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
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PTO Statistics
Facebook Infringement Case Stayed Prior to Reexamination Grant
Scott Daniels | October 14, 2011
Trial judges continue to apply their individual concepts of fairness to motions to stay infringement actions pending completion of co-pending reexaminations of the patents-in-suit. Accordingly, there is wide variation in how such motions are treated. On Tuesday, for instance, Judge Edward Davila of the Northern District of California granted a stay motion in Pragmatus AV. v. Facebook, 2011 U.S. Dist. LEXIS 117147, despite the fact that the PTO had not yet determined whether to grant reexamination.
Judge Davila emphasized the prospect of simplification of issues, relying heavily on the PTO statistics showing that a substantial percentage of reexamination requests are granted and that a substantial percentage of patents in reexamination result in claims being canceled or amended. The Judge therefore found that “Facebook’s request[s] for reexamination include[] all claims at issue in this litigation and there is a high statistical likelihood that reexamination will be granted and the claims will either change or be canceled,” thereby simplifying issues for trial.
Judge Sparks Changes His Mind
Scott Daniels | July 29, 2011
Tuesday we reported that Judge Sam Sparks had granted a limited, three-month stay of the infringement action, MONKEYmedia v. Apple et al., A-10-CA-319 (W.D. Tex.), pending completion of reexaminations of the three patents-in-suit. And he ordered the PTO to expedite the reexaminations.
Now, however, Judge Sparks has had second thoughts. Someone informed him that the patentee MONKEYmedia had filed motions at the PTO for extensions of time to answer pending rejections, and that when the PTO denied the motions, MONKEYmedia had asked the PTO for reconsideration. (In fact, MONKEYmedia requested two-month extensions in two of the reexaminations and a one-month extension in the third).
In a second order dated Wednesday, Judge Sparks stated the obvious: “the PTO cannot expedite its reexamination if the parties drag their feet.” The Judge indicated that he had limited the stay in his first order to three months because “MONKEYmedia in particular was adamant [that] any delay would be both wasteful and inequitable.” The patentee’s requests for extensions of time in the reexaminations, however, have changed his sympathies on the matter. “[B]ecause MONKEYmedia is apparently no longer in a hurry, neither is the Court.” Accordingly, the Judge has extended the stay until the reexaminations “come to a final conclusion, a process whose length will be dictated primarily by the actions of the parties before the PTO.”
Clearly, Judge Sparks was irritated with what he perceived to be contradictory positions taken by MONKEYmedia in his court and at the PTO on the effect of reexamination delay. Still, the deadlines faced by a patentee in reexamination are often severe. And it is not necessarily inconsistent for a patentee to want extensions at the PTO and to resist a stay of its infringement litigation. In any event, all parties must consider the effect that their arguments in one forum would have in other forums.
Broadcast Electronics Requests Reexamination of Mission Abstract Data Patents
Scott Daniels | July 28, 2011
In March, Mission Abstract Data (which also does business as Digimedia) sued a host of broadcast companies in Delaware – including CBS and Cox – for infringing two patents, U.S. Patent Nos. 5,629,867 and 5,809,246. The ‘867 and ‘246 patents concern the selection and retrieval of music from databases; specifically, music to be broadcast over the air waves is stored and played from a computer hard drive rather than a CD player. According to assignment records at the PTO, Mission Abstract obtained the ‘867 and ‘246 patents in 2007, assigned them in February of this year to Intellectual Ventures who reassigned them back to Mission Abstract seven day later.
Yesterday, Broadcast Electronics – who is not a party to the infringement action – requested reexamination of the ‘867 patent, and this morning it sought reexamination of the ‘246 patent. Also yesterday, the Defendants moved to stay the case pending completion of the two reexamination proceedings.
Judge Sparks Orders PTO “to Expedite Reexamination”
Scott Daniels | July 26, 2011
Yesterday’s two-page stay order by Judge Sam Sparks in the MONKEYmedia cases is noteworthy in two respects. First, he takes an interesting “compromise” approach to the issue of whether to stay a patent infringement action pending completion of reexamination proceedings at the PTO.
