IPO Webinars on New Inter Partes Proceedings, Today and Tomorrow
Scott Daniels | February 21, 2012
The Intellectual Property Owners Association is sponsoring two webinars, today and tomorrow, on the PTO’s recently proposed rules for the new AIA inter partes proceedings. Today, starting at 2:00 PM, the session will consider the preliminary phase of those proceedings, from filing through institution. Tomorrow’s session will cover the trial phase, i.e., the period after institution through conclusion.
Most notably, the webinar panelists include Administrative Patent Judge Michael Tierney who was a key figure in drafting the rules proposed for the new proceedings.
See the following link to register for one or both of the sessions: http://www.ipo.org/AM/Template.cfm?Section=Search&Template=/CM/HTMLDisplay.cfm&ContentID=32203.
Skype Challenges to Three Eidos Communications Patents among the Reexamination requests Filed Week of February 13, 2012
Scott Daniels | February 21, 2012
Skype has requested reexamination of three telephone voice message patents owned by Eidos Communications (see inter partes Request Nos. (5), (7) & (8). An infringement action by Eidos against Skype has been pending before Judge Sue Robinson in Delaware since 2009.
Xilinx filed a request against a mobile network patent owned by Intellectual Ventures (see inter partes Request No. (9)). The two parties are involved in infringement litigation, but it is not yet clear whether this patent is part of that litigation. Xilinx has aggressively pursued reexamination against a number of IV patents.
An undisclosed party requested reexamination of two semiconductor patents owned by DRAM Memory Technology (see ex parte Request Nos. (11) & (12). DRAM has sued Hynix and a large number of other companies for infringement of those patents.
The record for the fastest reexamination request was tied last Tuesday when an un-named third party requested reexamination of U.S. Patent No. 8,116,906 that issued the same day to Pevco Systems International (see ex parte Request No. (9)).
It’s Still the Trial Judges Who Decide Reexamination Stay Motions
Scott Daniels | February 16, 2012
We were initially excited to see CAFC’s recent order in Synqor v. Artesyn Techs., denying the accused infringer’s motion to stay the appeals, pending completion of inter partes reexaminations of two of the five patent-in-suit. A jury had found the five patents to be valid and infringed, and awarded damages to the patentee. In the meantime, the patentee is appealing to the PTO Board of Appeals the reexamination rejection of the claims of two of those patents. Reexaminations of the other three patents are still pending before the reexamination examiner.
In its motion to the CAFC appeals, the accused infringer argued that those appeals would be best considered once the five reexaminations had been completed. Judge Moore, speaking for the CAFC, took a hard stance against the accused infringer, characterizing the remaining 10-14 month pendency of the two appeals to the PTO Board as “lengthy” and the requested stay as “unwarranted.” The possibility of simplification of issues from the reexaminations was not even mentioned.
PTO Requests Public Comment on Proposed Rules for AIA Post-Issuance Proceedings
Scott Daniels | February 13, 2012
The PTO has now published a lengthy set of proposed rules for administering the various post-issuance proceedings created by the America Invents Act (AIA) – supplemental review, inter partes review, post-grant review, covered business method patents, and derivation. If you have time to read just one notice, choose the “Practical Guide for Proposed Trial Rules.” It was issued Thursday and summarizes the procedures to be followed in the latter four inter partes-type proceedings. (Incidentally, acronyms will be important to master: e.g., PO = patent owner, IPR = inter partes review, PGR = post-grant review, CBM = covered business method patents).
The most useful item in the Guide is a time line for a typical proceeding.
