Download Order: Motion for Preliminary Injunction; 2010-08-31; Denied; FLSD; District Judge Cecilia M. Altonaga; Fusilamp, LLC v. Littelfuse, Inc., et. al. (1-10-cv-20528) FLSD

Plaintiff Fusilamp, LLC’s filed a motion for preliminary injunction June 24, 2010 requesting the court to enjoin defendants, Littelfuse, Inc. and Catalina Performance Accessories, Inc. from infringing United States Patent No. 5,598,138 covering a fault-indicating blade fuse, typically used in automobiles. Fusilamp  initially filed its complaint alleging patent infringement, declaratory judgment, and breach of contract on February 19, 2010. Shortly thereafter, Littelfuse filed a request for an ex parte reexamination of the ‘138 Patent. On May 20, 2010, the PTO granted and ordered reexamination of all requested claims.

By the court’s standard, to prevail on a motion for preliminary injunction, the plaintiff must show: (1) a substantial likelihood of success on the merits of the underlying case, (2) the movant will suffer irreparable harm in the absence of an injunction, (3) the harm suffered by the movant in the absence of an injunction would exceed the harm suffered by the opposing party if the injunction issued, and (4) an injunction would not disserve the public interest. The failure of the movant to establish even one of the four factors “would, standing alone, make preliminary injunctive relief improper.” Siegel v. LePore, 234 F.3d 1163, 1176 (11th Cir. 2000). A plaintiff alleging patent infringement demonstrates a substantial likelihood of success by showing: (1) the patent is likely to withstand a challenge to its validity; and (2) the plaintiff will likely prove the defendant is infringing the patent. See Amazon.com v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1350 (Fed. Cir. 2001).

Fusilamp USA maintained the ‘138 Patent was likely to withstand a challenge to its validity because it is presumed valid, and this presumption exists at every stage of the litigation. In response, Littelfuse pointed to the reexamination order granted by the PTO and examples of prior art that it contended undermined the patentability of an integrated light-emitting fault indicator fuse.

The court acknowledged that, at a trial to determine the validity of a patent, a patent is presumed valid under 35 U.S.C. § 282 and the burden is placed on the alleged patent infringer to overcome the presumption by clear and convincing evidence. However, the court found that this is not the same burden an alleged infringer must meet when it defends against a motion for preliminary injunctive relief. That is, the alleged infringer must only establish the existence of a substantial question as to the invalidity of the patent.

On this issue, the court found that, while the PTO’s decision to reexamine the ‘138 Patent is not dispositive on the issue of validity, it is relevant to whether a substantial question of invalidity has been raised:

“In arriving at its reexamination decision, the PTO considered the prosecution history of the ‘138 Patent and recognized a lack of clarity regarding an amendment to the original application as well as certain statements made by the patent applicant as to the novelty of the incorporated light-emitting electrical device … That the PTO has ordered a reexamination of the ‘138 Patent on grounds of patentability supports Fusilamp’s assertion of a substantial question regarding the patent’s validity.” Order p. 7 (citations omitted).

Ultimately the court found that the presumption of validity does not relieve a patentee who moves for a preliminary injunction from carrying the normal burden of demonstrating it will likely succeed on all disputed liability issues at trial, even where the issue concerns the patent’s validity. The court concluded that, because Littelfuse met its burden in establishing substantial questions exist as to the validity of the ‘138 Patent and Fusilamp USA failed to establish a substantial likelihood of success on the merits of the underlying claim, plaintiffs’ motion for preliminary injunction was denied.

This week the Official Gazette noticed six inter partes reexamination requests. CSR PLC filed a request against Skullcandy’s patent on a personal portable integrator for music player and mobile phone. Fluxion Biosceinces filed a request against Cellectricon’s patent on a system and method for obtaining and maintaining high-resistance seals in patch clamp recordings. Plas-Pak Industries filed a request against Richard Parks Corrosion Technologies’ patent on dual component dispensing and mixing systems for marine and military paints. Seda, SPA filed a request against Packaging Tools Machinery’s patent on a double-walled paperboard cup. SiRF Technology filed two requests against Global Locate’s patents on a method and apparatus for computing signal correlation and a method and apparatus for time-free processing of GPS signals.

Requests for reexamination were noticed in the USPTO Official Gazette, captioned below. Notice of Filing of Request for Reexamination means that a request for reexamination has been filed, accorded a filing date, and published in the Official Gazette (MPEP 2215).

