WL 62520, at *4-*5 granted summary judgment that the accused infringer, Sara Lee, was entitled to intervening rights under 35 U.S.C. §§ 252 & 307(b). Judge Cox found that the patentee had “substantively changed the scope” of its claims in reexamination when it replaced the transition phrase “consisting essentially of” with “consisting of.” The claim scope was also narrowed when the limitation “food acid” was changed to those food acids that are “present in an effective amount that slows down oxidation of ascorbic acid to dehydroascorbic acid during a manufacturing process of yeast-leavened products.” The Judge therefore concluded that the patentee was not entitled to damages for any acts of alleged infringement occurring before the issue date of the reexamination certificate.
On Friday the CAFC affirmed the summary judgment in favor of Sara Lee. A patentee of a reexamined patent is entitled to infringement damages for the period between the date of issuance of the original claims and the date of issuance of the reexamined claims only if the reexamined claims are “identical” to, i.e., “without substantive change” from, the original claims. If the patentee makes substantive changes to the original claims, the patentee is entitled to infringement damages only for the period following the issuance of the reexamination certificate. It is not relevant whether the claims were narrowed or broadened or whether the accused product is covered by the new claims.
LG Attack on Whirlpool Refrigerator Patent, among the Reexamination Requests Filed Week of December 5, 2011
| December 12, 2011
LG has requested reexamination of Whirlpool patent for icemakers (see inter partes Request No. 3). The Whirlpool patent is already the subject of a declaratory judgment action in Delaware, also filed by LG. The two companies have been involved in a series of disputes over refrigerator patents.
Hitachi Koki has requested reexamination of seven Milwaukee Electronic Tool patents for lithium battery packs for hand-tools (see inter partes Request Nos. (8) to (10) and ex parte Request Nos. (5) to (8)). Milwaukee has sued Hitachi in the Eastern District of Wisconsin for infringing the patents
Reexamination was also requested for two Ronald Katz patents for a telephonic lottery (see ex parte Request Nos. (3) & (4). Katz patents have been the subject of quite a number of reexaminations over the years.
Walker Digital Resorts to ITC to Work around Reexamination
| December 9, 2011
In April Walker Digital (of Priceline-Jay Walker fame) sued LG, Samsung, Sharp, Sony, Toshiba and a series of other makers of Blu-ray disc players in Delaware for infringement of U.S. Patent No. 6,263,505. In June an anonymous third-party requested reexamination of five of the 43 ‘505 patent claims, and in September Sony requested reexamination of the remaining 38 claims. Defendants then moved to stay the Delaware infringement action pending completion of the reexaminations.
In the meantime, the PTO has moved expeditiously with the reexaminations. It granted the first reexamination and then rejected all 43 claims as being either anticipated or made obvious by the cited prior art, but it denied Sony’s request for failing to raise any substantial new question of patentability not already raised in the first reexamination. The rejection relies, essentially, on a single prior art reference, yet it is quite detailed and might be difficult to overcome. The apparent strength of the rejection, plus the speed with which the PTO is moving in the reexamination, mean that there is a strong possibility that they will grant Defendants’ stay motion. A stay would mean that the validity issue would be decided by the PTO, rather than by the District Court, to the obvious advantage of Defendants.
