US PTO Litigation Alert™

Norman IP Privacy Patent Challenged, Week of May 13, 2013

Scott Daniels — Mon, 20 May 2013 13:28:40 +0000

Norman IP Holdings has filed many lawsuits alleging infringement of U.S. Patent No. 5,592,555, most recently in a case filed in Texas last Monday against ADTRAN, Inc. On Wednesday Creston Electronics requested inter partes review of the ‘555 patent (see inter partes review Request No. (1)) The patent, which claims methods for “privately communicating signals [...]

Ariosa Diagnostics Attacks Verinata Fetal Testing Patent, Week of May 6, 2013

Scott Daniels — Mon, 13 May 2013 14:06:19 +0000

Ariosa Diagnostics filed two requests for inter partes review of U.S. Patent Nos. 8,318,430 owned by Verinata Health, one challenging claims 1-18 and the second, claims 19-30 (see inter partes review Request Nos. (11) & (12)). The ‘430 patent claims methods for detecting fetal abnormalities by testing a maternal blood sample for the number of [...]

Judge Grewal Compromises in Prosecution Bar Cases

Scott Daniels — Thu, 09 May 2013 14:54:48 +0000

Disputes over the role of infringement litigation counsel in parallel reexamination/review proceedings at the Patent Office are becoming commonplace. The patent owner typically prefers that its lawyers who are handling the litigation also work on the prosecution before the PTO – they hope to minimize attorney fees and to avoid conflicting arguments in the two [...]

Board Takes “Hard Line” with Patent Owners in IPR Institution Decisions

Scott Daniels — Mon, 06 May 2013 14:13:21 +0000

We have previously commented that the Board has been strict with petitioners in its decisions on whether to institute inter partes review. Inter partes review is denied where the petition fails to abide by all the formal requirements prescribed by the PTO Rules, or where it fails to clearly explain and link the claim limitations [...]

Sprint Requests Reexamination for Three More Comcast Patents, Week of April 29, 2013

Scott Daniels — Mon, 06 May 2013 14:05:35 +0000

Last Monday we reported that Sprint had requested ex parte reexamination of two telecommunications data accessing patents owned by Comcast IP Holdings. Sprint has since requested reexamination of three more Comcast patents (see ex parte Request Nos. (2), (3) & (8)). The two companies are involved in an infringement action in Delaware, related to the [...]

Is the APJs’ Decision to Institute Design Patent IPR also their Final Decision?

Scott Daniels — Tue, 30 Apr 2013 15:51:03 +0000

The APJs’ decision last week to institute inter partes review in Munchkin, Inc. et al. v. Luv’n Care, Ltd., IPR2013-00072 (involving Patent D617,465 for a baby’s drinking cup) has drawn a good deal of attention as the first IPR of a design patent, and rightfully so. If earlier experience with reexamination of design patents is [...]

Sprint Challenges Two Comcast Patents, Week of April 22, 2013

Scott Daniels — Mon, 29 Apr 2013 14:01:17 +0000

Last Wednesday Sprint requested ex parte reexamination of two Comcast patents that claim methods for accessing telecommunications data (see ex parte Request Nos. (3) & (4)). Comcast has sued Sprint in Delaware for infringement of the patents. Sprint’s choice of ex parte reexamination over inter partes review is noteworthy. Also on Wednesday, InvenSense requested inter [...]

Volkswagen Challenges Cruise Control Tech. Patent, Week of April 15, 2013

Scott Daniels — Mon, 22 Apr 2013 13:57:31 +0000

Volkswagen has requested ex parte reexamination of U.S. Patent No. 6,324,463 that is owned by Cruise Control Technologies and claims cruise control indicators (see ex parte Request No. (3)). Cruise Control has sued VW, as well as BMW and Audi, for infringement of the ‘463 patent. Ariosa Diagnostics requested a second inter partes review of [...]

APJs Deny Request to Add New Grounds to Inter Partes Review

Scott Daniels — Mon, 15 Apr 2013 15:19:39 +0000

The APJs have shown a determination to enforce the inter partes review rules strictly, in order to prevent their dockets from becoming unmanageable. Their recent decision in Research In Motion v. MobileMedia Ideas, IPR2013-00016, is a good example. In March the APJs instituted the review, finding that RIM had demonstrated a likelihood that it would [...]

Esoterix DNA Amplification Patents Challenged, Week of April 8, 2013

Scott Daniels — Mon, 15 Apr 2013 13:41:32 +0000

On Friday Life Technologies requested ex parte reexamination of two Esoterix Genetic Labs patents, both entitled “Universal Primer Sequence For Multiplex DNA Amplification” (see ex parte Request Nos. (7) & (8)). An infringement action involving those patents is currently pending in North Carolina. Esoterix’ patents were originally owned by Genzyme Corporation. Volkswagen seeks inter partes [...]