Patent Law Practice Center

Inter Partes Reexam and the Post Grant Dead Zone

On July 24, 2012, the Patents Post Grant blog published an interesting article titled Higher Patent Reexamination Threshold Suffers from SNQ Hangover.  In the article, Scott McKeown, a partner with Oblon, Spivak in the firm’s Post Grant Patent Practice Group, wrote:

 

A random review of 80 requests filed under the new Reasonable Likelihood of Prevailing (RLP) standard reveals over 25 requests that were either partially (or even fully denied by examiners) [sic]. Compared to the prior grant rate of close to 95%, it would seem the new “higher standard” is having Congress’ desired effect.

Based on this sampling by McKeown, it seems that the new standard is indeed having an effect.  McKeown goes on to explain that if you file an inter partes reexamination request and it is denied, you can always learn from what the examiner stated and resubmit, but that only applies as long as there is time.  Inter partes reexamination will go the way of the dinosaurs on September 16, 2012.  McKeown writes: “Those IPX filers that are in parallel litigation, and have their IPX requests denied closer to the September deadline, may soon be forced into some very unfavorable positions.”

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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.

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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Troll Busters®’ Attack on Nucleic Acid Patent One of the Reexamination Requests Filed the Week of June 4, 2012

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

Jeff Oster, who operates out of offices on Mercer Island, Washington under the descriptive nom de plume “Troll Busters®,” was busy last week.  On Wednesday, he filed a 356-page request, containing 16 distinct SNQs, seeking reexamination U.S. Patent No. 5,928,907 (see ex parte Request No. (6)).  It’s always difficult for an outsider to measure the strength of a reexamination request, but this one has the look and heft of an effective one.  The Request begins with the description of Troll Busters as “working to promote new technologies by protecting the public from over-broad patent rights used for extortion and ‘troll-like’ demands….”

Arteris requested reexamination of Sonics’ on-chip system patent (see inter partes Request No. (4)).  This is at least the second Sonicspatent challenged by Arteris.  Sonics has sued Arteris in the Northern District of California for infringement of those two patents, plus six other patents. (more…)