Federal Circuit Ruling May Rein In Patent Re-Examinations | Law.com

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A federal appeals court ruling may curb the growing trend of using re-examinations to challenge other parties’ patents.

In In Re Suitco Surface Inc., the U.S. Court of Appeals for the Federal Circuit remanded a U.S. Patent and Trademark Office rejection of some claims in a patent re-examination. The PTO’s interpretation of Suitco’s patent claim for “material for finishing the top surface of the floor” was “unreasonably broad,” wrote Circuit Judge Randall Rader.

Rader noted that case law requiring the PTO to give claims “their broadest reasonable construction” does not give the PTO “an unfettered license to interpret claims to embrace anything remotely related to the claimed invention,” Rader wrote. “Rather, claims should always be read in light of the specification and teachings in the underlying patent.”

Suitco will be a frequently cited case for patent lawyers helping clients fight re-examinations, said Steven Moore, an intellectual property litigation partner in the Stamford, Conn., office of New York’s Kelley Drye & Warren, who was not involved in the case.

“It’s a fight that we all have with the patent office,” Moore said. “If it’s in your specification and you’ve used it in a particular manner, that’s what should rule, not this broadest-interpretation concept.”

Seeking a re-examination of the patent is “almost a knee jerk reaction” for defendants in patent infringement cases, he added.

“With the number of re-exams being allowed by the patent office, if you’re in litigation you almost always have a re-exam,” Moore said.

via Law.com – Federal Circuit Ruling May Rein In Patent Re-Examinations.

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Digging Beneath the Surface of Apple v. HTC | Patent Litigation Weekly

Apple’s lawsuit against HTC comes well into the Internet age, after a 10-year run of “troll” lawsuits has transformed the patent litigation landscape to the point that such suits now make up the bulk of many Silicon Valley litigators’ practice.

It’s fairly unusual in the modern era for a market leader to initiate a patent suit. Which is not to say large operating companies don’t sue for patent infringement. They do. But on the relatively rare occasions when they do launch such litigation, it tends to fall into a couple of categories.

First, there are big companies with established licensing programs (IBM, Honeywell) that sometimes sue companies they don’t directly compete with as a way of extracting licensing revenue. Second, big companies with slightly more Industrial Age roots sometimes sue in a bid to win some tribute from the new breed of technology companies (see, for example, Kodak’s patent claims against Samsung, LG, Apple, and RIM over cell-phone cameras or Xerox’s lawsuit against Google and Yahoo over search engine technology). Finally, there are a handful of suits in which a large patent-holder goes after a true rival in the hopes of protecting a deteriorating market share (see Nokia v. Apple).

The indirect targets of Apple’s lawsuit, of course, are Google and its Android operating system. Still, the suit doesn’t fit cleanly into any of the above categories, because right now Apple, along with Blackberry maker Research in Motion, is top dog in the smartphone market. But the company may be getting nervous about the long-term security of its position–or it may just be interested in using patents to to make life difficult for its competitors.

via Patent Litigation Weekly: Digging Beneath the Surface of Apple v. HTC.

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Court Tells Microsoft to Edit Word | BusinessWeek

Microsoft Corp. (MSFT), the world's biggest software maker, must alter its popular Word software or stop selling the product after it lost its appeal of a $200 million patent-infringement verdict won by a Canadian company.

The company, based in Redmond, Washington, was given until Jan. 11 — five months from the original order issued in August — to make the change by the U.S. Court of Appeals for the Federal Circuit in Washington. Word is part of Microsoft’s Office software, used by more than 500 million people.

The court today upheld a verdict which has since grown to $290 million won by closely held I4i LP of Toronto. The dispute is over a patented invention related to customizing extensible markup language, or XML, a way of encoding data to exchange information among programs. Microsoft has called it an “obscure functionality.”

via Court Tells Microsoft to Edit Word – BusinessWeek.

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