Patent Law Practice Center

Toshiba Attack On Two Rovi V-Chip Patents Among Reexamination Requests Filed Week Of 3/7/11

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

Late last year, Rovi sued Toshiba, alleging that it infringes two patents covering V-Chip technology, U.S. Patent Nos. 6,305,016 and 6,701,523.  Toshiba has now replied to that allegation by requesting reexamination of both Rovi patents (see ex parte Request Nos. (16) & (17)).

The winner for the most reexaminations requested was TiVo who filed requests against seven Microsoft TV programming patents (see ex parteRequest Nos. (3) to (9)).

Finally, Xilinx’s assault on Intellectual Venture patents continued last week with requests filed against IV’s U.S. Patent Nos. 6,993,669 and 6,408,415 (see inter partes Request No. (3) & ex parte Request No. (31)). (more…)

Acer & Microsoft Attacks On Mediostream Video Recording Patent Among Reexamination Requests Filed Week Of January 31, 2011

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

On January 7, 2011, Apple requested reexamination of MedioStream’s U.S. Patent No. 7,843,508 covering a way of recording video data directly onto disks.  Now, both Acer and Microsoft have filed their own requests for reexamination of the ‘508 patent (inter partes Request Nos. (2) & (5)).  Each of these new requestors has been accused by MedioStream of infringing the ‘508 patent.  These requests continue a trend among the huge electronic companies, especially Apple, of using reexamination to reply to infringement allegations.

As an update to our posts of June 30 & November 9, 2010 and January 19, 2011 – regarding inter partes reexamination requests filed by Whirlpool against four LG refrigerator patents – Judge Garrett Brown, in a parallel infringement action between the parties in the District Court of New Jersey, has denied Whirlpool’s motion to stay the case pending completion of the reexamination proceedings.  Judge Brown explained that inter partes reexaminations “could take more than five years if the parties fully exhaust their appeal rights” and that delay could cause LG irreparable loss because the parties are direct competitors: “[t]he goodwill lost during the reexamination proceedings could be difficult to measure and difficult to compensate fully with money damages after trial.” (more…)

DNA Patents Dominate Reexamination Requests Filed Week Of January 24, 2011

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

In August, Helicos Biosciences sued Pacific Biosciences of California, Life Technologies and Illumina in Delaware for infringing four patents claiming methods for nucleotide sequencing.  Pacific Biosciences has now replied by requesting reexamination of each of the four patents-in-suit (inter partes Request Nos. (2) to (5)).

Also, a request was filed for one of the Ronald Katz telephone patents (see ex parte Request No. (3)).

The following inter partes requests were filed:

(1)         95/001,528 (electronically filed) – U.S. Patent No. 7,69,133 entitled SYSTEM AND METHOD FOR DEVELOPING RULES UTILIZING IN A KNOWLEDGE MANAGEMENT SYSTEM and owned by Wellogix Technology Licensing.  Filed January 26, 2011. (more…)

RIM Attack on MobileMedia Image Data Compression Patent among Reexamination Requests Filed Week of January 17, 2011

Here is this week’s installment of Reexamination Requests from Scott Daniels, of Reexamination Alert and Practice Center Contributor….

Late last year MobileMedia Ideas filed law suits against RIM and Hyundai asserting infringement of its U.S. Patent No. 7,349,012 for an apparatus for compressing image data.  RIM has now requested reexamination of the ‘012 patent (ex parte Request No. (18)), and may now file a motion to stay its case with MobileMedia.

Another reexamination request of obvious commercial significance was filed by Boston Scientific against Cordis regarding U.S. Patent No. 5,922,021 for intravascular stents.  (ex parte Request No. (2)). The parties are currently in litigation regarding the ‘021 patent.  Requests were also filed against patents owned by Ronald Katz (ex parte Request No. (1)) and David Breed (ex parte Request Nos. 13 & 14)).

The following inter partes requests were filed:

(1)       95/001,525 (electronically filed) – U.S. Patent No. 7,777,783 entitled MULTI-VIDEO NAVIGATION and owned by Proximex.  Filed January 21, 2011, by VidSys, Inc.   The ‘783 patent is currently the subject of a litigation styled VidSys v. Proximex (Case No. 1:10-cv-1185 (E.D. Va.)).

(more…)

PTO Director Initiates Reexamination against Gift Tax Patent in Week of January 10, 2011

Here is this week’s installment of Reexamination Requests from Scott Daniels, of Reexamination Alert and Practice Center Contributor….

In a very unusual step, the Director of the PTO has initiated a reexamination of U.S. Patent No. 6,567,790 claiming a method of estate planning (ex parte Request No. (17)). In its reexamination order, the PTO explained that Director initiates reexamination when it appears “that an examining procedure has not been followed which has resulted in the issuance of a claim in a patent that is prima facie unpatentable, and there is a compelling reason to order reexamination at the Director’s initiative.” 

In this instance, the original examiner’s failure to consider a specific article “has created an extraordinary situation” requiring reexamination.  According to the reexamination order, the article was not considered or discussed in the original prosecution, even though it disclosed the claimed feature noted by the original examiner as the reason for allowance.  Whether such methods related to legal and tax matters should be eligible for patent protection has been hotly disputed. (See also IPWatchdog’s post “Patent Office Orders Reexamination of Tax Related Patent” for more on this reexamination story). (more…)