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
Xilinx Attack on Intellectual Ventures Patent, among Reexamination Requests filed Week of February 14, 2011
Darrin Auito | February 21, 2011
Intellectual Ventures shook up the patent world in December when it filed three separate infringement suits against a series of large electronics companies. In one of the cases, Intellectual Ventures accused Altera, Microsemi and Lattice Semiconductor of infringing four patents programmable logic devices. On Tuesday of last week, Intellectual Ventures filed an amended complaint to add Xilinx as a defendant. Well, Xilinx is wasting no time, and on Friday it asked the Patent Office to reexamine one of the five patents-in-suit, U.S. Patent No. 6,272,646. Requests for reexamination of the other four patents may come soon (see inter partes Request No. (8)).
The other big news, which we reported in two posts last week, were requests by Google for reexamination of five of the seven Oracle patents-in-suit in the their case in California. (See inter partes Request No. (6) and ex parte Request Nos. (4) to (7)).
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Should I Request Ex Parte or Inter Partes Reexamination?
Scott Daniels | February 14, 2011
Each quarter, the PTO compiles its reexamination statistics showing the number of ex parte and inter partes reexamination requests filed, the number of cases where the claims are confirmed, amended or canceled, etc. In recent years, the total number of reexamination requests has trended slightly upwards, with inter partes requests accounting for 25 to 35 % of the total. In the last three months of 2010 (here, here), the inter partes request portion of the total was at the upper end of that range.
What interests us, though, is the fact that for those patents where the requestor has the option between ex parte and inter partes reexamination, ex parte reexamination is chosen at least 50% of the time. (Where the patent issues from an application filed before November 29, 1999, the requestor’s only choice is ex parte reexamination (see Cooper v. Dudas, 87 USPQ2d 1705, 1706 (Fed. Cir. 2008)). One might expect that inter partes reexamination, despite its hefty PTO filing fee of $8,800.00, would the overwhelming choice. Why is ex parte reexamination, with essentially no right for the requestor to participate, chosen so often?
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Facebook Challenges to Three “Human Relationships” Patents, among Reexamination Requests Filed Week of February 7, 2011
Scott Daniels | February 14, 2011
This being Valentine’s Day, we couldn’t help noticing the requests (see inter partes Request Nos. (1) to (3)) filed last week by Facebook against three patents owned by Mekiki Creates for computer systems for “registering human relationships.” Facebook and Mekiki are currently in a relationship in an infringement suit in the Northern District of California. Also look at inter partes Request No. (6) for a gem cutting apparatus patent.
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Virginia Patent Foundation’s Motion for Reconsideration Denied – Intervening Rights Still Absolve GE of Damages for Activities before Reexamination Certificate Issue Date
Darrin Auito | February 10, 2011
On Tuesday, Judge Moon denied Virginia Patent Foundation’s (“VPF”) Motion for Reconsideration of his decision dated November 9, 2010 in which he had granted partial summary judgment for General Electric (“GE”) based on intervening rights stemming from VPF’s amendment “in effect” of claim 1. The effect of a reexamined patent on alleged infringers during the period prior to issuance of the reexamination certificate is governed 35 U.S.C. § 307(b) that triggers 35 U.S.C. § 252.
Judge Moon decided in his original Opinion that this statute applies because Claim 1 was “amended in effect” as a result of the statements the patent owner made in reexamination, together with its cancellation of Claim 4, which altered the scope of Claim 1. See Opinion 43-44.
The Patent Foundation predictably took issue with Judge Moon’s interpretation of §307(b), arguing that the term “amended” in the statute requires explicit change of the wording of a claim in reexamination, and that §252 is not triggered by §307(b) because the wording of Claim 1 was never explicitly changed during the reexamination.
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Right of Appeal Notice in RIM Reexamination of Visto Patent
Scott Daniels | February 10, 2011
A Right of Appeal Notice (RAN) has issued in the inter partes reexamination of Visto’s U.S. Patent No. 7,363,349 which claims gateway servers and methods for real-time data retrieval. In the RAN, the examiner states that the amended claims are patentable over the prior art because of Visto’s amendment of each of the independent claims to recite a limitation from one of the dependent claims. The reexamination request had been filed by Research in Motion (RIM) who now has the option of appealing the examiner’s decision to the PTO Board.
Who won? The case demonstrates the uncertainty of “reexamination kill-rates.” Assigning success in a case to one side or the other, where claims have been amended, depends on the commercial realities. If the market for the claimed product is largely in the future, Visto is the winner as it emerges from reexamination (assuming that RIM does not pursue and win an appeal) with a patent enjoying an “enhanced presumption of validity.” On the other hand, if the market for the claimed product is largely in the past, RIM is the winner – Visto’s damages for infringement of its independent claims for the period prior to the PTO’s issuance of the reexamination certificate are eliminated by Visto’s claim amendments. That issuance date could be extended by a year or two if RIM appeals the examiner’s decision.
