Patents Post Grant Blog

Third Reexamination Confirms Validity of Convolve Patent

The U. S. Patent and Trademark Office (USPTO) has again confirmed the validity of an MIT patent, U. S. Patent 4,916,635 (‘635), licensed to Convolve, Inc. of Armonk, NY. Convolve and MIT asserted the ‘635 patent in an infringement suit against Seagate Technologies, LLC and Compaq Computer Corporation filed on July 13th, 2000, in Federal Court, Southern District NY. The PTO issued the Reexamination Certificate for the ‘635 patent on November 29th, 2010.

“This is the third failed attempt by Seagate to invalidate this patent in order to reduce their potential damages in our ongoing infringement litigation. We are looking forward to our jury trial,” said Neil Singer, Ph.D., president of Convolve and one of the inventors of the technology in this lawsuit.

Convolve and MIT accused Seagate and Compaq of infringing the ‘635 patent and another patent, as well as misappropriating Convolve’s trade secrets. The plaintiffs are seeking damages of high hundreds of millions of dollars, and more than 10 years of pre-trial interest, attorneys’ fees and enhanced damages for willful infringement.

“The PTO’s confirmation of the Convolve patent claims in its first office action, without a Convolve response, appears to signal an end to the tortuous reexamination process initiated by Seagate,” said Todd Baker, counsel for Convolve in all three reexaminations.

“Patent Reexamination as a Cost Effective Litigation Tool” Osaka Japan

Scott McKeown will present Patent Reexamination as a Cost Effective Litigation Tool at the Japanese Intellectual Property Association (JIPA) Program in Osaka Japan October 27, 2010. (JIPA lecture, Kanto D7 course, US Patent Litigation).

Board of Patent Appeals & Interferences Reverses All Rejections of QPSX Patent Reexamination

On October 20, 2010, the Board of Patent Appeals and Interferences handed a win to QPSX Developments 5 Pty Ltd, reversing all pending rejections in the reexamination of U.S. Patent No. 5,689,499. Reexam Control No. 90/008,233, Appeal No. 2010-003021.

The ‘499 Patent has been subject to two litigations. In the first case, 2:05-cv-268-TJW in the Eastern District of Texas, QPSX asserted the ‘499 Patent against several companies including Juniper Networks, Inc., Nortel Networks, Inc., Lucent Technologies, Inc., Cisco Systems, Inc., and Alcatel USA, Inc. All parties except Nortel settled before trial. In April 2007, a jury found that Nortel willfully infringed the ‘499 Patent and Nortel had not proven invalidity. The parties settled prior to entry of final judgment. A second action, 2:07-cv-118-TJW, is still pending and has been stayed pending the results of the reexamination proceedings. All parties in the second action except Ericsson have settled.

Scott McKeown is reexamination counsel to QPSX and argued the appeal on July 14, 2010.

Reissue and Reexamination Strategies and Tactics with Concurrent Litigation 2011

Scott McKeown will co-chair the Practicing Law Institute’s (PLI) Reissue and Reexamination Strategies and Tactics with Concurrent Litigation 2011 January 10, 2011 in San Francisco; and February 4, 2011 in New York. Scott will discuss pre-trial and post-trial litigation strategies. Todd Baker will also discuss reissue and ex parte reexamination practices. Click here for registration details.

Motorola Corporation Settles All Litigation with Research in Motion (RIM)

On June 11, 2010, Motorola Corporation and RIM jointly announced the global settlement of all patent litigation between the two companies: see Press Release

The litigation, conducted at the ITC and district court level, involved 17 Motorola patents made subject to ex parte reexamination By RIM. Scott A. McKeown, is lead reexamination counsel for Motorola and a partner and team leader of the reexamination practice group at Oblon, Spivak, McClelland, Maier & Neustadt.

Reissue and Reexamination Strategies and Tactics with Concurrent Litigation 2010

Stephen Kunin, Scott McKeown, Todd Baker and Vince Shier will be speaking at the Practicing Law Institutes’s (PLI) Reissue and Reexamination Strategies and Tactics with Concurrent Litigation Seminars January 11-12, 2010 in San Francisco; February 11-12 in New York and March 11-12 in Chicago. Click here for registration details.

Scott A. McKeown of Oblon, Spivak will be speaking at the Patent Law Institute (4th Annual) on “Inter Partes Reexamination – A Highly Effective Tool in the Litigator’s Toolbox”.

Reexamination of Financial Systems Technology (FST) Database Patent Favorably Concluded
USPTO Confirms Validity of All Claims as Originally Issued

U.S. Patent No. 5,826,259 (‘259 Patent) owned by Financial Systems Technology (FST) was confirmed valid by the USPTO; a Notice of Intent to Issue a Reexamination Certificate was issued on September 18, 2009. The ‘259 Patent relates to relational database technology and is asserted against Oracle the United States District Court for the Eastern District of Texas.

Of note, the USPTO reexamination once again confirmed the ‘259 Patent valid without amendment to the originally issued claims.

“The ‘259 Patent has now been reexamined twice by the USPTO at the request of Oracle. Each instance of reexamination has only served to reinforce the strength of this patent.” said Scott A. McKeown, is lead reexamination counsel for FST and partner with the reexamination practice group of Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P.

For a background of the litigation and reexamination history, follow the link.

The ongoing infringement action is before Judge Ward of the Eastern District of Texas.

