Reexamination

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Fashioning New and Improved Weapons?

Rambus® has been on quite a roll recently, successfully navigating countless legal challenges to their DRAM patent portfolio in the federal courts.  In widely publicized patent based disputes with Infineon, Hynix, Samsung and others, Rambus,® after years of legal wrangling, was successful in securing license fees.  At the same time, Rambus® overcame allegations of fraud in relation to their conduct in the JEDEC standard setting organization. In recent years, Rambus® became subject of antitrust and anti-competitive behavior investigations of the Federal Trade Commission, all of which were concluded favorably to the company.      

More recently, in the continuing campaign to license the industry for their patented technology, Rambus® has taken on Nvidia® in the ITC.  In a decision issued January 22, 2010, Administrative Law Judge Essex issued an initial determination finding that three of the Rambus® patents were infringed, and determined not to be invalid.  These patents are 7,287,109; 6,591,353; and 6,470,405. Interestingly, the USPTO is concurrently reviewing the same patents in inter partes reexamination responsive to Nvidia’s requests of April of 2009.  To the USPTO’s credit these patent reexaminations have proceeded swiftly, reaching a preliminary conclusion (ACP, close of prosecution) in less than 12 months time (finding the claims of these patents obvious over certain prior art i.e., invalid).[1]

Why the inconsistency between the two government bodies?

In short, the standards of proof are different, as are the rules of claim interpretation.  In the ITC and federal district courts, a patent may be invalidated by clear and convincing evidence only, and claims of an issued patent are presumed valid, and construed to preserve their validity.  In the USPTO, the standard of evidence is a preponderance of the evidence, and there is no presumption of validity, hence the attractiveness of patent reexamination to defendants.[2]  

So, with things going well in the ITC, and not so well at the USPTO, how do the ongoing reexaminations impact the ITC?  

It is difficult to predict whether or not the ITC, or, later, the almost certain Nvidia appeal to the Federal Circuit will be in any way impeded by the reexamination status.  If past cases offer any guidance, the ITC is largely unconcerned with concurrent reexamination proceedings, especially at this late stage of the ITC proceeding.  If Judge Newman’s dissent in the recent Fresenius Medical case is to be given weight, the Federal Circuit is likewise inclined to go about its business at least until there is a decision by the USPTO Board of Patent Appeals & Interferences (BPAI); in this regard, the race is clearly on.   However, even assuming the patent reexamination status could be leveraged on appeal, closely watching the situation leads me to believe that Rambus® is very close to unveiling a new weapon in the fight against Nvidia®.
Continue Reading The Rambus Patent Rexaminations

Courts have recently been faced with the issue of whether evidence of parallel reexamination proceedings should be considered at trial.  In our prior post, “Is Evidence of Parallel Reexamination Proceedings Admissible at Trial? (Part I of IV)”, we discussed using pending reexamination proceedings to support invalidity contentions.  Accused infringers have also attempted to use evidence of parallel reexamination proceedings to prove inequitable conduct on the part of the patentee.
Continue Reading Is Evidence of a Concurrent Reexamination Admissible in Litigation? (Part II of IV)

On December 15, 2009, Chief Judge William K. Sessions III of the United States District Court for the District of Vermont denied a stay in the patent litigation between Synventive Molding Solutions, Inc. (“Synventive”) v. Husky Injection Molding Systems, Inc. (“Husky”), Case No. 2:08-cv-136. Husky had filed a motion to stay the patent litigation based…

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…

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…

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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Continue Reading Is Evidence of a Concurrent Reexamination Admissible in Litigation? (Part I of IV)

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
Continue Reading Are Patent Trolls More Vulnerable to Reexamination in the Eastern District of Texas?

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
Continue Reading Effectively Presenting a Request for Patent Reexamination (Part I)

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
Continue Reading Attacking Patent Holder Declaration Evidence via Reexamination