Visto had sued RIM for infringement of the ‘349 patent in 2008, but the case has been dismissed, apparently on the basis of a settlement agreement.
Acer & Microsoft Attacks on MedioStream Video Recording Patent among Reexamination Requests Filed Week of January 31, 2011
Scott Daniels | February 8, 2011
On January 7, 2011, Apple requested reexamination of MedioStream’s U.S. Patent No. 7,843,508 covering a way of recording video data directly onto disks. Now, both Acer and Microsoft have filed their own requests for reexamination of the ‘508 patent (inter partes Request Nos. (2) & (5)). Each of these new requestors has been accused by MedioStream of infringing the ‘508 patent. These requests continue a trend among the huge electronic companies, especially Apple, of using reexamination to reply to infringement allegations.
As an update to our posts of June 30 & November 9, 2010 and January 19, 2011 – regarding inter partes reexamination requests filed by Whirlpool against four LG refrigerator patents – Judge Garrett Brown, in a parallel infringement action between the parties in the District Court of New Jersey, has denied Whirlpool’s motion to stay the case pending completion of the reexamination proceedings. Judge Brown explained that inter partes reexaminations “could take more than five years if the parties fully exhaust their appeal rights” and that delay could cause LG irreparable loss because the parties are direct competitors: “[t]he goodwill lost during the reexamination proceedings could be difficult to measure and difficult to compensate fully with money damages after trial.”
The dispute we reported January 31, 2011, between Abbott Diabetes Care and DexCom, appears to have escalated last week (see ex parte Request Nos. (5) to (7)).
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Was Reexamination the Answer in Tokai v. Easton?
Scott Daniels | February 6, 2011
The CAFC’s 2-1 panel decision in Tokai v. Easton has caused quite a stir in the patent blogosphere. The majority opinion affirming a summary judgment that the three patents-in-suit were obvious over the prior art, plus Judge Newman’s vigorous dissent, have raised concerns that KSR may be applied too broadly by the CAFC, to the detriment of worthy patents and worthy patent owners whose success is vital to economic recovery.
These concerns are serious and deserve debate. But the question that interests us is whether the outcome would have been different if the obviousness issue had been determined in reexamination, rather than in the courts? Could the accused infringer have obtained the same result through reexamination? With 20-20 hindsight, plus a healthy amount of speculation, we conclude that it could have.
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DNA Patents Dominate Reexamination Requests Filed Week of January 24, 2011
Scott Daniels | February 2, 2011
In August, Helicos Biosciences sued Pacific Biosciences of California, Life Technologies and Illumina in Delaware for infringing four patents claiming methods for nucleotide sequencing. Pacific Biosciences has now replied by requesting reexamination of each of the four patents-in-suit (inter partes Request Nos. (2) to (5)).
Also, a request was filed for one of the Ronald Katz telephone patents (see ex parte Request No. (3)).
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RIM Attack on MobileMedia Image Data Compression Patent among Reexamination Requests Filed Week of January 17, 2011
Scott Daniels | January 27, 2011
Late last year, MobileMedia Ideas filed law suits against RIM and Hyundai asserting infringement of its U.S. Patent No. 7,349,012 for an apparatus for compressing image data. RIM has now requested reexamination of the ‘012 patent (ex parte Request No. (18)), and may now file a motion to stay its case with MobileMedia.
Another reexamination request of obvious commercial significance was filed by Boston Scientific against Cordis regarding U.S. Patent No. 5,922,021 for intravascular stents. (ex parte Request No. (2)). The parties are currently in litigation regarding the ‘021 patent. Requests were also filed against patents owned by Ronald Katz (ex parte Request No. (1)) and David Breed (ex parte Request Nos. 13 & 14)).
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PTO Director Initiates Reexamination against Gift Tax Patent in Week of January 10, 2011
Scott Daniels | January 19, 2011
In a very unusual step, the Director of the PTO has initiated a reexamination of U.S. Patent No. 6,567,790 claiming a method of estate planning (ex parte Request No. (17)). In its reexamination order, the PTO explained that Director initiates reexamination when it appears “that an examining procedure has not been followed which has resulted in the issuance of a claim in a patent that is prima facie unpatentable, and there is a compelling reason to order reexamination at the Director’s initiative.”
In this instance, the original examiner’s failure to consider a specific article “has created an extraordinary situation” requiring reexamination. According to the reexamination order, the article was not considered or discussed in the original prosecution, even though it disclosed the claimed feature noted by the original examiner as the reason for allowance. Whether such methods related to legal and tax matters should be eligible for patent protection has been hotly disputed.
Whirlpool requested reexamination of an LG refrigerator patent (inter partes Request No. (2)). The two companies have been in litigation regarding refrigerator patents in the past. A request was filed against a Nikon patent, but it is not yet clear who filed it (inter partes Request No. (3)).
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