Patent Law Practice Center

Apple Files Nine Reexamination Requests

We’re posting the latest  installment of Reexamination Requests from Scott Daniels, of Reexamination Alert and Practice Center Contributor a few days early this week in light of the holiday weekend.  Happy Thanksgiving to all!!

Apple has been especially active lately in defending against charges of patent infringement by filing requests for reexamination.  In response to two separate infringement suits in Texas, it filed requests against two Mirror Works patents and three Affinity Labs patents, and for an ITC investigation, it filed requests against four S3 Graphics patents (See Inter partes Request Nos. (1) to (3) & (5) to (6), and Ex parte Request Nos. (16) to (19)).

The following inter partes requests were filed:

(1)         95/001,487 (electronically filed) – U.S. Patent No. 7,751,327 entitled ATHLETIC MONITORING SYSTEM AND METHOD and owned by Affinity Labs. of Texas Filed November 15, 2010, by Apple.  The ‘327 patent is currently the subject of a litigation styled Affinity Labs. v. Nike et al. (E.D. Tex., Case 2:10-cv-54-DF-CE). (more…)

Federal Circuit Keeps Door Open For New Evidence In Section 145 Actions

Jeanne Gills, Partner at Foley & Lardner and Practice Center Contributor, sent along an article she wrote with colleagues, Stephen B. Maebius and Courtenay C. Brinckerhoff discussing the  recent Federal Circuit decision in the Hyatt v. Kappos en banc re-hearing.

On Monday, November 8, 2010, the Federal Circuit issued its decision in the en banc re-hearing of Hyatt v. Kappos (No. 2007-1066)). The en banc Court departed from the August 11, 2009 panel decision and held that a patent applicant may introduce new evidence against the USPTO in a district court action under 35 USC § 145 (“Civil Action to Obtain a Patent”) provided such evidence relates to issues that were raised before the USPTO. This decision will be welcomed by patent applicants who have received negative USPTO decisions on patentability, and reflects the realities—and difficulties—of marshalling evidence during patent prosecution. For additional background on the appeal, see Hyatt v. Kappos: Will a Bad Case Make Bad Law?.

The Panel Decision

After the USPTO Board of Patent Appeals and Interferences affirmed certain rejections of his patent application claims, Mr. Hyatt filed an action in the U.S. District Court for the District of Columbia under 35 USC § 145. To support his claim for a patent, Mr. Hyatt submitted a declaration to address the rejections. The district court granted the USPTO’s motion to exclude the declaration because Mr. Hyatt had been negligent in not submitting it during the USPTO proceedings. (more…)

New BPAI Appeal Rules Proposed

The following post comes from Scott A. McKeown, partner at Oblon Spivak, Practice Center Contributor and writer for Patents Post Grant.

Rules for Ex Parte Appeals to be Simplified

In recent years, the USPTO has advanced significant changes to the rules of practice for ex parte appeals to the Board of Patent Appeals & Interferences (BPAI). (previously proposed appeal rules). The past proposal was not exactly greeted with enthusiasm by stakeholders. In response, today’s Federal register includes a new, and much improved, ex parte appeals rule package. (here)

The new proposal, consistent with the spirit of Director Kappos’ administration to date, advances a refreshing change of pace. Previously the Office proposed increased formality and bureaucratic hurdles seemingly geared toward making USPTO appeal practice more burdensome and expensive to Applicants. The new rules, like many of the proposals of the Kappos regime, advance common sense solutions designed to simplify appeal. Yet, one of the proposed revisions could be used to frustrate the statutorily mandated special dispatch to be accorded ex parte patent reexaminations. (more…)

Samsung Attack On Two Mobile Phone Antenna Patents Owned By Fractus Among The Reexamination Requests Filed The Week Of November 8th

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

Last year Fractus S.A of Spain sued Samsung and a host of other mobile telephone makers in the Eastern District of Texas for infringing nine patents related to internal antennas for mobile telephones.  Samsung has now filed reexamination requests against two of those Fractus patents (Inter partes Request Nos. (1) & (2) below).  Requests for reexamination have now been filed against all nine Fractus patents-in-suit.

Also of special interest are reexamination requests filed by TiVo against two EchoStar patents for TV programming (Ex parte Request Nos. (3) & (5) below).

The following inter partes requests were filed: (more…)

Reexamination Requests by Whirlpool against Two LG Refrigerator Patents among those Filed the Week of November 1st

Here is the latest  installment of Reexamination Requests from our friends at Reexamination Alert….

The most commercially significant requests filed last week are likely the ones filed by Whirlpool against two LG refrigerator patents (Inter partes Nos. (4) & (5) below).  LG sued Whirlpool for infringement of those patents a little more than a year ago.  In early 2008, Whirlpool filed an ITC complaint against LG for several patents covering refrigerators (Inv. No. 337-TA-632), and in February of this year, the Commission issued its final determination finding no violation of Section 337.

Also of interest is a request filed by DexCom against an analyte sensor patent owned by TheraSense (Ex parte No. (9)).

The following inter partes requests were filed: (more…)