Patent Law Practice Center

Collateral Estoppel Prevents Reexam Claim from being Enforced

On November 19, 2014, the United States Court of Appeals for the Federal Circuit issued a decision in e.Digital Corporation v. Futurewei Technologies, Inc. e.Digital appealed from a judgment of non-infringement made by the U.S. Federal District Court for the Southern District of California. The district court based its determination of non-infringement on the fact that e.Digital was collaterally estopped from seeking a construction of a claim limitation in e.Digital’s U.S. Patent Nos. 5,491,774 and 5,839,108 different from another court’s previous construction of the same limitation in the ’774 patent.

The Federal Circuit, with Judge Moore writing and joined by Judges O’Malley and Reyna, held that the district court correctly applied collateral estoppel to the ’774 patent, but improperly applied the doctrine to the unrelated ’108 patent.

To understand the ruling in this case one must first look at the prior case that construed the critical claim. Previously, in a litigation in the United States Federal District Court for the District of Colorado, e.Digital asserted claims 1 and 19 of the ’774 patent. The ’774 patent discloses a device with a microphone and a removable, interchangeable flash memory recording medium that allows for audio recording and playback. Asserted claims 1 and 19 recited “a flash memory module which operates as sole memory of the received processed sound electrical signals.” The district court construed the sole memory limitation to require “that the device use only flash memory, not RAM or any other memory system” to store the “received processed sound electrical signals.” The district court based its construction on the written description of the ’774 patent and its determination that the use of RAM had been disclaimed during prosecution. With this claim construction decided, the parties stipulated to a dismissal of the case with prejudice.

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Google Request for Reexamination of Walker Digital Patent, among those Filed Week of June 25, 2012

Here is our latest weekly installment of Reexamination Requests from Scott Daniels, of Reexamination Alert and Practice Center Contributor…

Last year Walker Digital sued BMW, MapQuest, TomTom, Teleman, Blusens, NDrive, Samsung and Google for infringement of U.S. Patent No. 6,199,014 claiming a vehicle navigation system (see inter partes Request No. (2)).  Last Tuesday Google requested reexamination of the ‘014 patent.  A motion to stay the litigation is likely to follow.

Reexamination was requested for Ronald Katz’ U.S. Patent No. 5,898,762 claiming a telephone interface system (see ex parte Request No. (2)).  Katz has sued Charter, Time Warner Cable, EarthLink, DIRECTV and U.S. Cellular for infringing the ‘762 patent.

Friday is the most popular day for filing reexamination requests, unless you are the Troll Buster Jeff Oster who filed two more requests on Saturday, these against two Life Technologies hybridization assay patents, on behalf of Bioresearch (see ex parte Request Nos. (9) & (10)).

The following inter partes requests were filed:

(1)         95/002,030 (electronically filed) – U.S. Patent No. 7,534,366 entitled COMPOSITIONS CONTAINING FLUORINE SUBSTITUTED OLEFINS and owned by Honeywell International.  Filed June 26, 2012, by Mexichem Amanco Holding S.A. de C.V.  The ‘366 patent is currently the subject of a declaratory judgment action styled Arkema et al. v. Honeywell International, (Case No. 10-cv-2886 (E.D. Pa.)).

(2)         95/002,031 (electronically filed) – U.S. Patent No. 6,199,014 entitled SYSTEM FOR PROVIDING DRIVING DIRECTIONS WITH VISUAL CUES and owned by Walker Digital.  Filed June 26, 2012, by Google.  The ‘014 patent is currently the subject of a litigation styled Walker Digital v. Apple et al. (Case No. 1:11-cv-309 (D. Del.))

The following ex parte requests were filed:

(1)         90/012,376 (electronically filed) – U.S. Patent No. 5,898,762 entitled TELEPHONIC-INTERFACE STATISTICAL ANALYSIS SYSTEM and owned by Ronald A. Katz Tech. Licensing LP.  Filed June 27, 2012.   The ‘762 patent is currently the subject of six infringement actions.

(2)         90/012,377 (electronically filed) – U.S. Patent No. 8,030,026 entitled ANTIBODIES TO TROPONIN I AND METHODS OF USE THEREOF and owned by Abbott Labs.  Filed June 28, 2012, by HyTest Oy.

(3)         90/012,378 (electronically filed) – U.S. Patent No. 6,779,118 entitled USER SPECIFIC AUTOMATIC DATA REDIRECTION SYSTEM and owned by Linksmart Wireless Systems.  Filed June 28, 2012, likely by T-MOBILE USA.   The ‘118 patent is currently the subject of a litigation styled Linksmart Wireless v. T-MOBILE USA (Case No. –cv-522)).