MONKEYmedia sued Apple, Walt Disney and a series of other entertainment companies last year for infringement of three data storage patents, U.S. Patent Nos. 6,393,158, 7,467,218, and 7,890,648. Apple replied to the suit by requesting reexamination of MONKEYmedia’s patents. The PTO granted reexamination for each patent, and as of July 8th, has issued non-final rejections against all the MONKEYmedia claims. On the basis of those rejections, Apple and the other defendants filed motions to stay the infringement actions.
This issue of whether to stay pending completion of reexamination has come to have an enormous impact on the outcome of infringement litigation. The issue has also sharply divided the nation’s trial judges, many tending to deny stays because of the significant delays inherent in reexamination, with others leaning toward granting stays because of the potential for simplification of issues at trial.
Oracle Case Against Google’s Android® Headed for a Stay?
Scott Daniels | July 21, 2011
Reexamination offers a number of benefits to those accused of infringement. The most important of those benefits may very well be the prospect of a stay of the infringement action pending completion of the reexamination proceeding. Where a stay is granted, the reexamination becomes the primary focus of the case, with potentially enormous advantage to the accused infringer. But where a stay is denied, the benefits are often limited by the extent to which the trial judge allows the results of the reexamination to be used at trial.
The stay issue is now center stage in Oracle’s patent infringement action in the Northern District of California against Google and its Android®, involving seven Java platform patents and a series of related copyrights. Although a three week trial is scheduled to begin at the end of October, Judge William Alsup is concerned about the feasibility of a trial involving the large number of patent claims asserted by Oracle. The judge has therefore strongly encouraged Oracle to reduce its claims at issue, and indicated that he might stay the case pending completion of a series of reexaminations initiated by Google against the Oracle patents.
Yesterday, in response to an order from Judge Alsup, the parties filed a “Joint Summary” informing the Judge of the status of those reexaminations. For four of the patents, non-final rejections have issued against the claims asserted by Oracle. The PTO has confirmed the validity of the claims of U.S. Patent No. 6,061,520 (90/011,489) asserted by Oracle against Google. And reexamination has been granted for the two other Oracle patents, but the PTO has not yet issued a substantive Action, either confirming or rejecting those claims.
Judge Randa Denies Preliminary Injunction Motion & Stays Case Pending Reexamination
Scott Daniels | July 12, 2011
In recent days, a number of writers in the blogosphere have remarked on the strength of reexamination as a defense for parties accused of patent infringement, some bemoaning that strength, others cheering it on. The influence of reexamination on an infringement case, however, largely depends upon the strength of the prior art asserted. This link between reexamination and the strength of prior art was much in evidence in Judge Rudolph Randa’s decision last week on competing motions to stay and for a preliminary injunction in Generac Power Systems v. Kohler, 2011 U.S. LEXIS 72817 (E.D. Wisc.)).
Generac sued Kohler last October for infringing U.S. Patent No. 7,230,345 related to a specific method of operating engine-driven electrical generators. Kohler defended by filing a request for ex parte reexamination in December and a more robust request for inter partes reexamination at the end of February. The PTO granted both requests for reexamination and might soon merge them. Kohler also moved to stay the case pending completion of the reexamination proceedings. In the meantime, Generac asked that Kohler be preliminarily enjoined from “making, using, selling [or] offering to sell generators that feature the method” of the ‘345 patent.
Judge Randa addressed the stay motion first, but his primary interest was clearly directed to the request for preliminary relief. The Judge first considered the likelihood that Generac would ultimately succeed on the merits. Since Kohler “neither contested nor conceded infringement,” the sole issue on the merits was Kohler’s challenge to the validity of the ‘345 patent. Kohler “must [therefore] put forth a ‘substantial question of validity’ to show that the claims at issue are vulnerable, [though] the showing of a substantial question of invalidity requires less proof than the clear and convincing standard to show actual invalidity” at trial (emphasis added).
Court Stays Case on Basis of Reexamination Grant
Scott Daniels | June 15, 2011
Last Wednesday Judge Ruben Castillo of the Northern District of Illinois stayed the case Chicago Mercantile Exchange v. Technology Research Group pending completion of a reexamination. What makes the stay interesting is that Judge Castillo did not expressly identify the three-factor standard generally applied to stay motions – the stage of the case, the possible simplification of issues, undue prejudice to the patentee – and then balance those factors. Rather, he appears to have carefully considered the merits of the reexamination request and then assessed the probability of the patent claims being held invalid in the reexamination.