Visto Corporation Settles Global Patent Litigation with Research in Motion (RIM) for $267.5 Million

Visto Corporation and RIM jointly announced today the global settlement of all patent litigation between the two companies: see Press Release

In March 2009 Visto acquired Good Technology, Inc., from Motorola. The combined companies now operate together under the name Good Technology.

Scott A. McKeown, is lead reexamination counsel for Good Technology and manages their U.S. patent portfolio. Scott is a partner and team leader of the reexamination practice group at Oblon, Spivak, McClelland, Maier & Neustadt.

USPTO Trumps Federal Circuit on DyStar and Determines Patent Claims Valid

On December 23, 2008, the United States Patent and Trademark Office (USPTO) issued a reexamination certificate for United States Patent 5,586,992. The ‘992 patent relates to a method of indigo dyeing previously held invalid by the Federal Circuit (DyStar Textilfarben GmbH & Co. Deutschland KG v. C. H. Patrick Co., 464 F.3d 1356, 1360, 80 USPQ2d 1641, 1645 (Fed. Cir. 2006)). The Federal Circuit’s DyStar decision is noteworthy as a timely precursor, clarifying the court’s obviousness jurisprudence while KSR v. Teleflex remained pending before the Supreme Court.

In the corresponding reexamination, the USPTO considered the Federal Circuit’s claim interpretation and analyzed the same prior art before the Federal Circuit. Nevertheless, the USPTO arrived at a different conclusion, disagreeing with key factual issues analyzed by the Federal Circuit in relation to obviousness. Specifically, the USPTO arrived at a factual determination as to the meaning of “used at once for dyeing” that was different from the interpretation previously provided by the Court. In so doing, the USPTO confirmed the patentability of three claims, allowed three amended claims, and fifteen new claims.

“We are pleased that the examiner acknowledged the patentability of the invention,” said Vincent Shier, partner and leader of Oblon, Spivak’s Chemical Reexamination Practice. “The ‘992 patent revolutionized indigo dyeing with a greener, more cost-efficient dyeing method. This decision by the USPTO ensures that DyStar retains its rightful patent monopoly over its innovative dyeing process.”

According to Dick Kelly, managing partner, “This result demonstrates the cutting edge capability of Oblon, Spivak’s Reexamination Practice Group.” Oblon, Spivak’s Reexamination Practice Group is chaired by Stephen G. Kunin, former Deputy Commissioner for Patent Examination Policy at the USPTO.

PTO Reexamination Finds Convolve Patent Valid

The U.S. Patent and Trademark Office (USPTO) concluded reexamination of U.S. patent 6,314,473 on August 20, 2008, providing a Notice to Issue a Reexamination Certificate (NIRC) to Convolve, Inc. of Armonk, NY. The reexamination was initiated by Seagate Technologies, LLC.

This is the second proceeding before the USPTO involving Convolve’s patent portfolio. In August 2007, the Board of Patent Appeals and Interferences (BPAI) found in favor of Convolve and against Seagate in an interference involving an application related to the ‘473 patent.

In the reexamination, the validity of the ‘473 patent’s issued claims was confirmed by the USPTO, without change to the originally issued claim scope. “I am extremely pleased with the PTO results, confirming the strength and validity of our patent. It is a key finding in our patent infringement suit against Seagate and Compaq,” said Neil Singer, Ph.D., president of Convolve and one of the inventors of the technology at issue.

“This patent portfolio has held up under intense scrutiny by both the Central Reexamination Unit and the BPAI. These validity findings substantially strengthen the Convolve patent portfolio,” said Todd Baker, a partner with Oblon, Spivak. Oblon, Spivak represented Convolve in both the reexamination and in the earlier interference.

Convolve is seeking damages in a lawsuit against Seagate and Compaq Computer Corp. in which Convolve alleges infringement of the ‘473 patent and one other patent, as well as numerous trade secret misappropriations, all involving Convolve’s proprietary disk drive technologies, and claims of breach of contract. A trial date is pending in federal court.

On June 18, 2008, Convolve filed a separate patent infringement lawsuit against Dell Computer, Western Digital, Hitachi Global Storage Technologies, Inc., and Hitachi Ltd., asserting the ‘473 and another patent.

U.S. Patent & Trademark Office Confirms Validity of Visto Corporation Patents

The U.S. Patent and Trademark Office has concluded the reexaminations of U.S. Patents 7,039,679 and 6,151,606 on August 21, 2008, communicating Notices to Issue a Reexamination Certificate (NIRC) to Visto Corporation of Redwood City, Calif. Notably, the ‘679 and ‘606 patents are asserted against Research in Motion (RIM) in an ongoing infringement action before the Eastern District of Texas.

Validity of the ‘679 patent was confirmed without amendment of the originally issued claims, with five new claims also being confirmed. In addition, the reexamination of the ‘606 patent resulted in the confirmation of over forty claims.

“The PTO has terminated these exhaustive reexaminations, reaffirming the patentability of Visto’s inventions. Such a validity confirmation, in view of significant amounts of prior art and intensive USPTO oversight, speaks volumes to the strength of Visto’s pioneering portfolio,” said Scott A. McKeown, lead reexamination counsel for Visto, and a partner with Oblon, Spivak, McClelland, Maier & Neustadt, P.C.

Last month, a Federal Court in Texas stayed the ongoing litigation between Visto and RIM.

In exchange for the stay, however, RIM stipulated that they will not seek further reexamination of these patents at the USPTO; nor can it revisit patent validity at trial based on the art considered in these reexaminations.