(4)         90/012,379 (electronically filed) – U.S. Patent No. 6,641,477 entitled ELECTRONIC SECOND SPIN SLOT MACHINE and owned by Rembrandt Gaming Technologies.  Filed June 29, 2012.

(5)         90/012,380 (electronically filed) – U.S. Patent No. 5,451,375 entitled APPARATUS FOR TRIMLESS SAMPLE CUP USED IN X RAY SPECTROSCOPY and owned by Chemplex Industries.  Filed June 29, 2012.

(6)         90/012,381 (electronically filed) – U.S. Patent No. D604,188 entitled MINI LIGHT BAR and owned by Filed June 29, 2012, by Wolo Mfg.   The ‘188 patent is currently the subject of a litigation styled Shin v. Wolo Mfg. et al. (Case No. 2:12-cv-2592 (C.D. Cal.)).

(7)         90/012,382 (electronically filed) – U.S. Patent No. 5,819,201 entitled NAVIGATION SYSTEM WITH VEHICLE SERVICE INFORMATION and owned by Beacon Navigation.  Filed June 29, 2012.

(8)         90/012,383 (electronically filed) – U.S. Patent No. 6,258,569 entitled HYBRIDIZATION ASSAY USING SELF-QUENCHING FLUORESCENCE PROBE and owned by Life Techs.  Filed June 30, 2012, by Biosearch Techs.   The ‘569 patent is currently the subject of a litigation styled Applied Biosystems et al. v. Midland Certified Reagents et al. (Case No. 3:12-cv-852 (N.D. Cal.)).

(9)         90/012,384 (electronically filed) – U.S. Patent No. 6,030,787 entitled HYBRIDIZATION ASSAY USING SELF-QUENCHING FLUORESCENCE PROBE and owned by Life Techs.  Filed June 30, 2012, by Bioresearch Techs.   The ‘787 patent is currently the subject of a litigation styled Applied Biosystems et al. v. Midland Certified Reagents et al. (Case No. 3:12-cv-852 (N.D. Cal.)).

Top 5 Patent Law Blog Posts of the Week

Today we continue our weekly installment highlighting the best of the patent blogosphere from the past week. If there are any patent blogs you think should be highlighted by our Top 5, please comment on this post and we’ll check them out.

1) Whitehouse.gov: Help Us Shape Our Strategy for Intellectual Property Enforcement – This post from The White House Blog was written by Victoria Espinel, U.S. Intellectual Property Enforcement Coordinator. The purpose is to announce the Executive Office of the President’s newest initiative to develop a “new strategy of intellectual property enforcement”. Public comments on how to efficiently combat intellectual property infringement are being requested for this Strategy. For more info, click here.

2) Patents Post-Grant: Enhanced Patent Reexamination Speed Coming Soon? – This post from Oblon Spivak’s Scott McKeown discusses how the reduction in incoming requests and how these new options for contested proceedings will free up much of the Central Reexamination Unit’s examiner’s time. As such, this post suggests ex parte patent reexamination filings could potentially benefit from the newly available bandwidth.

3) Patently-O: Supreme Court Grants Cert in Already v. Nike – This post reports on Already, LLC dba Yums v. Nike, Inc., No. 11-982, and how the Supreme Court’s grant of certiorari in this trademark law matter could impact patent litigation.

4) Patent Docs: USPTO Takes Next Step Towards Cooperative Patent Classification System – This post shares the USPTO’s announcement in the Federal Register that on July 10, 2012, it will be hosting a Cooperative Patent Classification (CPC) External User Day event (77 Fed. Reg. 37879). During the event, the USPTO will provide an overview of the CPC, a new patent classification system being jointly developed by the USPTO and the European Patent Office (EPO).

5) IP Watchdog: Practice Before the Patent Trial and Appeal Board – This post discusses the impact of the September 16th implementation of the new post grant review procedures on law firms and the USPTO alike. The post explains the new Patent Trial and Appeal Board and its duties, the hiring of new Administrative Patent Judges “at an astounding rate”, and what the new proposed trial rules will mean to patent lawyers.

DirecTV Reexamination Request of Satellite Broadcast Patent One of the Requests Filed the Week of June 18, 2012

Here is our latest weekly installment of Reexamination Requests from Scott Daniels, of Reexamination Alert and Practice Center Contributor…

Last Monday, DIRECTV asked for reexamination of a patent owned by Global Communications and claiming a satellite broadcast receiving and distribution system (see inter partes Request No. (1)). Global has sued a number of companies – presumably DIRECTV partners – for infringing that patent, as well as seven others.

