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
Attack on Lam Research Plasma Processing Patent, Among the Reexamination Requests Filed Week of November 28, 2011
| December 5, 2011
Advanced Micro-Fabrication Equipment has requested reexamination of Lam Research’s U.S. Patent No. 5,998,932 related to plasma processing equipment (see ex parte Request No. (6)). Lam has sued AMFE for infringement of the Taiwanese counter-part patent and might soon sue in the United States for infringement of the ‘932 patent.
Reexamination was also requested for a Xerox patent (see inter partes Request No. (5)), but the identity of the requester is not shown in the PTO records.
Judge Randa Refuses to Lift Reexamination Stay despite Patentee’s Success (so far) with Examiner
| December 1, 2011
Courts cite 35 U.S.C. § 316(a) for the proposition that a reexamination is “complete” only when the PTO issues its reexamination certificate, canceling, confirming, amending original claims, and/or adding new claims. It is common for a patentee to cite § 316(a) for the proposition that the court should not consider developments in a reexamination until the proceeding is complete, i.e., until the PTO issues its certificate. On Tuesday, however, in Generac Power Systems v. Kohler, it was accused infringer who invoked § 316(a), in this case to maintain a reexamination stay despite a decision by the reexamination examiner in favor of patentability.
This past July, Judge Rudolph Randa of the Eastern District of Wisconsin stayed the infringement action pending resolution of the reexamination of the patent-in-suit, U.S. Patent No. 7,230,345 (related to a specific method of operating engine-driven electrical generators). In September, the reexamination examiner issued an Action Closing Prosecution, indicating that the patentability of all claims had been confirmed. Armed with this victory at the PTO, the patentee asked Judge Randa to lift the stay and allow the infringement action to proceed.
Microsoft, Sharp & Mitsubishi Electric Requests of their Own Patents, among Reexamination Requests Filed Week of November 21, 2011
| November 28, 2011
It is somewhat unusual these days for a patent owner to seek reexamination of its own patents. Yet last week, three sophisticated patent owners – Microsoft, Sharp and Mitsubishi Electric – did just that (see ex parte Request Nos. (3), (4) & (7)). A patent owner might request reexamination of its own patent where a prospective licensee has asserted that certain prior art undermines the validity of the patent and the patent owner is confident that it can successfully test that assertion of prior art at the PTO.
Taiwan Semiconductor has requested reexamination of Tela Innovations’ U.S. Patent No. 7,441,211 for digital circuit optimization (see inter partes Request No. (1)). In 2009 the companies announced “a strategic partnership to develop co-optimized design solutions using Tela’s innovative and patented lithography-optimized design technology and TSMC’s derivative processes.” There does not appear, however, to be any litigation between the two.
Purpose of Inter Partes Review and Post-Grant Review to Differ from that of Inter Partes Reexamination
| November 22, 2011
Accused infringers, hoping to challenge a patent, find current inter partes reexamination attractive, in part, because there is no statutory presumption of validity. And yet the threshold requirement of a “substantial new question of patentability” contains an irrebuttable presumption that all issues expressly addressed by the examiner in the original prosecution were correctly resolved. Inter partes reexamination is not granted under the current statute merely because the original examiner was wrong. Even if an accused infringer believes that the examiner made an obvious mistake, there must still be a new issue to justify inter partes reexamination.
All that changes with the new inter partes review and post-grant review procedures. The former is granted where there is “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The latter, where the allegations in the petition, if unrebutted, “would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable” or where “the petition raises a novel or unsettled legal question that is important to other patents or patent applications.” There is no need for “newness” in the threshold requirements for the new procedures.
