FotoMedia Technologies, LLC (“FMT”) owned by Scenera Research, has asserted U.S. Patent Nos. 6,018,774, 6,542,936 and 6,871,231 purportedly covering photo-sharing websites against more than 60 companies, including inter alia AOL, CBS, Yahoo, Sprint, Nokia, and Scripps in a number lawsuits in the United States District Court for the Eastern District of Texas (Marshall) in 2007
Is the Declaration of an Interference Enough to Stay a District Court Litigation?
In a growing trend, district courts are using their discretion to deny motions to stay patent infringement litigation in light of concurrent proceedings at the USPTO. In an earlier post, we commented on the Northern District of California’s deviation from that trend. In Advanced Analogic Technologies, Inc. v. Kinetic Technolgies, Inc., the concurrent proceeding was an inter partes reexam. In LG Electronics USA Inc. et al (“LG”) v. Whirlpool Corporation (“Whirlpool”) (Case No. 1-08-cv-00234), the defendant’s motion to stay was denied consistent with the trend to deny such motions and the concurrent proceeding was an interference. Judge Gregory M. Sleet of the District Court of Delaware denied Whirlpool’s motion to stay pending the outcome of an interference involving LG’s patents-in-suit. The patents-in-suit are
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Cook’s Patent Litigation Against Endologix Stayed Pending Reexamination of the Stent Patents-in-Suit
The U.S. District Court for the Southern District of Indiana in Cook, Inc. v. Endologix, Inc. (Case No. 1:09-cv-01248) has stayed the litigation of Cook’s stent patents pending the outcome of the ex parte reexaminations of the patents-in-suit. U.S. Patent Nos. 5,755,777 and 5,035, 706 (now expired) have been asserted by Cook against Endologix’s Powerlink
Is Evidence of a Concurrent Reexamination Admissible in Litigation? (Part I of IV)
Several courts have recently been faced with the issue of whether evidence of parallel reexamination proceedings should be admissible at trial. Parties in these cases have attempted to use the existence of pending reexamination proceedings to prove or disprove invalidity, inequitable conduct, and willful infringement. Opponents generally argue that evidence of parallel reexamination proceedings is irrelevant, unfairly prejudicial, and/or contrary to the statutory presumption of validity under 35 U.S.C. § 282.
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District Court Grants Stay Prior to Grant of Request for Reexamination
The U.S. District Court for the Southern District of Georgia in E-Z-GO v. Club Car, Inc. (Case No. 1:09-cv-119) has stayed the litigation of E-Z-GO’s patent pending the outcome of inter partes reexamination. E-Z-GO asserts that two of Club Car’s currently marketed electric vehicles infringe U.S. Patent No. 7,332,881, entitled “AC Drive System for Electrically
Are Patent Trolls More Vulnerable to Reexamination in the Eastern District of Texas?
The competitive relation between the litigants is a recurring theme of E.D. of Texas determinations on whether or not to grant a motion to stay the infringment action in view of a pending reexamination. In other words, where the litigants are direct competitors, the trend has been to deny motions for staying the litigation.
As noted in Motorola Inc v. Vtech Communications, Inc. et al (5-07-cv-00171) E.D. TX,(Order) (Craven, C.)
Stays of proceedings are not favored when parties are competitors. Nidec Corp. v. LG Innotek, Co., 2009 WL 3673433, * 4 (E.D. Tex. Apr. 3, 2009); O2 Micro Int’l Ltd. v. Beyond Innovation, 2008 WL 4809093, *2 (E.D. Tex. Oct. 29, 2008) (“The parties are direct competitors in the market and a denial of timely enforcement of the plaintiff’s patent rights does indeed
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Forum Shopping in Anticipation of Concurrent Reexamination
In recent posts, we have discussed the Northern District of California’s surprising stay of a patent infringement suit in view of an undecided reexamination request. Likewise, our colleagues at the ITCblog have discussed the opposite extreme, the International Trade Commission (ITC). The ITC seems to grant stays pending reexamination in only the most extreme of circumstances due to their statutorily mandated time to decision.
In the Eastern District of Texas, stays although historically disfavored, are beginning to emerge in stipulated form.
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Effectively Presenting a Request for Patent Reexamination (Part I)
The purpose of a reexamination request is quite simple, to present Substantial New Questions (SNQs) of patentability relative to some or all of the claims of an issued patent. An effective reexamination request presents SNQs in a straight forward fashion, in a manner consistent with Office guidelines set forth in the MPEP. If effectively presented, the Office adopts the SNQs, which form the basis of an order granting reexamination of the issued patent.
The rules of practice require that the content of an ex parte request include the components of rule 37 C.F.R. § 1.510, and for inter partes, the components of rule 37 C.F.R. § 1.915. Regardless of the type of request, each must include “a statement pointing out each substantial new question of patentability based on the cited patents and printed publications, and a detailed explanation of the pertinency and manner of applying the patents and printed publications to every claim for which reexamination is requested.”[1]
In other words, the Office reviews reexamination requests for certain key information. Thus, practitioners should understand the Office perspective relative
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Attacking Patent Holder Declaration Evidence via Reexamination
It is well established that patent reexamination is limited in scope, by statutory definition, to unpatentability issues presented by patents and printed publications. In other words, invalidity and/or unenforceability issues relating to inequitable conduct, public use or sale[1], subject matter eligibility, enablement and best mode are generally[2] outside the scope of patent reexamination (See 37 C.F.R. §§1.552 & 1.906). Yet, a little known exception to these bright line rules exists with respect to previously submitted declaration evidence; an exception that has recently been narrowed even further.
MPEP 2258.01, in its current form, describes the right of a third party to attack the sufficiency of original prosecution declaration evidence as a basis for a reexamination request
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Use of Assignee Consent and Oath/Declaration from Parent Reissue Application in a Continuation Reissue- Is there an Exception to MPEP § 1451?
MPEP § 1451 cautions applicants against filing a copy of the oath/declaration and assignee consent from the parent reissue application when a continuation reissue is filed without abandonment of the parent reissue application. It indicates that in such circumstances OPIE should accord a filing date to the continuation reissue application and send out a notice