Control Number: 95/000,549

Patent Number: 7,390,650
Technology Area: Chemistry: molecular biology and microbiology
Patent Owner: Cellectricon AB, Sweden
Requester: Fluxion Biosceinces Inc.
Firm Requesting: Orrick Herrington & Sutcliff, LLP., Irvine, CA
Date Requested: 6/9/2010
Invention Title: SYSTEM AND METHOD FOR OBTAINING AND MAINTAINING HIGH-RESISTANCE SEALS IN PATCH CLAMP RECORDINGS

Control Number: 95/001,369

Patent Number: 7,395,090
Technology Area: Telecommunications
Patent Owner: Skullcandy, Inc., Park City, UT
Requester: CSR PLC
Firm Requesting: Fish & Richardson, PC
Date Requested: 6/3/2010
Invention Title: PERSONAL PORTABLE INTEGRATOR FOR MUSIC PLAYER AND MOBILE PHONE

Control Number: 95/001,370

Patent Number: 7,481,356
Technology Area: Envelopes, wrappers, and paperboard boxes
Patent Owner: PTM Packaging Tools Machinery PTE LTD., Singapore
Requester: Seda, SPA, Italy
Firm Requesting: Fish & Richardson, PC., Minneapolis, MN
Date Requested: 6/4/2010
Invention Title: DOUBLE-WALLED PAPERBOARD CUP

Control Number: 95/001,371

Patent Number: 7,144,170
Technology Area: Coating implements with material supply
Patent Owner: Richard Parks Corrosion Technologies, Inc., Stafford, VA
Requester: Plas-Pak Industries, Inc.
Firm Requesting: Cantor Colburn, LLP., Hartford, CT
Date Requested: 6/7/2010
Invention Title: DUAL COMPONENT DISPENSING AND MIXING SYSTEMS FOR MARINE AND MILITARY PAINTS

Control Number: 95/001,375

Patent Number: 6,606,346
Technology Area: Pulse or digital communications
Patent Owner: Global Locate, Inc., San Jose, CA
Requester: SiRF Technology, Inc.
Firm Requesting: Pillsbury Winthrop Shaw Pittman, LLP., McLean, VA
Date Requested: 6/8/2010
Invention Title: METHOD AND APPARATUS FOR COMPUTING SIGNAL CORRELATION

Control Number: 95/001,377

Patent Number: 6,417,801
Technology Area: Communications: directive radio wave systems and devices (e.g., radar)
Patent Owner: Global Locate, Inc., Glen Rock, NJ
Requester: SiRF Technology, Inc.
Firm Requesting: Pillsbury Winthrop Shaw Pittman, LLP., McLean, VA
Date Requested: 6/8/2010
Invention Title: METHOD AND APPARATUS FOR TIME-FREE PROCESSING OF GPS SIGNALS

This week the Official Gazette noticed six ex parte reexamination requests. The Ohio Willow Wood Company filed a request against Applied Elastomerics’ patent on tear resistant, crystalline midblock copolymer gels and articles. Anonymous third parties filed requests against patents assigned to Lonza Biologics, Halliburton Energy Services, Vegas Amusement, and Digital Image Systems.

Requests for reexamination were noticed in the USPTO Official Gazette, captioned below. Notice of Filing of Request for Reexamination means that a request for reexamination has been filed, accorded a filing date, and published in the Official Gazette (MPEP 2215).

Control Number: 90/009,756

Patent Number: 5,191,525
Technology Area: Data processing: generic control systems or specific applications
Patent Owner: Digital Image Systems, Carrollton, TX
Firm Requesting: Smith Hopen, PA., Oldsmar, FL
Date Requested: 6/4/2010
Invention Title: SYSTEM AND METHOD FOR EXTRACTION OF DATA FROM DOCUMENTS FOR SUBSEQUENT PROCESSING

Control Number: 90/009,757

Patent Number: 7,561,681
Technology Area: Telephonic communications
Patent Owner: Cellnet Group, Inc., Alpharetta, GA
Requester: Owner
Date Requested: 6/4/2010
Invention Title: INTERACTIVE SYSTEM FOR MANAGING AND REMOTELY CONNECTING CUSTOMER UTILITY LOADS

Control Number: 90/011,018

Patent Number: 6,867,253
Technology Area: Synthetic resins or natural rubbers — part of the class 520 series
Patent Owner: Applied Elastomerics, Inc., Pacific, CA
Requester: The Ohio Willow Wood Company
Firm Requesting: Standley Law Group, LLP., Dublin, OH
Date Requested: 5/28/2010
Invention Title: TEAR RESISTANT, CRYSTALLINE MIDBLOCK COPOLYMER GELS AND ARTICLES

Control Number: 90/011,023

Patent Number: 5,688,174
Technology Area: Amusement devices: games
Patent Owner: Vegas Amusement, Incorporated, Longs, SC
Firm Requesting: Winston & Strawn, LLP., New York, NY
Date Requested: 6/3/2010
Invention Title: MULTIPLAYER INTERACTIVE VIDEO GAMING DEVICE