Chicago Mercantile filed a declaratory judgment action against Technology Research in June 2009 seeking a judgment of non-infringement and invalidity of U.S. Patent No. 5,963,923; and Technology Research counter-claimed for infringement of the ‘923 patent. A request for reexamination of the ‘923 patent was filed in February, and at the beginning of May, the PTO ordered reexamination. When Judge Castillo learned of the reexamination, he sua sponte asked the parties for briefing on whether a stay should issue pending completion of the reexamination.
Florida Court Stays Case Three Weeks before Trial
Scott Daniels | June 3, 2011
The other day a judge told me, essentially, that he did not care for reexaminations and that he would never stay an infringement case pending completion of a reexamination proceeding. The judges of the Southern District of Florida take a different view. On Tuesday, Judge Marcia Cooke stayed the case Plasticos Vandux de Colombia v. Robanda Int’l, pending completion of a reexamination of one of the three patents-in-suit, despite the fact that trial in the case was scheduled to start June 20th.
Judge Cooke’s decision is notable in two respects. The first was her analysis of the delay of the litigation caused by a stay, quoting the 2008 Roblor Marketing decision from the Southern District of Florida: “[r]ather than being a reason for denying a stay, the resulting delay in proceedings serves the interests of correctness and finality, by assuring that any decision by the PTO can be taken into account by the court prior to further proceedings even though it necessarily results in deferral of the final outcome of this case” (emphasis added).
Second, Judge Cooke granted the stay based on a reexamination rejection of the claims of one patent-in-suit; there are two other patents-in-suit, as well as false marking and unfair competition counts. The Judge explained that the claims of the other two patents were quite similar to the rejected claims, implying that the claims of all three patents were likely to rise or fall together. Regarding the other counts, she stated that a “court may stay a case in its entirety pending reexamination despite the existence of unrelated claims in the interest of judicial economy and efficient case management,” citing an opinion from earlier this year by Judge William Alsup of the Northern District of California.
Google Off to Good Start in Reexamination of Oracle Patents
Scott Daniels | May 24, 2011
Oracle’s patent infringement action against Google and its Android®, involving seven Java platform patents and a series of related copyrights, is scheduled for a three-week trial starting October 31, 2011. But as Florian Mueller reported last week, Judge William Alsup is quite concerned about the feasibility of a jury trial, given the large number of patent claims that Oracle is currently asserting. In a written comment on the parties’ joint case management memo, the Judge cautioned that the “larger number of patents and patent claims asserted … the more practical it will then seem to simply stay this case and see which claims survive PT re-examination,” alluding to the reexamination proceedings currently pending at the PTO for each of Oracle’s seven patents.
Clearly, Judge Alsup is encouraging Oracle to trim the number of patent claims for trial, without actually ordering it to do so. Faced with substantial uncertainty on how its patents will fare in reexamination between now and the October trial, Oracle, just as clearly, does not want to make any premature commitment to specific patent claims. For its part, Google has not expressed its preference between a stay and a trial, stating that it “defers to the Court’s discretion to grant a stay pending reexamination.”
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Will Reexamination Rescue Lawson from an Injunction?
Scott Daniels | May 23, 2011
Patent infringement litigation and reexamination proceedings are rarely synchronized, but the resolution of two reexaminations might arrive just in time to save Lawson Software from being enjoined in the ePlus v. Lawson in the Eastern District of Virginia. The patentee, ePlus, sued Lawson in 2009 for infringement of U.S. Patent Nos. 6,023,683 and 6,505,172 relating to systems for searching catalogs for product information to generate requisition orders, specifically electronic sourcing systems commonly used by healthcare facilities and government agencies. At the conclusion of a trial in January, the jury found that the ‘683 and ‘172 patents were valid and infringed. Judge Robert Payne is now considering whether to enjoin Lawson from future acts of infringement.
Running in parallel with the infringement case are reexamination proceedings at the PTO, one requested in 2006 by SAP[1] for the ‘683 patent (90/008,104) and two others, by Lawson in 2009, for the ‘683 patent (90/011,066) and the ‘172 patent (95/000,487). Judge Payne has so far rejected Lawson’s requests that the litigation be stayed pending completion of the reexaminations or that final rejections from the reexaminations be considered at the trial.
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