Patent Law Practice Center

Fractus Patents Hit with Nine More Reexamination Requests

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

In our post of November 22, 2010, we described Samsung’s strategy for defending against allegations that it and several other cell phone makers infringe nine antenna patents owned by Fractus – specifically by vigorously defending in the Eastern District of Texas and requesting reexamination at the PTO against all nine Fractus patents.  Now it appears that co-defendant Kyocera has filed its own set of reexamination requests against the “Fractus Nine” (Inter partes Nos. (5) to (11), (13) below).  Not all the details of the new requests are publically available because these new requests were paper-filed and because of certain procedural problems.  It is quite likely, however, that these requests will be granted and merged with Samsung’s earlier reexaminations.

Also of interest is a request filed by Abbott Diabetes Care Inc. against a DexCom patent for transcutaneous analyte sensors.  Abbott and DexCom spared in reexamination over that technology in the past, for instance regarding U.S. Patent Nos. 6,931, 327 and 7,276,029. Read the rest of this entry »

Federal Circuit Issues Writ of Mandamus to Transfer Patent Suit

Michael J. Sacksteder, Partner at Fenwick & West, sent along this alert he wrote with colleagues Ryan J.  Marton and Guinevere Jobson.

The Federal Circuit has taken away another tool used by patent plaintiffs to keep lawsuits in the Eastern District of Texas in spite of motions to transfer by defendants. “Non-practicing entities” (known as NPEs or sometimes by a more disparaging term) often attempt to make their lawsuits “stick” in the Eastern District by incorporating in Texas and/or by establishing a “headquarters” in that district. (One of the authors has considered performing an empirical study of how many NPEs list their address as 104 E. Houston Street in Marshall, Texas. 104 E. Houston Street is located next door to the Federal courthouse in Marshall). When considering venue transfer motions, Eastern District judges had previously declined to examine whether such tactics were motivated by litigation strategy or by other considerations. A recent Federal Circuit ruling changes that.

On November 8, 2010, the Federal Circuit in In re Microsoft Corp., No. 944 (Fed. Cir. Nov. 8, 2010) granted Microsoft’s petition for a writ of mandamus finding the District Court’s denial of Microsoft’s motion to transfer pursuant to 28 U.S.C. §1404(a). The Federal Circuit determined that the denial was a clear abuse of discretion and ordered the case to be transferred to the Western District of Washington as the more convenient forum. Read the rest of this entry »

US Supreme Court Accepts Microsoft Appeal in i4i Case

The following was sent in by Gene Quinn, of IPWatchdog and Practice Center Contributor.

Yesterday, the United States Supreme Court granted certiorari in Microsoft Corporation v. i4i Limited Partnership, with Chief Justice John Roberts taking no part in the decision or petition. The Supreme Court did not request the views of the Solicitor General, choosing rather to accept the matter with no input from the United States government.  The decision to grant cert. comes only days after the United States Patent and Trademark Office refused to grant reexamination of the patent in question.

Microsoft had filed an ex parte reexamination request on the patent in question, US Patent No. 5,787,449. The ‘449 patent exited reexamination unchanged. Microsoft then filed a second ex parte reexamination request, and it is this second request that was denied by the Patent Office on Wednesday, November 24, 2010. The denial of this second request means that the Patent Office did not believe there to be a substantial new question of patentability. Read the rest of this entry »

Hyatt v. Kappos: The En Banc Decision Makes Section 145 Actions More Attractive

The following post comes from Clement S. Roberts (Partner at Durie Tangri and Practice Center Contributor).

Two weeks ago, the Federal Circuit handed down an en banc decision in Hyatt v. Kappos overruling a panel decision and substantially changing the rules for admitting evidence in a §145 action.  Although the decision has not attracted much attention, Hyatt may make §145 actions substantially more attractive and meaningfully alter the strategic landscape for those applicants who wish to pursue their claims beyond a BPAI rejection.

After an applicant’s claims are rejected by the BPAI, the applicant has two basic options—either appeal the  decision to the Federal Circuit, or bring an action in district court under 35 U.S.C. §145.  If the applicant elects to appeal the decision to the Federal Circuit, the appeal is heard on the administrative record created by the PTO and pursuant to the substantial deference standard normal in judicial review of expert administrative proceedings.  In a §145 proceeding, however, some new issues can be raised and (prior to Hyatt) some new evidence could be submitted to the district court. Read the rest of this entry »

Apple Files Nine Reexamination Requests

We’re posting the latest  installment of Reexamination Requests from Scott Daniels, of Reexamination Alert and Practice Center Contributor a few days early this week in light of the holiday weekend.  Happy Thanksgiving to all!!

Apple has been especially active lately in defending against charges of patent infringement by filing requests for reexamination.  In response to two separate infringement suits in Texas, it filed requests against two Mirror Works patents and three Affinity Labs patents, and for an ITC investigation, it filed requests against four S3 Graphics patents (See Inter partes Request Nos. (1) to (3) & (5) to (6), and Ex parte Request Nos. (16) to (19)).

The following inter partes requests were filed:

(1)         95/001,487 (electronically filed) – U.S. Patent No. 7,751,327 entitled ATHLETIC MONITORING SYSTEM AND METHOD and owned by Affinity Labs. of Texas Filed November 15, 2010, by Apple.  The ‘327 patent is currently the subject of a litigation styled Affinity Labs. v. Nike et al. (E.D. Tex., Case 2:10-cv-54-DF-CE). Read the rest of this entry »