Control Number: 90/011,024

Patent Number: 7,225,869
Technology Area: Wells
Patent Owner: Halliburton Energy Services, Inc., Houston, TX
Firm Requesting: Howrey, LLP., Falls Church, VA
Date Requested: 6/3/2010
Invention Title: METHODS OF ISOLATING HYDRAJET STIMULATED ZONES

Control Number: 90/011,025

Patent Number: 7,258,998
Technology Area: Data processing: generic control systems or specific applications
Patent Owner: Lonza Biologics, PLC., Great Britain
Firm Requesting: Rossi Kimms & McDowell, LLP., Ashburn, VA
Date Requested: 6/3/2010
Invention Title: CELL CULTURE MEDIUM

Effective Date: The procedure set forth in this notice is effective on August 17, 2010.

Applicability Date: The procedure set forth in this notice is applicable to any appeal brief (regardless of whether it is an appellant’s brief, a respondent’s brief, or a rebuttal brief) that is filed in an inter partes reexamination proceeding on or after August 17, 2010.

Brief Summary:  The Chief Judge of the Board of Patent Appeals and Interferences (BPAI) or his designee (collectively, “Chief Judge”), will have the sole responsibility for determining whether appeal briefs filed in inter partes reexamination proceedings (i.e., appellant’s briefs, respondent’s briefs, and rebuttal briefs) comply with the applicable regulations, and will complete the determination before the appeal brief is forwarded to the examiner for consideration. The examiner will no longer review appeal briefs for compliance with the applicable regulations.

SUPPLEMENTARY INFORMATION: Under the streamlined procedure, upon the filing of an appeal brief in an inter partes reexamination proceeding (i.e., an appellant’s brief, a respondent’s brief, or a rebuttal brief), the Chief Judge will review the appeal brief to determine whether the appeal brief complies with 37 CFR 1.943(c) and 37 CFR 41.67, 41.68, or 41.71 before it is forwarded to the Central Reexamination Unit (CRU) or other Technology Center examiner for consideration. The Chief Judge will endeavor to complete this determination within one month from the filing of the appeal brief. To assist parties in complying with 37 CFR 1.943(c), 41.67, 41.68, and 41.71, the BPAI has provided a checklist for notices of appeal and appeal briefs and a list of eight reasons appeal briefs have been previously held to be noncompliant on the USPTO Web site at: http://www.uspto.gov/ip/boards/bpai/procedures/guidance_noncompliant_briefs.jsp.

This week the Official Gazette noticed four inter partes reexamination requests. ALSTOM Power filed a request against Hazelmere Research’s patent on enhanced mercury control in coal-fired power plants. Boyle Fredrickson filed a request against Mikkelsen Graphic Engineering’s patent on a method and apparatus for automatic precision cutting of graphics areas from sheets. Logitech filed a request against IGO’s patent on an apparatus for cooling a laptop computer. UOP, LLC filed a request against Exxonmobil Chemical Patents’ patent on a method for increasing light olefin yield by conversion of a heavy hydrocarbon fraction of a product to light olefins.

Requests for reexamination were noticed in the USPTO Official Gazette, captioned below. Notice of Filing of Request for Reexamination means that a request for reexamination has been filed, accorded a filing date, and published in the Official Gazette (MPEP 2215).

Control Number: 95/001,355

Patent Number: 6,619,168
Technology Area: Cutting
Patent Owner: Mikkelsen Graphic Engineering, Lake Geneva, WI
Requester: Boyle Fredrickson, SC, Milwaukee, WI
Firm Requesting: Zund Systemtechnik AG and Zund America, Inc.
Date Requested: 5/26/2010
Invention Title: METHOD AND APPARATUS FOR AUTOMATIC PRECISION CUTTING OF GRAPHICS AREAS FROM SHEETS

Control Number: 95/001,357

Patent Number: 6,527,241
Technology Area: Supports
Patent Owner: IGO, Inc., Scottsdale, AZ
Requester: Logitech, Inc.
Firm Requesting: Townsend and Townsend and, Crew, LLP
Date Requested: 6/14/2010
Invention Title: APPARATUS FOR COOLING A LAPTOP COMPUTER

Control Number: 95/001,367

Patent Number: 6,809,227
Technology Area: Food or edible material: processes, compositions, and products
Patent Owner: Exxonmobil Chemical Patents, Inc., Houston, TX
Requester: UOP, LLC
Firm Requesting: Banner & Whitcoff, LTD., Washington, DC
Date Requested: 5/28/2010
Invention Title: METHOD FOR INCREASING LIGHT OLEFIN YIELD BY CONVERSION OF A HEAVY HYDROCARBON FRACTION OF A PRODUCT TO LIGHT OLEFINS

