Earlier this month, a federal judge in Florida cited to the PTO’s Ex Parte Reexamination Filing Data in denying an accused infringer’s request for a stay pending reexamination of the patent-in-suit. Fusilamp, LLC v. Littlefuse, Inc., Case No. 10-20528 (S.D. Fla. June 7, 2010). Judge Cecilia M. Altonaga pointed out that statistics show that
The Benefits of Inter Partes Patent Reexamination
As a review for new readers, some IPR basics.
Reexamination allows the USPTO to reconsider the patentability of at least one claim of an existing patent. Congress intended reexaminations to provide an important quality check on patents that would allow the government to remove defective and erroneously granted patents. Upon making a reexamination determination, the USPTO may confirm or cancel original patent claims or allow claims as amended or newly added. There are two types of reexamination proceedings: ex parte and inter partes. An inter partes reexamination, in contrast to the ex parte reexamination, provides the third party requester to participate throughout the proceedings, including appeals. The results of inter partes reexamination are binding on the third party requester in any subsequent or concurrent civil action. The goal of reexamination is to permit efficient resolution of questions about the patentability of issued patent claims without recourse
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Microsoft Just can’t Catch a Break in Patent Reexamination
Parallel Networks Case Moves Forward in Marshall Texas Despite Pending Appeal of Patent Reexaminations
As if the i4i issue wasn’t enough of a Texas debacle for Microsoft on May 10, 2010, Judge David Folsom of the U.S. District Court for the Eastern District of Texas, Marshall Division, denied Microsoft’s Motion to Continue the Stay of their litigation with Parallel Networks pending reexamination of the Patents-in-Suit (U.S. Patent Nos. 5,894,554 (the “‘554 patent”) and 6,415,335 (the”‘335 patent). The Parallel Network patents are directed to systems and methods for managing dynamic websites.
Parallel’s patent infringement suit was temporarily stayed while a venue dispute was settled relative to copending actions in the Delaware District Court.
The USPTO has rejected all of the claims in Reexamination Control Nos. 90/008,574 (the “‘554 patent reexamination”) and 90/008,568 (the “‘335 patent reexamination”). Both cases are now on appeal to the BPAI. The case is rather unremarkable
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ND California Stay Pending Patent Reexamination Crapshoot Continues
United States District Court for the Northern District of California, San Francisco Division Judge Richard Seeborg issued an Order on April 26, 2010 denying a motion to stay Ultra Products, Inc. v. Antec, Inc. (Civil Action No. C 09-04255 RS) pending the outcome of a possible inter partes reexamination of the patent-in-suit, U.S. Patent No. 7,133,293 (the “‘293 patent”). The ‘293 patent is directed to a modular computer power supply that is designed to reduce problems with personal computer cords. A decision on a refiled request for inter partes reexamination dated March 29, 2010 based on Neo-Power 480 materials has not yet been made by the USPTO. In his decision to deny the stay of the patent infringement litigation, Judge Seeborg weighed three factors. The first two factors involve whether a stay would unduly prejudice or present a clear tactical advantage to the nonmoving party and will simplify the issues in question and trial of the case. The third factor is whether discovery is complete and a trial date has been set. He concluded that taken together these factors weigh against a stay of the patent litigation. The judge exercised his discretion to deny the motion for stay on the basis that the stay would threaten
Continue Reading ND California Stay Pending Patent Reexamination Crapshoot Continues
CAFC Applies The Wrong Claim Interpretation Standard in Patent Reexamination
In re Suitco Surface, Inc. (Fed. Cir. 2010)
Yesterday, the CAFC issued a decision in ex parte reexamination 90/007,015 appeal (U.S. Patent 4,944,514). The decision (In re Suitco Surface Inc) is interesting in that the broadest reasonable interpretation of the USPTO was reversed as clearly unreasonable, yet that is the least interesting aspect of the case. In deciding the case, both the BPAI and CAFC applied the wrong standard altogether.
As background, the patent relates to a flooring surface for use on athletic courts, namely bowling alleys and shuffleboard. The key term in dispute being “material for finishing the top surface.” The Patent Holder insisted that the material for finishing the top surface must be defined as the uppermost surface. The USPTO countered that the broadest reasonable interpretation did not require an uppermost surface, but simply the finishing of a general floor surface (such as the lower layer of a laminate type floor). The USPTO reasoned that the term “comprising” is open ended and additional floor layers were possible.
In reversing the BPAI, the CAFC noted that:
“[t]he PTO’s construction here, though certainly broad, is unreasonably broad. The broadest-construction rubric coupled with the term “comprising” does not give the PTO an unfettered license to interpret claims to embrace anything remotely related to the claimed invention. Rather, claims should always be read in light of the specification and teachings in the underlying patent. See Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 217 (1940) (“The claims of a patent are always to be read or interpreted in light of its specifications.”). In that vein, the express language of the claim and the specification require the finishing material to be the top and final layer . . .”
The CAFC determined that claim 1 was unreasonably interpreted based on the USPTO claim construction of “material for finishing a top surface.” However, the CAFC affirmed the rejection of claims 4 and 6 based on a broadest reasonable claim construction of the terminology “uniform flexible film.”
While the CAFC’s emphasis on specification context for reexamination is certainly noteworthy, lost in the appeal to both the BPAI and CAFC is that the broadest reasonable interpretation standard is not applicable to the Suitco Patent. This is because
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Judge Refuses to Reconsider Denial of Stay of Patent Litigation Pending Patent Reexamination
On March 23, 2010, Judge Timothy C. Batten Sr. of the U.S. District Court for the Northern District of Georgia refused to revisit his decision of February 22, 2010 to deny a stay of Optimum Processing Solutions, L.L.C. v. Advanced Micro Devices, Inc. et al. (Case No. 09-cv-01098) pending the outcome of reexamination of the
The One-Two Reexamination Punch Knocking Out Plaintiffs
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Another week, another patent litigation stayed in a California court pending a concurrent USPTO reexamination. This week, Judge M. James Lorenz of the U.S. District Court for the Southern District of California has ordered a stay of the patent litigation between Synthes and GM Dos Reis
The New Texas Two-Step
–E.D. of Texas Defendants Seek to Ride Off Into the Sunset–
The E.D. of Texas is well established as the premiere plaintiff forum for patent holders, speedily deciding patent cases, and finding patents invalid relatively infrequently. Similarly, the emergence of patent reexamination as an effective tool in avoiding litigation costs by staying a concurrent litigation
Seeking a Stay of Patent Litigation: A Factors-Based Analysis
Guest Posting by Scott McBride of McAndrews Held & Malloy [1]
Conference Center February 11-12, 2010. The views expressed herein are not necessarily the views endorsed or supported by McAndrews, Held & Malloy, Ltd. nor any of its clients.
FotoMedia Patents Finally Rejected in Reexamination
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