Patent Law Practice Center

Patent Law Institute Live Blog: Litigating in the International Trade Commission

The Patent Law Institute live blog continues with the panel entitled, “Litigating in the International Trade Commission”. This panel features Asim Bhansali, Partner at Keker & Van Nest LLP. Asim’s discussion focuses on the increasing popularity of the ITC forum for domestic and foreign litigants and the remedies the ITC provides. Asim also discusses parallel district court litigation. Here are some of the highlights (more…)

Facebook Request For Reexamination of Data Review Patent Among Those Requested Week Of 10/10/12

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

A Markman hearing is currently scheduled for the beginning of November in Indacon’s case against Facebook for infringement of two patents related to storing and reviewing data.  But on FridayFacebook requested reexamination of one of the Indacon patents (see inter partes Request No. (9)) and on the same day, asked Judge Orlando Garcia of the Western District of Texas to stay the infringement action “until Indacon files its response to the PTO’s first Office Action in the reexamination.”  At that time, Facebooksays, Judge Garcia could assess the effect that the reexamination might have on the case and whether the case should be stayed pending completion of the reexamination.  Facebook focused on the imminent Markman hearing, noting that the reexamination could provide additional evidence that might affect Judge Garcia’s claim construction of both patents-in-suit.  “No matter what the outcome of the reexamination, claim construction will surely be affected.”

In 2007 the U.S. International Trade Commission (ITC) issued a general exclusion order prohibiting the entry into the United States of ink cartridges that infringed any of ten Seiko Epson patents, plus a cease and desist order stopping the sale of infringing ink cartridges already in the United States.  The principal target of these orders was Ninestar Technology.  In March Ninestar asked the ITC for an advisory opinion whether its R-Series ink cartridges infringe any of the ten Seiko Epson patents.  Ninestar has now expanded its challenge to the Seiko Epson patents by requesting reexamination of the ‘053 patent (see inter partes Request No. (1)).  It will be interesting to see how Ninestar coordinates its challenges to that patent at the ITC and at the PTO, respectively. (more…)

Should the PTO’S Reexamination Analysis Impact ITC Cases?

Until now, the  CAFC has not answered the question of the level of consideration a court or the ITC should give to an earlier reexamination and the effect those reexamination findings should have in the present proceeding or investigation.  Scott Daniels, Partner at Westerman Hattori Daniels & Adrian and Practice Center Contributor, passed along this article discussing an investigation pending at the ITC wherein the Commission has raised this question.  Daniels weighs in on whether the CAFC will take this opportunity to answer this looming question.

In January U.S. International Trade Commission Administrative Law Judge Paul Luckern issued his initial determination (ID) finding that Kodak’s U.S. Patent No. 6,292,218 was obvious over the prior art and not infringed by Apple and RIM mobile telephones with digital cameras – these findings were contrary to an ID (by ITC ALJ Carl Charneski) in an earlier investigation that Kodak’s ‘218 patent was valid and infringed by mobile telephones from Samsung and LG.  This past Friday, the Commission announced that it would review Judge Luckern’s determination in favor of Apple and RIM.  As is customary, the Commission’s review focuses on specific aspects of Judge Luckern’s ID, asking the parties to address five specific legal issues – among them, the extent to which the ITC should consider reexamination proceedings (90/010,899) in its analysis of claim construction and validity issues. (more…)