Control Number: 95/001,368

Patent Number: 6,808,692
Technology Area: Optics: measuring and testing
Patent Owner: Hazelmere Research, LTD., Canada
Requester: ALSTOM Power, Inc.
Firm Requesting: Shook Hardy & Bacon, LLP., Kansas City, MO
Date Requested: 5/28/2010
Invention Title: ENHANCED MERCURY CONTROL IN COAL-FIRED POWER PLANTS

This week the Official Gazette noticed ten ex parte reexamination requests. Google filed two requests against Software Rights Archive’s patents on a method and apparatus for indexing, searching and displaying data and a method and apparatus for indexing, searching and displaying data. Anonymous third parties filed requests against patents assigned to Vegas Amusement, Rockwood Clay Additives, The Cleveland Clinic Foundation, Unitherm Food Systems, Sulzer Chemtech AG, Avago Technologies Wireless IP, D&D Group, and The Personalized Mass Media Corporation.

Requests for reexamination were noticed in the USPTO Official Gazette, captioned below. Notice of Filing of Request for Reexamination means that a request for reexamination has been filed, accorded a filing date, and published in the Official Gazette (MPEP 2215).

Control Number: 90/009,737

Patent Number: 7,575,512
Technology Area: Amusement devices: games
Patent Owner: Vegas Amusement, Incorporated, Longs, SC
Firm Requesting: Winston & Strawn, LLP., New York, NY
Date Requested: 5/28/2010
Invention Title: MULTIPLAYER INTERACTIVE VIDEO GAMING DEVICE

Control Number: 90/009,744

Patent Number: 7,223,552
Technology Area: Surgery
Patent Owner: The Cleveland Clinic Foundation, Cleveland, OH
Firm Requesting: Morrison & Foerster, LLP., San Diego, CA
Date Requested: 5/11/2010
Invention Title: MYELOPEROXIDASE, A RISK INDICATOR FOR CARDIOVASCULAR DISEASE

Control Number: 90/009,751

Patent Number: 6,206,349
Technology Area: Gas and liquid contact apparatus
Patent Owner: Sulzer Chemtech AG, Winterthur, Switzerland
Firm Requesting: Winstead, PC., Dallas, TX
Date Requested: 5/21/2010
Invention Title: FLUID-FLUID CONTACTING APPARATUS

Control Number: 90/009,752

Patent Number: 6,675,589
Technology Area: Refrigeration
Patent Owner: Unitherm Food Systems, Inc., Bristow, OK
Firm Requesting: Henry Query, PC, Wheaton, IL
Date Requested: 5/21/2010
Invention Title: FREEZE-CRUSTING PROCESS

Control Number: 90/009,753

Patent Number: 7,504,451
Technology Area: Synthetic resins or natural rubbers — part of the class 520 series
Patent Owner: Rockwood Clay Additives, GMBH, Germany
Firm Requesting: Hahn & Voight, PLLC., Washington, DC
Date Requested: 5/25/2010
Invention Title: FIRE RETARDANT COMPOSITIONS

Control Number: 90/010,854

Patent Number: 6,060,818
Technology Area: Electrical generator or motor structure
Patent Owner: Avago Technologies Wireless IP (Singapore) PTE., LTD., Singapore
Firm Requesting: Thomas Raring & Teague, PC., Richmond, VA
Date Requested: 6/2/2010
Invention Title: SBAR STRUCTURES AND METHOD OF FABRICATION OF SBAR.FBAR FILM PROCESSING TECHNIQUES FOR THE MANUFACTURING OF SBAR/BAR FILTERS

Control Number: 90/011,012

Patent Number: 6,233,571
Technology Area: Data processing: database and file management or data structures
Patent Owner: Software Rights Archive, LLC., Durham, NC
Requester: Google, Inc., Mountain View, CA
Firm Requesting: Dorsey & Whitney, Washington, DC
Date Requested: 5/25/2010
Invention Title: METHOD AND APPARATUS FOR INDEXING, SEARCHING AND DISPLAYING DATA

Control Number: 90/011,013

Patent Number: 5,584,100
Technology Area: Miscellaneous hardware (e.g., bushing, carpet fastener, caster, door closer,
Patent Owner: D&D Group LTD., PTY, Australia
Firm Requesting: Bond Schoeneck & King, PLLC., Syracuse, NY
Date Requested: 5/26/2010
Invention Title: HINGE

