New Inter Partes Reexamination Rules
Darrin Auito | September 22, 2011
The USPTO recently announced new rules governing the provisions of the America Invents Act (“AIA”) relating to inter partes reexamination that went into effect on September 16, 2011.
Inter partes reexamination requests submitted:
- Prior to September 16, 2011: The SNQ standard is applicable in determining whether the request for inter partes reexamination will be granted. If reexamination is ordered based on the SNQ standard, then the SNQ standard will apply throughout the reexamination proceeding.
- On or after September 16, 2011, but before September 16, 2012: The “reasonable likelihood” standard (i.e., a reasonable likelihood that the requester will prevail with respect to at least one of the claims challenged in the request) is applicable in determining whether the request for inter partes reexamination will be granted. If reexamination is ordered based on the “reasonable likelihood” standard, then this standard will apply throughout the reexamination proceeding.
- On or after September 16, 2012: The Office cannot grant, or even accord a filing date to, the request, because the inter partes reexamination provisions of 35 U.S.C. chapter 31 are not available for any request for inter partes reexamination submitted on or after September 16, 2012. The Office will only accept petitions to conduct inter partes review. (*** The Office will implement the new inter partes review proceedings in a separate rule making.)
Attacks on Two LSI Logic Video Decoder Patents, among Reexamination Requests filed Week of April 25, 2011
Scott Daniels | May 2, 2011
LSI Logic is pursuing an infringement suit against Vizio in the Central District of California (see ex parte Request Nos. (4) & (5)). On Thursday, reexamination was requested for two of the patents in that suit, in all likelihood requested by Vizio.
Also, Micro-Probe requested reexamination of another FormFactor patent – as previously reported, the two companies are in litigation in the Northern District of California (see inter partes Request No (3)). And Funai requested reexamination of one of the Freescale computer patents in the case between the two companies in the Western District of Texas (see ex parte Request No (7)).
Micro-Probe Attack on FormFactor Electrical Connection Patent, among Reexamination Requests Filed Week of April 18, 2011
Scott Daniels | April 25, 2011
Micro-Probe has requested reexamination of FormFactor’s U.S. Patent No. 7,225,538 that claims methods for making electrical connections in semiconductor packaging assemblies (see inter partes Request No. (11)). FormFactor has sued Micro-Probe in the Northern District of California for infringement of the ‘538 patent, as well as for infringement of six other patents and for a series of trade secret-type violations. The PTO has ordered reexamination for five of those FormFactor patents, and Micro-Probe has moved Judge Phyllis Hamilton for a partial stay of the District Court case. The ‘538 was the subject of an ITC investigation in 2009 that ended in a determination of no infringement by the importers.
The clear winner last week for the number of requests filed was Vesdia that sought reexamination of four TuitionFund patents related to merchant rebates and college tuition (see inter partes Request Nos. (1), (3), (5) & (6)). The two companies are in litigation in Tennessee over those patents.
After requesting reexamination for a Hisamitsu transdermal adhesive patent three weeks ago, Kowa has now requested reexamination of a second Hisamitsu patent, this one claiming transdermal patches (see inter partes Request No. (2)).
Finally, reexamination was requested of two Sorenson patents that claim systems for exterminating pests (see ex parte Request Nos. (4) & (6)).
Reexamination Request against MobileMedia Smart-Phone Patent, among those Filed Week of April 4, 2011
Scott Daniels | April 11, 2011
An ex parte request has been filed – probably by HTC – against one of MobileMedia Ideas’ 11 smart-phone patents that are the subject of its pending infringement litigation against HTC (see ex parte Request No. (2) for U.S. Patent No. 5,915,239). MobileMedia obtained the ‘239 patent from Nokia Capital. Reexamination was ordered last month (90/011,436) for one of the other MobileMedia patents-in-suit, U.S. Patent No. 6,253,075; reexaminations against the other nine MobileMedia patents might be pending as well. MobileMedia has two parallel smart-phone infringement law suits pending, one against Apple, and one against RIM.
On the heels of its earlier requests against three XRPT patents, eBay requested reexamination of two additional XPRT patents (see inter partes Request Nos. (2) & (3)).
Finally, Beckman Coulter requested reexamination of a GeneOhm Sciences Canada patent claiming a method for detection of certain methicillin-resistant bacteria (see inter partes Request No. (5)).
EchoStar Challenge to Northpoint Set-Top Box Patent among 24 Reexamination Requests Filed Week of March 21, 2011
Scott Daniels | March 28, 2011
Friday afternoon EchoStar requested reexamination of Northpoint’s U.S. Patent No. 6,208,636 which claims a TV set-top box for processing multiple datastreams.(see ex parte Request No. (19)). Northpoint is suing EchoStar, DirecTV and Dish Network in the Western District of Texas for infringement of the ‘636 patent. According to Northpoint’s complaint, Dish Network has used the claimed box for 14.1 million direct broadcast satellite subscriptions as of December 2009.
Reexamination was requested against AU Optronics’ U.S. Patent No. 7,125,157 (see inter partes Request No. (4)), probably by Sharp, though the accessible PTO records are not clear. AU Optronics sued Sharp earlier this month in Delaware for infringement of the ‘157 patent, as well as five other patents.
Formax and Prosure requested reexamination of four Patriot Universal Holdings patents related to machines for “molding food patties,” presumably hamburgers (see ex parte Request Nos. (6), (7), (8) & (9) – the two companies had been sued by Patriot in Wisconsin for infringement of the patents. The same day Formax also filed in Wisconsin its own complaint for patent infringement against two additional companies.
