Patent Law Practice Center

Attack on the Walker Digital Image Management Patent, Among the Reexamination Requests Filed Week of Jan 30th

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

Reexamination was requested last week by an un-identified party against a Walker Digital patent that names Jay Walker of Priceline fame as an inventor (see ex parte Request No. (1)).  The patent claims a computer readable storage medium in a camera, which stores instructions for the camera’s management of images. Walker Digital has sued Canon USA for infringement of the patent, and it might be Canon that filed the request.

Requests were filed by GT Nexus against four shipment monitoring patents owned by INTTRA, Inc. (see ex parte Request Nos. (7) to (10)).  The patents relate to systems including user interfaces that allow a shipper to track and trace containers across multiple carriers and an event notifications system.  The two companies are in an infringement action in the Northern District of California regarding these patents.

And reexamination has been requested for yet another MobileMedia Ideas patent, this time by Research In Motion (see ex parte Request No. (14)). (more…)

Post-Grant USPTO Proceedings Seminar Live Blog: Patent Reexamination Practice and Evolution – USPTO Perspective

Welcome back to the Post-Grant USPTO Proceedings Seminar live blog! This morning’s panel is entitled Patent Reexamination Practice and Evolution – USPTO Perspective. Our featured panelist is Brian Hanlon, Director of the Office of Patent Legal Administration, United States Patent and Trademark Office. Below are some the highlights:

Revision of Standard for Granting an Inter Partes Reexamination Request: the final rule implements the part of Section 6 of the AIA directed to inter partes reexamination. Inter partes reexamination will be replaced by inter partes review. The reasonable likelihood standard is different from the substantial new question standard. It doesn’t require that the requester establish a prima facie case, and the reasonable likelihood standard doesn’t apply to ex parte reexaminations either.

Miscellaneous Post Patent Provisions Rule Package: The comment period closes March 5, 2012. The office has an obligation to make sure the reexamination isn’t being filed by someone who shouldn’t be filing it. This notice of propose rulemaking implements the estoppel provisions of sections 6(a) and 6(d), which bar a 3rd party requester from filing or maintaining an ex parte reexamination after a final decision has issued in a post grant or inter partes review on the same patent that was requested by the same 3rd party.

Supplemental Examination and Revisions of Reexamination Fees: Only a patent owner may request supplemental examination of a patent to “consider, reconsider, or correct information” believed to be relevant to the patent. There is no 3rd party participation permitted at all. Supplemental exam has 2 parts – the supplemental exam itself and the supplemental reexamination portion. “Information” that forms the basis of the request is not limited to patents and printed publications. Within 3 months from the filing date of the request, the Office must decide whether any of the items of information filed with the request raises a substantial new question of patentability.

We’ll be back after the break with more from the Post-Grant USPTO Proceedings Seminar!

eBay Attack on Purple Leaf Electronic Transaction Patent Among the Reexamination Requests Filed Week of Jan. 23rd

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

Last week eBay replied to an infringement action filed against it in the Eastern District of Texas by Purple Leaf by seeking reexamination of the patent-in-suit (see inter partes Request No. (2)).  The Purple Leaf patent claims a process for conducting electronic transactions and making payments over the Internet.

The winner for the most reexamination requests filed wasNanosolar that challenged three Solannex patents related to photovoltaic cells (see ex parte Request Nos. (5), (6) & (7)).  The companies are in litigation over these patents in the Northern District of California.

Ex parte Request No. (4), involving U.S. Patent No. 5,337,753 owned by Biosig Instruments and claiming a heart rate monitor, is interesting in that it expressly calls for the PTO to “clarify the record” regarding the meaning of the claims.  The Request notes the ‘753 patent has been through an earlier reexamination, but that the trial judge in a pending infringement action has refused to rely on the patentee’s assertions in that earlier reexamination because they are “ambiguous.”  (more…)

Challenge to Round Rock RFID Patent, Among the Reexamination Requests Filed Week of Jan. 16th

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

In September, an unidentified party requested reexamination of four RFID patents owned by Round Rock Research.  Last Tuesday, reexamination was requested of another Round Rock RFID patent, Reissue 41,562, again by an anonymous party (see ex parte Request No. (1)).

Traditionally, reexamination has been requested of a substantial number electronics and Internet patents, but it is much less common for pharmaceutical and medical delivery patents.  In recent weeks, though, that pattern seems to be changing, with more reexamination requests directed to pharmaceutical and medical delivery patents.  That trend continued last week when reexamination was requested for two patents owned by Monosolclaiming film to be used in drug delivery systems (see ex parteRequest Nos. (3) & (4)).  Monosol has sued BioDelivery in New Jersey for infringement of the patents. (more…)

HTC Attack on FlashPoint Image Capture Patent Among the Reexamination Requests Filed Week of Jan 9th

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

HTC has requested reexamination of FlashPoint Technology’s U.S. Patent No. 6,278,447 for video interface system (see ex parte Request No. (9)).  The ‘447 patent has survived two earlier ex parte reexaminations without cancelation or amendment of claims.

Reexamination was requested of another MobileMedia Ideas patent for data storage, U.S. Patent No. 5,977,887 (see ex parteRequest No. (2)).  The PTO records do not indicate the identity of the requester, but it might be HTC. (more…)