Control Number: 90/011,014

Patent Number: 5,832,494
Technology Area: Data processing: database and file management or data structures
Patent Owner: Software Rights Archive, LLC., Durham, NC
Requester: Google, Inc., Mountain View, CA
Firm Requesting: Fish & Richardson, San Diego, CA
Date Requested: 5/26/2010
Invention Title: METHOD AND APPARATUS FOR INDEXING, SEARCHING AND DISPLAYING DATA

Control Number: 90/011,016

Patent Number: 5,109,414
Technology Area: Cryptography
Patent Owner: The Personalized Mass Media Corporation, New York, NY
Firm Requesting: Greenblum & Bernstein, PLC., Reston, VA
Date Requested: 5/28/2010
Invention Title: SIGNAL PROCESSING APPARATUS AND METHODS

Other finalists include: The Coca-Cola Company for “Expedition 206: 365 Days, 206 Countries, 1 Mission;” Fleishman-Hillard for “AT&T Citizenship and Sustainability;” and SSM Health Care for “Experience Exceptional: Our People.”

This recognition marks the third honor for The Reexamination Center, which placed second in the Legal Marketing Association’s Your Honor Awards earlier this year and was identified by the the Legal Marketing Association Capital Chapter as an “IP Daily Must Read.”

First, always refer to materials made available through the USPTO at Reexamination Information such as the following resource entitled “Filing Compliant Reexamination Requests” (USPTO Best Practices for Filing Requests for Reexamination – Dated 05-10-2010).

Each request for reexamination is reviewed in the Central Reexamination Unit (CRU) for compliance with 37 CFR §§ 1.510 or 1.915 before it is assigned a filing date. After it is assigned a filing date, it is sent to an examiner who decides if reexamination should be ordered.

Failure to comply with the technical requirements will result in issuance of a Notice of Incomplete or Non-Compliant Request for Reexamination (”Notice of Incomplete”) if the request is defective in one or more respects. The Notice of Incomplete will provide a detailed description of why the request cannot be processed. A fully compliant response must be received within 30 days or else the filing date will be vacated.

According to the CRU, compliance with these rules also tends to highlight information relevant to the examiner’s decision on whether to grant the reexamination. Clarification to the requirements was noticed in the Federal Register on August 4, 2006 . See Clarification of Filing Date Requirements for Ex Parte and Inter Partes Reexamination Proceedings, 71 Fed. Reg. 44219 (4 Aug 2006), 1309 OG 216 (29 Aug 2006).

Best Practices for Filing Reexamination Proceedings

(1) File electronically.

a. Requests for reexamination may be filed as “new applications” in EFS-Web. After selecting “New applications,” select either utility or design as appropriate, with a type of “Reexam.” Once “Reexam” is selected, there is a drop-down box that designates if the request is an ex parte request or an inter partes request.

b. A guide to document codes for EFS-Web filing provides a list directed to the category “reexamination.”

(2) Get the basics correct.

a. Use form PTO/SB/57 for ex parte requests, and use form PTO/SB/58 for inter partes requests, in addition to an attached detailed request. The forms
are available at the USPTO forms index.

b. Include the correct fee. Current fee schedules are at the USPTO fee schedule index. As of August 12, 2010, the fee for an ex parte request filing under 1.20(c)(1) cost $2,520 and an inter partes request filing under 1.20(c)(2) cost $8,800. Under 1.20(c)(3), reexamination of independent claims in excess of three and also in excess of the number of such claims in the patent under reexamination cost $220. Under 1.20(c)(4), reexamination claims in excess of 20 and also in excess of the number of claims in the patent under reexamination cost $52.

c. Include a copy of the patent to be reexamined including any disclaimer(s), certificate(s) of correction or prior reexamination certificate(s).

d. Remember that the papers filed will be scanned or transferred into the image file wrapper system. Small type (below 12 point), colors, photographs and small detailed drawings do not scan well and may be illegible in the image file wrapper system. Also, line spacing of at least 1.5 should be used to ensure the scanned text is legible.

(3) Provide a clear Statement of a Substantial New Question of Patentability (SNQ)

a. For at least one patent or publication cited in each proposed rejection or application of the art, provide a concise statement of what the new technological teaching is, e.g., state what the new technological teaching is or how the reference is technologically presented in a “new light,” for every claim for which reexamination is requested.

b. A new technological teaching presentation includes, for example, a discussion of subject matter in the cited reference that relates to at least one of the claim limitations and provides a teaching that was not considered by an examiner in the application of the art in the prior examination(s).

i. This discussion can be done in a single section of the request for all of the cited references.
ii. The requester should provide citations to specific portion(s) of the references that support the showing of a SNQ.
iii. In general, do not attempt to identify every limitation of the claim as the new technical teaching. This tends to obscure what new information, in comparison to the prior examination, is being added by the patents or printed publications.

c. State whether the reference was previously considered and to what extent it was considered in addition to stating what the new technological teaching is.

d. Provide the statements of the SNQs separate from the identification and explanation of the proposed rejections to which the SNQ is directed.

e. See the Manual of Patent Examiner Procedure (MPEP), sections 2216 and 2616.

