Featured Posts
- 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 Blog
- IPWatchdog
- Patent Docs
- Patently-O
- PLI Patent Law Practice Center
- Think IP Strategy
- US Patent Post-Grant Opposition
Recent Requests
- Kyocera Challenge to ADC Personal Communicator Patent among the Reexamination Requests Filed Week of May 7, 2012
- More...
PTO Statistics
Did Google Request Reexamination of Lodsys Patents?
Scott Daniels | August 17, 2011
We’ve seen lots of reports in the media that Google finally took action last Friday against Lodsys – specifically, Reexamination Requests against two of the four patents that are the subject of Lodsys’ infringement actions against numerous small developers of Android® apps. “We’ve asked the U.S. Patent Office to re-examine two Lodsys patents that we believe should never have been issued,” Google senior vice president and general counsel Kent Walker is reported to have told Wired.com, explaining that “[d]evelopers play a critical part in the Android ecosystem and Google will continue to support them.”
What we have not seen, however, are Google’s Requests. So far there is no evidence that they were actually filed. Of course, when they do surface, we will report our first impressions.
Also, one wonders about the other two Lodsys patents, given Google’s concern for the Android® app developers.
Incidentally, the best reporting and analysis of Lodsys’ case against the Android® developers is by our friend Florian Mueller at FOSS Patent Blog.
Two Updates
Scott Daniels | August 8, 2011
1. Google Attacks Oracle ‘720 Patent
As Oracle’s action in the Northern District of California for infringement by Google of seven Java platform patents continues apace, the reexamination at the PTO of those patents grinds on as well. Oracle’s U.S. Patent No. 7,426,720, for instance, stands rejected as being invalid over the prior art. Oracle disputed that rejection in a paper filed in early July, and last Thursday, Google commented on Oracle’s filing.
Essentially, Google asserts (1) that the ‘720 patent claims were originally allowed as a result of Oracle’s adding the limitation of copy-on-write to the claims after a final rejection, and that Oracle relied on this copy-on-write limitation to distinguish the claims from the prior art of record, (2) that the copy-on-write technology central to alleged novelty of the ‘720 patent was present in most Unix operating systems as early as 1994, and was widely-known in the art at least as early as 1988, and (3) that Oracle’s filing in July admits that the Bach reference satisfies the copy-on-write limitation.
As always, it is difficult for an outsider to judge how a reexamination is proceeding. Still, Google appears to be doing well, at least with respect to the ‘720 patent.
Oracle v. Google Android® Update
Scott Daniels | June 30, 2011
Toward the end of May, we reported the status of Oracle’s patent infringement action against Google and its Android®, involving seven Java platform patents and a series of related copyrights. We also reported the reexaminations initiated by Google against each of Oracle’s patents. Essentially, we advised that Judge William Alsup was concerned about the feasibility of an October trial involving the number of patent claims asserted by Oracle.
Yesterday, the PTO issued a non-final rejection of Oracle’s U.S. Patent No. 6,125,447 (90/011,491). The examiner found that all 24 claims of the ‘447 patent are anticipated by either of two prior art references. Oracle may now traverse the rejection, and if the PTO maintains the rejection, Oracle may appeal it.
Rambus Wins Limited Exclusion Order at ITC against NVIDIA, despite Pending Reexaminations
Scott Daniels | August 16, 2010
Traditionally, District Court judges have issued permanent injunctions to stop infringement of valid patents, regardless of any pending reexamination of the patent in question. Only if the rejection of the patent claims in reexamination is “final,” would the courts refuse to enjoin the accused infringer. A few judges – notably Judge James Cohn of the Southern District of Florida and Judge Sue Robinson of Delaware – have recently shown a willingness to defer a decision on injunctive relief even where the rejection of the patent in reexamination is not final.
The Rambus/NVIDIA investigation raises the question of the extent to which the ITC is willing to order relief on the basis of patents that are in reexamination at the PTO. Unfortunately for NVIDIA, its argument to the ITC that it stay relief against NVIDIA was weak because its attack on the Rambus patents by reexamination has been “an incomplete success” (to borrow a phrase from President Carter).
That weakness may account, in part, for NVIDIA’s agreeing at the end of last week to a license to the Rambus patents, effectively concluding the dispute between the parties. Still, the ITC’s analysis in the Rambus/NVIDIA investigation remains of great interest to the IP community, as it suggests that the ITC will be extremely reluctant to withhold relief against infringing imports on the basis of an uncompleted reexamination.
Read More/続きを読む
最初が肝心：不備のない再審査請求書を作成するために
Darrin Auito and Yoshiya Nakamura | March 1, 2010
弊事務所は、過去数年間に請求された多くの再審査請求事件をレビューしてきましたが、かなりの割合で請求書が、何らかの記載不備を理由にUSPTOに受理（grant）されなかったことが分かりました。
このような問題を防ぐとともに、PTOにより請求が拒絶（denied)される事態を避けるために、弊事務所では、PTOルールに基づく再審査請求書の要件のチェックリストと、不備のない再審査請求書を提出するための助けとなる実践的なチェックリストを用意しました。以下では、その基本的な部分を紹介しましょう。
Read More/続きを読む
That’s My Patent You’re Reexamining…
Scott Daniels | November 6, 2009
The number of ex parte and inter partes reexaminations has climbed in recent years. But whose patents are being reexamined?
Starting with the first Official Gazette in January of this year, and running through November 3, we counted the number of patents for each company, with the following results:
Read More/続きを読む
“Why Wait for Oppositions?” by Scott Daniels, 47 IDEA 343 (Law Review of Franklin Pierce Law School)
Scott Daniels | January 1, 2009
Copyright (c) 2007 PTC Research Foundation of Franklin Pierce Law Center
IDEA: The Intellectual Property Law Review
2007
47 IDEA 343
LENGTH: 6690 words
ARTICLE: WHY WAIT FOR OPPOSITIONS?
NAME: SCOTT M. DANIELS AND KATE ADDISON *
BIO:
* Mr. Daniels is a partner at Westerman, Hattori, Daniels & Adrian in Washington, D.C; J.D., Cornell Univ.; B.A., Carleton College. Ms. Addison is an associate at the same firm; J.D., William & Mary School of Law; B.S., Univ. of Michigan. Westerman, Hattori, Daniels & Adrian ((c) 2006). This article contains the personal opinions of the authors, which are not to be attributed to the authors’ law firm or its clients.
Read More/続きを読む
The Basics
Scott Daniels | January 1, 2009
Reexaminations
Some law firms are still reluctant to pursue a litigation strategy which includes reexamination requests. The Reexamination Group within our firm has seen from its own experience over the years, however, that reexaminations are often effective in dealing with competitors’ patents, even very strong patents. This belief is based on a familiar list of advantages that reexamination offers over litigation.
Read More/続きを読む
