Patent Law Practice Center

Microsoft’s Renewed Challenge to i4i Patent is among Reexamination Requests Filed the Week of August 30th

Here is the latest  installment of Reexamination Requests from Scott M. Daniels, of Reeaxamination Alert and Practice Center Contributor which includes the requests for the week of August 30th…

Most notable among the new requests is one filed by Microsoft against i4i’s U.S. Patent No. 5,787,449 – that’s the famous XML patent that Microsoft was found to infringe last year.  Microsoft was enjoined and ordered to pay i4i $290 million.  A more detailed description of the case is in our posting Saturday on IPWatchdog.

Also quite interesting are requests filed by Public Patent Foundation (PPF) against eight Abbott patents for retroviral protease inhibiting compounds.  PPF is known for targeting pharmaceutical patents that it believes are contrary to the public interest.  Information for seven of the requests appears below; information for the eighth request is not yet available from the Patent Office.  Gene Quinn comments on these requests this week on IPWatchdog. (more…)

Reexamination Requests Filed the Weeks of August 16th and 23rd

Here is the latest  installment of Reexamination Requests from Scott M. Daniels, of Reeaxamination Alert and Practice Center Contributor which includes the requests for the weeks of August 16th and August 23rd….

Reexamination Requests Filed the Week of August 16^th

Most notable among last week’s requests is one filed by Sprint attacking an EMSAT patent for a cellular telephone system.  EMSAT’s patent is the subject of no less than eight separate law suits.  Let’s not forget Rambus, whose patents are reexamined more often than those of any other company.  Last week the requester was Hynix, not NVIDIA.

The following inter partes requests were made:

(1)  95/001,420 (electronically filed) – U.S. Patent No. 6,163,816 owned by FlashPoint Technology, Inc. and entitled SYSTEM AND METHOD FOR RETRIEVING CAPABILITY PARAMETERS IN AN ELECTRONIC IMAGING DEVICE.  Filed August 18, 2010.

(2)  95/000,562 (paper filed) – U.S. Patent No. 7,002,533 entitled DUAL-STAGE HIGH-CONTRAST ELECTRONIC IMAGE DISPLAY.  Filed August 2, 2010 by Dolby Laboratories, Inc. (more…)

CAFC Rules For False Marking Plaintiff In Stauffer Case

Written by Scott Daniels (partner in Westerman Hattori Daniels & Adrian and Practice Center Contributor)

The CAFC (Lourie, Rader & Moore) today removed one of the major hurdles facing individuals pursuing qui tam actions against others for false patent marking.  In Stauffer v. Brooks Brothers, the CAFC ruled that 35 U.S.C. § 292 permits individuals to “stand in the government’s stead, as assignees of the government’s own claims.” There is no requirement for standing under Rule 12(b)(1) that the individual qui tam plaintiff have, itself, suffered injury from the alleged false marking.

Raymond Stauffer had sued Brooks Brothers and its parent company, Retail Brand Alliance, for marking the mechanism on their bow ties with the numbers of two patents, both of which had expired in the 1950’s.  Stauffer asserted that this identification of the patents constituted false marking under § 292, which provides for a fine of not more than $500 per violation.  It also provides that “any person” may sue for that fine, splitting any recovery with the United States.

Defendants moved to dismiss under Rule 12(b)(1), arguing that Stauffer lacked standing.  The trial judge first stated that Stauffer, as a qui tam plaintiff representing the United States, must establish that U.S. has suffered “an injury in fact,” that the injury was caused by Brooks Brothers, and that a court could redress that injury.  The trial judge then found that Stauffer had failed to allege injury to the U.S. in his complaint, and any assertions that Stauffer himself had been injured would not satisfy the standing requirement.  The judge therefore dismissed the case. (more…)

Reexamination Requests Filed the Weeks of August 2nd And August 9th

Here is the latest  installment of Reexamination Requests from Scott M. Daniels, of Reeaxamination Alert and Practice Center Contributor which includes the requests for the weeks of August 2nd and August 9th….

Reexamination Requests Filed the Week of August 9^th

The pace of new reexamination requests slowed a bit this past week.  One of the more interesting is the request filed August 9^th against a design patent owned by Durham for a portion of a cabinet shelf.  As we have previously reported, reexamination of design patents tends to be much more rigorous than original prosecution.  In the case of the Durham patent, the third party requester characterized the patented design as “identical” to the prior art or at least “within the zone of obviousness.”  Interestingly, the third party requester did not attempt, on the basis of recent case law, to assert that the features shown in the drawings are functional and therefore not available to support patentability over the prior art.  (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…)