(4) State clearly each and every Proposed Rejection

a. Do not “lump” together multiple proposed rejections based on different grounds.

i. Separate rejections based on anticipation and rejections based on obviousness.
ii. Separate rejections based on alternative primary or secondary teachings in obviousness rejections.
iii. Do not lump together multiple rejections by using “and/or.”

b. Be sure to group together rejections for multiple claims based on the same ground of rejection (e.g., claims 1-4, 6, 8, and 12 should be rejected under 35 U.S.C. 102(b) as anticipated by Smith).

i. Clearly state what claims are applicable to each and every proposed rejection.
ii. Do NOT use the phrase “at least” in front of listing the claims (e.g., “at least claims 1 and 2”).

c. Do not “suggest” other proposed rejections in footnotes or “disclaimertype” language.

d. For Patent Owner filed requests in ex parte reexamination, clearly state which references apply to which claims and how. The application of the art in the detailed explanation should be similar in format to a rejection based on anticipation or obviousness except that it will identify which elements of the claim are shown or taught by the references and also identify which elements are not.

(5) Provide a Detailed Explanation for each Proposed Rejection or Application of the Art

a. Provide a separate explanation for each proposed rejection, or, for Patent-Owner requests, for each application of the art.

b. Clearly state how the references apply to every claim limitation for each claim to which the proposed rejection is applied.

i. For every limitation:

1. Apply at least one of the references (i.e., point out how the reference meets/teaches the limitation);
2. In the case of a patent owner filed request, state that the limitation is not covered by the references; OR
3. In the case of a patent owner request, say/admit that the limitation is known or old in the art, or similar language.

ii. For a dependent claim, the explanation should clearly state how the prior art applies to the limitation(s) added by way of the dependent claim and also refer to the explanation of the claims from which it depends for the limitations set forth in those claims.

c. For obviousness proposed rejections, explain:

i. What claim limitations the primary or base reference teaches and what limitations it fails to teach;

ii. How the prior art teaches limitations not taught by the primary or base reference, or (in the case of a patent owner filed request) that such limitations are known in the art; and

iii. Why it would be obvious to one of ordinary skill in the art at the time the invention was made to combine or modify the teachings (e.g., provide a reason for the combination or modification).

d. The explanation must be in a claim chart or prose (narrative) format.

i. Do NOT do both as it lengthens the request and may result in inconsistencies between the claim chart and prose explanations.

e. Make sure the detailed explanation is consistent and congruent with the proposed rejections.

i. The explanation should include only the claims and references listed in the proposed rejection.
ii. The explanation should only explain anticipation when the proposed rejection is under 35 U.S.C. 102 and only explain obviousness when the proposed rejection is under 35 U.S.C. 103.
iii. Make sure a dependent claim is not subject to a proposed anticipation rejection when the claim it depends from is only subject to a proposed obviousness rejection.

(6) Citation of Patents and Publications

a. Provide a listing of all patents and publications that form the basis of the proposed rejections on form PTO/SB/08, PTO/SB/42, PTO-1449, or equivalent.

i. Only list documents that form the basis of a proposed rejection.

ii. Do not include litigation documents or “background” documents on the listing. “Background” documents should be avoided. If a document, that the requester considers to be a “background” document, is discussed in the detailed explanation of any proposed rejection, then the document must be cited as a basis for the proposed rejection, and must be included in the listing of all patents and publications that form the basis of the proposed rejection.

b. Provide a copy of each and every reference that is cited, except for U.S. Patent documents.

c. Provide an English language translation for the entire document or relevant portions, if the reference is not in the English language.

(7) If Third-Party Requesting, Serve the Request and All Related Papers

Serve to the Patent Owner’s correspondence address (37 CFR 1.33(a)) in the patent file.

a. Check PAIR to see the current address that is of record in the file of the patent for which reexamination is being requested.

b. Do not use the correspondence address in the assignment records or the address on the front of the patent without verifying the address with current records in PAIR.

(8) Patent Owner Must Update the Correspondence Address in the Patent

Correspondence is sent to the address in the patent file. See MPEP 2222.

