Xilinx Attack On Intellectual Ventures Patent Among Reexamination Requests Filed Week OF 2/14/11

Here is the latest installment of Reexamination Requests from our friends at Westerman, Hattori, Daniels & Adrian….

Intellectual Ventures shook up the patent world in December when it filed three separate infringement suits against a series of large electronics companies.  In one of the cases, Intellectual Ventures accused AlteraMicrosemi and Lattice Semiconductor of infringing four patents programmable logic devices.  On Tuesday of last week, Intellectual Ventures filed an amended complaint to add Xilinx as a defendant.  Well, Xilinx is wasting no time, and on Friday it asked the Patent Office to reexamine one of the five patents-in-suit, U.S. Patent No. 6,272,646.  Requests for reexamination of the other four patents may come soon (see inter partes Request No. (8)).

The other big news, which we reported in two posts last week, were requests by Google for reexamination of five of the seven Oraclepatents-in-suit in the their case in California.  (See inter partes Request No. (6) and ex parte Request Nos. (4) to (7)). (more…)

Top 10 Issues for Patent Litigators in 2011

Written by Brandon Baum (Partner at Mayer Brown and Practice Center Contributor).

The end of the year is the time for top 10 lists.  Here, in no particular order, are my top 10 issues for patent litigators in 2011.

10.  Microsoft Corp v. i4i Ltd. Partnership., and the clear and convincing evidence standard where the defendant relies on uncited art.  Will the Supreme Court decide that a lesser burden of proof is required to show invalidity when art was never considered by the USPTO?  If so, this will profoundly change both litigation and prosecution practice.  My favorite possible implication – what presumption applies to a mongrel 103(a) combination of cited and uncited art?  And will the PTO experience a data dump of prior art, if Microsoft prevails?

9.  Global-Tech Appliances v. SEB S.A., and the standard for proving the mental state required for induced infringement.  Whatever language the Supreme Court uses to describe the mental state required to show inducement will send everyone scrambling to prove or disprove the existence of that mental state. (more…)

Rambus Wins Limited Exclusion Order at ITC against NVIDIA, despite Pending Reexaminations

The following post comes from Scott Daniels, a partner at Westerman, Hattori, Daniels & Adrian LLP, Practice Center Contributor and author of Reexamination Alert.

Traditionally, District Court judges have issued permanent injunctions to stop infringement of valid patents, regardless of any pending reexamination of the patent in question.  Only if the rejection of the patent claims in reexamination is “final,” would the courts refuse to enjoin the accused infringer.  A few judges – notably Judge James Cohn of the Southern District of Florida and Judge Sue Robinson of Delaware – have recently shown a willingness to defer a decision on injunctive relief even where the rejection of the patent in reexamination is not final.

The Rambus/NVIDA investigation raises the question of the extent to which the ITC is willing to order relief on the basis of patents that are in reexamination at the PTO.  Unfortunately for NVIDIA, its argument to the ITC that it stay relief against NVIDIA was weak because its attack the Rambus patents by reexamination has been “an incomplete success” (to borrow a phrase from President Carter).

That weakness may account, in part, for NVIDIA’s agreeing at the end of last week to a license to the Rambus patents, effectively concluding the dispute between the parties.  Still, the ITC’s analysis in the Rambus/NVIDA investigation remains of great interest to the IP community, as it suggests that the ITC will be extremely reluctant to withhold relief against infringing imports on the basis of an uncompleted reexamination. (more…)