Archive for the ‘reexamination pendency’ Category

SAP Files Ex Parte Reexamination Request using Prior Art from Ongoing Litigations

Monday, May 6th, 2013

As you may recall from earlier posts, on September 16, 2012, SAP filed a petition for review of U.S. Pat. No. 6,553,350 to begin the first covered business method patent review (CBM2012-00001) under the America Invents Act.  To advance its PTAB trial date, SAP agreed to limit its argument to 35 U.S.C. 101 challenges set forth in its petition and not assert its prior art  challenges in the CBM.

The PTAB trial was held on April 17, 2103, and we are awaiting a decision in that trial.  The Federal Circuit also just decided the appeal in the parallel district court action last week.  The Federal Circuit affirmed the infringement and damages findings by the lower court, but remanded for correction of the injunction ordered by the lower court.

SAP recently filed papers in the PTAB action indicating that it has requested an ex parte reexamination based on its prior art R/3 documentation of the same ‘350 patent.  Ex parte reexamination requests are still prosecuted in the Central Reexamination Unit and using “special dispatch.”  It will be interesting to see if the CRU will be able to expedite these reexaminations in light of the changes brought by the AIA.  One important change being the shift of future inter partes proceedings to the PTAB (legacy inter partes reexaminations are still being completed in the CRU).

AIA Patent Trials Differ from Reexamination

Saturday, April 20th, 2013

In the past few months, I have had discussions with many different stakeholders about how AIA post-grant review differs from conventional reexamination.  AIA patent trials (post-grant review or PGR, inter partes review or IPR, and covered business method patent review or CBM) are substantially different than traditional reexamination.  Some of these differences are summarized in the table below (click on the table to enlarge it):

Other than legacy inter partes reexaminations, the Central Reexamination Unit (CRU) is currently only charged with processing ex parte reexaminations.  What remains to be seen is how ex parte reexamination will change as the CRU processes the legacy reexaminations and its docket frees up.

Declaratory Judgment Plaintiff and Stays Pending Reexamination

Monday, March 12th, 2012

In Interwoven, Inc. v. Vertical Computer Systems, Inc. (Case No. C 10-04645 RS, Northern District of California), Judge Richard Seeborg was less than persuaded by Interwoven’s attempt to obtain a stay after filing an ex parte reexamination of the patents in suit.

BACKGROUND

Vertical owns U.S. Pat. Nos. 6,826,744 and 7,716,629 relating to Internet technologies.  Vertical sued Microsoft in the Eastern District of Texas and settled in 2009.  Later, Vertical informed Interwoven that its products infringed the patents as well.   Interwoven filed a declaratory judgment action in the Northern District of California and Vertical countered with a counterclaim for patent infringement. (more…)

Stay of Litigation Pending Inter Partes Reexamination Warranted Despite Possible Lengthy Reexam Pendency

Thursday, July 21st, 2011

District courts are making increasingly detailed and sophisticated decisions on motions to stay litigation pending reexamination.  One example is the analysis performed in N Spine Inc. and Synthes USA Sales, LLC v. Globus Medical Inc., (1-1–cv-00300 (DED)).  N Spine and Synthes USA Sales (Plaintiffs) sued Defendant Globus for alleged infringement of U.S. Patent No. 7,326,210 (the ‘210 patent) on April 13, 2010.  On December 16, 2010, Globus filed an inter partes reexamination request of the ‘210 patent.  The reexamination was ordered by the Patent Office on February 1, 2011.  On March 2, 2011, a motion to stay the litigation was filed by Globus.  The stay was ordered in spite of a 6 to 8 year pendency of the inter partes reexamination.

Globus argued a number of factors to justify their motion to stay: (more…)