(9) If Filing an Inter Partes Reexamination Request

a. Identify the real party or parties in interest.

b. Make the required certification that the estoppel provisions of 37 CFR 1.907 do not prohibit inter partes reexamination.

c. Check to see if the patent issued from an application filed on or after November 29, 1999. See MPEP 2611.

(10) Sign the Request.

a. Do not just sign the transmittal or cover letter.

b. Make sure the request is signed by a patent practitioner under 37 CFR 1.34 or a person authorized to act on behalf of the requester (e.g., the president
of the company requesting reexamination).

c. Make sure the signature is in compliance with 37 CFR 1.4(d)(1) for handwritten signatures or 37 CFR 1.4(d)(2) for s-signatures.

(11) Be Mindful of the Statutory Constraints

Information that may be included in a reexamination (patents and printed publications), by not including:

a. Comments pertaining to any alleged misconduct, including inequitable conduct, of the patent owner.

b. Notification of litigation must be limited to bare notice, and must not include arguments or information. See MPEP 2282 and 2686.

c. Proposed rejections based on lack of utility or enablement under 35 U.S.C. 101.

d. Proposed rejections based on 35 U.S.C. 112.

e. Proposed rejections based on prior use or prior knowledge.

This week the Official Gazette noticed three inter partes reexamination requests. Caliper Life Science filed a request against Carestream Health’s patent on an apparatus and method for multi-modal imaging. Sanofi-Aventis filed a request against Abbott Laboratories patent on a dual variable domain immunoglobulin and uses thereof. Zund Systemtechnik and Zund America filed a request against Mikkelsen Graphic Engineering’s patent on a method and apparatus for rapid precision cutting of graphics areas from sheets.

Requests for reexamination were noticed in the USPTO Official Gazette, captioned below. Notice of Filing of Request for Reexamination means that a request for reexamination has been filed, accorded a filing date, and published in the Official Gazette (MPEP 2215).

Control Number: 95/001,354

Patent Number: 6,672,187
Technology Area: Cutting
Patent Owner: Mikkelsen Graphic Engineering, Inc., Lake Geneva, WI
Requester: Zund Systemtechnik AG, and Zund America, Inc.
Firm Requesting: Boyle Fredrickson, SC., Milwaukee, WI
Date Requested: 5/14/2010
Invention Title: METHOD AND APPARATUS FOR RAPID PRECISION CUTTING OF GRAPHICS AREAS FROM SHEETS

Control Number: 95/001,379

Patent Number: 7,734,325
Technology Area: Surgery
Patent Owner: Carestream Health, Inc., Rochester, NY
Requester: Caliper Life Science, Inc.
Firm Requesting: Sterne Kessler Goldstein & Fox, PLLC., Washington, DC
Date Requested: 6/9/2010
Invention Title: APPARATUS AND METHOD FOR MULTI-MODAL IMAGING

Control Number: 95/001,380

Patent Number: 7,612,181
Technology Area: Chemistry: natural resins or derivatives; peptides or proteins; lignins or
Patent Owner: Abbott Laboratories, Abbott Park, IL
Requester: Sanofi-Aventis, SA
Firm Requesting: McDonnell Boehnen Hulbert & Berghoff, LLP., Chicago, IL
Date Requested: 6/24/2010
Invention Title: DUAL VARIABLE DOMAIN IMMUNOGLOBULIN AND USES THEREOF

This week the Official Gazette noticed thirteen ex parte reexamination requests. Google filed a request against Software Rights Archive’s patent on a method and apparatus for indexing, searching and displaying data. Hynix Semiconductor filed a request against Rambus’ patent on a memory device having a variable data output length. Sennco Solutions filed a request against Se-Kure Controls’ patent on a sensing assembly for article to be monitored. Smith Patent Consulting filed a request against Agere Systems’ patent on an article comprising a quantum well laser. Anonymous third parties filed requests against patents assigned to Z-IMAGE, Comsol AB, Cengiz R. Shevket, Gemplus, Apple, and Bayer Healthcare.

Requests for reexamination were noticed in the USPTO Official Gazette, captioned below. Notice of Filing of Request for Reexamination means that a request for reexamination has been filed, accorded a filing date, and published in the Official Gazette (MPEP 2215).