Auburn v. IBM, among the Reexamination Requests the Week of March 14, 2011
Scott Daniels | March 21, 2011
Auburn v. IBM is not a “sweet-sixteen” match-up. It’s an infringement litigation pending in the District Court in Alabama since 2009. IBM has now requested reexamination of Auburn’s patents – U.S. Patent Nos. 7,194,366 & 7,409,306, both claiming ways of estimating the reliability of integrated circuits and thereby reducing the cost of making chips (see inter partes Request Nos. (2) & (3)).
Xilinx continued its assault on Intellectual Ventures’ patents – this week requesting reexamination of U.S. Patent No. 7,080,301 (see inter partes Request No. (7)), and perhaps U.S. Patent Nos. 6,065,880 and 6,687,865 (see ex parte Request Nos. (16) & (18)). The PTO records are, as yet, unclear regarding the requester of the latter two requests, but it appears to have been Xilinx.
Apple, the clear leader in recent times in the number of requests filed, continued its practice of seeking reexamination of each patent-in-suit whenever it is sued (see ex parte Request Nos. (10), (11) & (13)). Other noteworthy requests include those filed against Lincoln Global and 3M patents (see inter partes Request Nos. (1) & (11) and ex parte Request No.(1)).
Complying with the Duty of Disclosure in Reexamination
Scott Daniels | March 14, 2011
In a case with parallel reexamination and District Court proceedings, a patentee sometimes faces annoying problems in attempting to comply simultaneously with the PTO’s duty of disclosure and the Court’s protective order. For instance, counsel for the patentee may receive documents from the accused infringer that contain confidential business information – for instance expert reports on infringement – and that also contain information that would be material to the reexamination. Last week in Sloan Valve v. Zuru, 2011 U.S. Dist. LEXIS 23269 (N.D. Ill.), Judge Amy J. St. Eve modified her protective order and in doing so, provided a nice roadmap for patentees in such parallel proceedings.
In December Judge St. Eve stayed the patent infringement pending completion of the PTO’s reexamination of the patent-in-suit. Shortly thereafter, the patentee filed a motion to reopen the case for the limited purpose of amending the protective order to allow submission of material information to the PTO. The patentee explained that the PTO’s duty of disclosure in reexamination proceedings requires submission of all information that may be material to the patentability of the patent. The protective order, however, did not “expressly permit submission of confidential information to the PTO.” Because of these conflicting obligations, the patentee asked that the protective order be changed to recite an express exception that the disclosing party must submit “confidential” or “highly confidential” information using the specific procedure outlined in MPEP 724.02.
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Toshiba Attack on Two Rovi V-Chip Patents among Reexamination Requests filed Week of March 7, 2011
Scott Daniels | March 14, 2011
Late last year, Rovi sued Toshiba, alleging that it infringes two patents covering V-Chip technology, U.S. Patent Nos. 6,305,016 and 6,701,523. Toshiba has now replied to that allegation by requesting reexamination of both Rovi patents (see ex parte Request Nos. (16) & (17)).
The winner for the most reexaminations requested was TiVo who filed requests against seven Microsoft TV programming patents (see ex parte Request Nos. (3) to (9)).
Finally, Xilinx’s assault on Intellectual Venture patents continued last week with requests filed against IV’s U.S. Patent Nos. 6,993,669 and 6,408,415 (see inter partes Request No. (3) & ex parte Request No. (31)).
The following inter partes requests were filed:
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Star Scientific Tobacco Curing Patent Update
Scott Daniels | March 14, 2011
This past Thursday the PTO issued Notices of Intent to Issue Ex Parte Reexamination Certificate (here, here) for Star Scientific’s U.S. Patent Nos. 6,202,649 and 6,425,401 claiming processes for curing tobacco so as to avoid the formation of harmful nitrosamines. The ‘649 and ‘401 are the subject of a prolonged infringement battle between Star Scientific and RJ Reynolds Tobacco, which is now on its second trip to the CAFC. The reexamination certificates themselves are likely to issue sometime in June.
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Challenges to Two More Intellectual Venture Patents, among the Reexamination Requests Filed Week of February 21, 2011
Scott Daniels | February 28, 2011
Last week Xilinx requested reexamination of one of the five patents that Intellectual Ventures has accused Xilinx and three other companies of infringing (here). The same lawyer who filed that request for Xilinx has now requested reexamination of a second Intellectual Ventures patent – U.S. Patent No. 5,687,325 – from the same case, as well of a third Intellectual Ventures patent not in the case, U.S. Patent No. 6,252,527 (see ex parte Request Nos. (8) & (9)). Since the requests are for ex parte, not inter partes, reexamination, the identity of the real party in interest need not be disclosed.
In August EVM Systems sued Cordis, Boston Scientific and Abbott for infringement of two patents related to stents having a “slotted memory metal tube,” U.S. Patent Nos. 6,780,175 and 7,037,321. Last week, Cordis requested reexamination of the ‘175 patent and Abbott requested reexamination of the ‘321 patent (see inter partes reexamination Request No. (5) and ex parte Request No. (15)). Although inter partes reexamination was possible for both patents, lawyers for Abbott chose ex parte reexamination. The choice between ex parte and inter partes reexamination is sometimes complex and one addressed in a recent post (here).
The leader, however, in the number of requests filed last week was Airbus Americas that sought reexamination of four Firepass patents related to fire suppression in certain structures, for instance in computers. Firepass has accused Airbus of infringing those patents.
