Patent Law Practice Center

HTC Claims Intervening Rights Against Apple In ITC Case

Scott Daniels, Partner at Westerman, Hattori, Daniels & Adrian and Practice Center Contributor, sent in this article discussing the pending ITC investigation of HTC’s mobile communication devices.  Daniels raises interesting questions regarding HTC’s latest motion asking the ITC  for a determination that it does not infringe one of Apple’s patents because it’s entitled to “absolute intervening rights” against Apple.

HTC might be making a comeback in the ITC’s investigation of mobile communication devices  (337-TA-710).  In July Administrative Law Judge Charneski issued an Initial Determination (ID) against HTC, finding that its accused communication devices infringe two data manipulation patents owned by Apple.  That determination, if affirmed by the full Commission, would likely result in exclusion from entry into the United States of HTC’s infringing devices.

But in September the full Commission announced that it was reviewing Judge Charneski’s ID against HTC.  And, in a step that will interest reexamination practitioners, HTC asked the ITC for a determination that it does not infringe one of the Apple patents – U.S. Patent No. 5,946,647 – because HTC is entitled to “absolute intervening rights” created in a co-pending reexamination of Apple’s ‘647 patent. (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…)

New Inter Partes Review Grounds To Stay Most Patent Litigation?

Written by Scott McKeown, Partner at Oblon Spivak and Practice Center Contributor.

Estoppel Provisions Disfavor Parallel Proceedings

During a  [recent] webinar on post grant USPTO proceedings, I compared the current estoppel provisions of inter partes patent reexamination to that ofInter Partes Review. The Inter PartesReview (IPR) estoppel provisions are similar in some respects to the currentinter partes patent reexamination (IPX) provisions, but differ in significant respects.

In some ways, the new estoppel provisions are designed to address shortcomings of the existing IPX estoppel provisions. For example, whileIPX estoppel does not apply to ITC proceedings, the IPR provisions extend estoppel to ITC proceedings. Additionally, while the IPX provisions use the terminology “raised or could have raised,” the new IPR provisions recite “raised or reasonably could have raised during Inter Partes Review.” Ostensibly, this language softening is designed to provide some slight wiggle room to account for the late found reference in a far away library of Siberia.

Of perhaps much greater interest however is the aspect of IPR estoppel that may compel judges to stay a parallel litigation pending IPR. (more…)

Facebook’s Inequitable Conduct Case After Therasense

Our friends at Reexamination Alert sent in this article discussing the Tele-Publishing, Inc. v. Facebook, Inc., et al..  Has Facebook figured out a way to successfuly prove inequitable conduct even in light of the but-for standard for materiality now required by Therasense?

In January, Reexamination Alert reported on the case Tele-Publishing, Inc. v. Facebook, Inc., et al., No. 1:09-cv-11686-DPW, in which Facebook is accused of infringing U.S. Patent No. 6,253,216 entitled “Method and Apparatus for Providing a Personal Page.”  Facebook defended by requesting reexamination of the ‘216 patent, asserting that it was invalid over an earlier patent to de Hond.  The PTO granted reexamination.  An initial rejection of all claims issued in April, 2010, and a final rejection issued in August of that year. An appeal is currently pending at the PTO Board.

What will interest reexamination lawyers, however, is Facebook’s allegation that the ‘216 patent is unenforceable because of applicant’s inequitable conduct during the prosecution of that patent.  Facebook asserts that the ‘216 applicant was aware of the de Hond patent because that reference was cited and distinguished in several related applications, and that the applicant intentionally withheld de Hond in the ‘216 prosecution.

How does Facebook’s inequitable conduct defense stand up in light of the but-for standard for materiality now required by Therasense?  Pretty well, actually.   The CAFC described the materiality standard inTherasense as calling for a court to “determine whether the PTO would have allowed the claim if it had been aware of the undisclosed reference.”  The CAFC seemed almost to have reexamination in mind when it added that “the court should apply the preponderance of the evidence standard and give the claims their broadest reasonable construction” (emphasis added).  The closest answer to the CAFC’s hypothetical question – what would the PTO have done with the undisclosed reference – might be found in reexamination. (more…)

Challenge To Unigene’s Osteoporosis Patent Among The Reexamination Requests Week Of 6/20/11

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

Unigene Laboratories obtained a judgment in 2009 against Apotex for infringement of Unigene’s Reissue Patent No. 40,812 coveringUnigene’s FORTICAL® formulation for treatment of postmenopausal osteoporosis.  The only significant issue in that case appears to have been patent validity.  The case is on appeal to the CAFC.  This past Wednesday, reexamination was requested for the ‘812 patent, presumably by Apotex, though the PTO records are not yet clear (see inter partes Request No. (2)).

Reexamination was requested for another Hydro-Quebec lithium battery, but the PTO records don’t yet disclose which one (see inter partes Request No. (3)) – Hydro-Quebec has at least five. (more…)