Reexamination was requested for U.S. Patent No. 6,770,748 owned by Santaris Pharma and claiming nucleotide analogues that suitable as antisense molecules for treatment of cancer and AIDS patients (see inter partes Request No. (2)).  The Patent Office records do not yet show the identity of the requester, but it might be Isis since Santaris and Isis have fought over rights to this technology in the past.

Yet another request for reexamination was filed against a MobileMedia Ideas patent, perhaps by Apple or HTC – the Patent Office records do not say (see ex parte Request No. (6)).

Finally, DuPont and Monsanto are tussling over a soybean oil patent (see inter partes Request No. (7)).

The following inter partes requests were filed:

(1) 95/002,022 (electronically filed) – U.S. Patent No. 6,397,038 entitled SATELLITE BROADCAST RECEIVING AND DISTRIBUTION SYSTEM and owned by Global Communications.  Filed June 18, 2012, by DIRECTV.  The ‘038 patent is currently the subject of a litigation styled Global Communications v. PDI Communications et al.(Case No. 4:11-cv-451 (N.D. Fla.).

(2) 95/002,023 (electronically filed) – U.S. Patent No. 6,770,748 entitled BICYCLONUCLEOSIDE AND OLIGONUCLEOTIDE ANALOGUE and owned by Santaris Pharma.  Filed June 18, 2012, perhaps by Isis.

(3) 95/002,024 (electronically filed) – U.S. Patent No. 7,707,823 entitled METHOD AND APPARATUS FOR MANIPULATING AND DILUTING INTERNAL COMBUSTION ENGINE EXHAUST GASES and owned by Leseman Davis, LLC.  Filed June 19, 2012.

(4) 95/002,025 (electronically filed) – U.S. Patent No. 7,320,031 entitled AUTOMATIC, PERSONALIZED ONLINE INFORMATION AND PRODUCT SERVICES and owned by Personalized User Model (PUM).  Filed June 20, 2012, perhaps by Google.  The ‘031 patent is currently the subject of a litigation styled Personalized User Model v. Google (Case No. 09-cv-525 (D. Del.)).

(5) 95/002,026 (electronically filed) – U.S. Patent No. 7,917,401 entitled SYSTEMS AND METHODS FOR OBTAINING HEALTH AND FINANCIAL INFORMATION WITH A HANDHELD DEVICE and owned by Epic Technology.  Filed June 20, 2012, by eBay.  The ‘401 patent is currently the subject of a litigation styled Epic Technology v. Shapsavvy (Case No. 2:12-cv-249 (D. Utah)).

(6) 95/002,027 (electronically filed) – U.S. Patent No. 8,073,744 entitled METHOD TO PROVIDE LIQUID FUNDS IN THE ONLINE AUCTION AND MARKETPLACE and owned by Venture Lending & Leasing VI.  Filed June 22, 2012, by Capital Access Network.

(7) 95/002,028 (electronically filed) – U.S. Patent No. 7,790,953 entitled SOYBEAN SEED AND OIL COMPOSITIONS AND METHODS OF MAKING SAME and owned by Monsanto.  Filed June 22, 2012, by DuPont.

(8) 95/002,029 (electronically filed) – U.S. Patent No. 7,925,531 entitled METHOD OF DELIVERING GOODS AND SERVICES VIA MEDIA and owned by TrialCard Systems.  Filed June 22, 2012.  The ‘531patent is currently the subject of a litigation styled TrialCard Systems v. P.S.K.W. et al. (Case No. 3:11-cv-5693 (D.N.J.)).

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Reexamination Requests Against Abbott Labs’ HIV Drug Patents Among the Reexamination Requests Filed the Week of June 11, 2012

Here is our latest weekly installment of Reexamination Requests from Scott Daniels, of Reexamination Alert and Practice Center Contributor…

Earlier this year, Abbott Labs sued Roxane Labs for infringement U.S. Patent Nos. 7,148,359 and 7,364,752 which claim the HIV protease inhibitor ritonavir, in one patent as a crystalline polymorph, and in the other as a solid dispersion in a water soluble carrier.  On Friday reexamination was requested for both patents (see inter partes Request Nos. (7) & (8)).  Although the Patent Office records do not yet show the identity of the requester, it is quite likely Roxane.

Sony requested reexamination of a Jay Walker patent for a game user to enter preferences (see inter partes Request No. (1)). Walker Digital had sued Sony and Microsoft in Delaware for infringement of the patent.

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