Control Number: 90/009,715

Patent Number: 6,502,567
Technology Area: Mechanical guns and projectors
Patent Owner: KEE Action Sports I, LLC., Sewell, NJ
Requester: Owner
Date Requested: 6/3/2010
Invention Title: RAPID FEED PAINTBALL LOADER WITH PIVOTABLE DEFLECTOR

Control Number: 90/009,719

Patent Number: 7,081,822
Technology Area: Communications: electrical
Patent Owner: Se-Kure Controls, Inc., Franklin Park, IL
Requester: Sennco Solutions, Inc., Plainfield, IL
Firm Requesting: Pauley Petersen & Erickson, Hoffman Estates, IL
Date Requested: 5/7/2010
Invention Title: SENSING ASSEMBLY FOR ARTICLE TO BE MONITORED

Control Number: 90/009,725

Patent Number: 7,104,695
Technology Area: Bearings
Patent Owner: Cengiz R. Shevket, Novi, MI
Firm Requesting: Law Office of James Strom, Woodinville, WA
Date Requested: 6/10/2010
Invention Title: ASYMMETRIC HUB ASSEMBLY

Control Number: 90/009,727

Patent Number: 7,663,091
Technology Area: Radiant energy
Patent Owner: Z-IMAGE, LLC., Windsor, CO
Firm Requesting: Quinn Law Group, PLLC., Novi, MI
Date Requested: 6/9/2010
Invention Title: LASER CONTROLLER

Control Number: 90/009,728

Patent Number: 7,596,474
Technology Area: Data processing: structural design, modeling, simulation, and emulation
Patent Owner: Comsol AB, Sweden
Firm Requesting: Bond-Yen Ting, San Jose, CA
Date Requested: 6/1/2010
Invention Title: METHOD FOR ASSEMBLING THE FINITE ELEMENT DISCRETIZATION OF ARBITRARY WEAK EQUATIONS INVOLVING LOCAL OR NON-LOCAL MULTIPHYSICS COUPLINGS

Control Number: 90/010,959

Patent Number: 6,437,985
Technology Area: Electricity: electrical systems and devices
Patent Owner: Gemplus, SA, France
Firm Requesting: Kramer & Amado, PC., Alexandria, VA
Date Requested: 5/13/2010
Invention Title: DISPOSABLE ELECTRONIC CHIP DEVICE AND PROCESS OF MANUFACTURE

Control Number: 90/010,970

Patent Number: 6,189,034
Technology Area: Electrical computers and digital processing systems: multicomputer data
Patent Owner: Apple, Inc., Cupertino, CA
Firm Requesting: Brient Intellectual Property Law, LLC., Alpharetta, GA
Date Requested: 6/2/2010
Invention Title: METHOD AND APPARATUS FOR DYNAMIC LAUNCHING OF A TELECONFERENCING APPLICATION UPON RECEIPT OF A CALL

Control Number: 90/010,994

Patent Number: 7,435,197
Technology Area: Endless belt power transmission systems or components
Patent Owner: Shimano, Inc., Osaka, Japan
Requester: Owner
Date Requested: 5/13/2010
Invention Title: REAR SPROCKET FOR BICYCLE TRANSMISSION

Control Number: 90/011,001

Patent Number: 5,448,585
Technology Area: Coherent light generators
Patent Owner: Agere Systems, Inc., Allentown, PA
Requester: Smith Patent Consulting, LLC
Firm Requesting: Foley & Lardner, LLP., Washington, DC
Date Requested: 5/18/2010
Invention Title: ARTICLE COMPRISING A QUANTUM WELL LASER

Control Number: 90/011,002

Patent Number: 6,352,887
Technology Area: Semiconductor device manufacturing: process
Patent Owner: Texas Instruments Incorporated, Dallas, TX
Requester: Owner
Date Requested: 5/18/2010
Invention Title: MERGED BIPOLAR AND CMOS CIRCUIT AND METHOD

Control Number: 90/011,005

Patent Number: 6,324,120
Technology Area: Static information storage and retrieval
Patent Owner: Rambus, Inc., Los Altos, CA
Requester: Hynix Semiconductor, Inc., Korea
Firm Requesting: Townsend and Townsend and Crew, LLP., San Francisco, CA
Date Requested: 5/19/2010
Invention Title: MEMORY DEVICE HAVING A VARIABLE DATA OUTPUT LENGTH

Control Number: 90/011,007

Patent Number: 5,654,407
Technology Area: Chemistry: natural resins or derivatives; peptides or proteins; lignins
Patent Owner: Bayer Healthcare, LLC., Tarrytown, NY
Firm Requesting: Sughrue Mion, PLLC., Washington, DC
Date Requested: 5/20/2010
Invention Title: HUMAN ANTI-TNF ANTIBODIES

Control Number: 90/011,010

Patent Number: 5,544,352
Technology Area: Data processing: generic control systems or specific applications
Patent Owner: Software Rights Archive, LLC., Durham, NC
Requester: Google, Inc., Mountain View, CA
Firm Requesting: Fish & Richardson, PC, San Diego, CA
Date Requested: 5/24/2010
Invention Title: METHOD AND APPARATUS FOR INDEXING, SEARCHING AND DISPLAYING DATA