Vringo, Inc. (NASDAQ: VRNG) today provided an update on proceedings at the U.S. Patent and Trademark Office regarding patents owned by its wholly owned subsidiary, I/P Engine, Inc. This summary is qualified in its entirety by the USPTO proceedings.
I/P Engine asserted two patents originally acquired from Lycos, Inc., U.S. Patent Nos. 6,314,420 and 6,775,664, against AOL Inc., Google, Inc., IAC Search & Media, Inc., Gannett Company, Inc., and Target Corporation.
On November 6, 2012, the jury unanimously returned a verdict as follows: (i) I/P Engine had proven by a preponderance of the evidence that the Defendants infringed the asserted claims of both of the patents; and (ii) Defendants had not proven by clear and convincing evidence that the asserted claims of the patents are invalid by anticipation. The jury also found certain specific facts related to the ultimate question of whether the patents are invalid as obvious. Based on such facts, on November 20, 2012, the U.S. District Court issued a ruling that the patents-in-suit were not invalid as obvious, and the clerk entered the Court’s final judgment.
Google has filed three separate re-examinations of the asserted patents at the USPTO, one request against the ‘420 patent and two requests against the ‘664 patent. Requests for re-examinations are a standard tactic used by defendants in patent litigation cases.
The ‘420 Patent
On March 15, 2012, Google submitted a request to the USPTO for ex parte reexamination of U.S. Patent No. 6,314,420, one of the two patents-in-suit. The request was deposited on March 16, 2012 and was assigned Control No. 90/009,991. On July 18, 2012, the USPTO issued a determination ordering a reexamination. On September 25, 2012, the USPTO issued a first, non-final office action where it adopted the rejections proposed by Google. Today, the USPTO notified I/P Engine that examiners assigned to the re-examination maintained their rejections of the claims of the ‘420 patent. I/P Engine will continue to follow the USPTO procedures to uphold the validity of the ‘420 patent, including filing an appeal to the Board of Patent Appeals and Interferences of the USPTO.
The ‘664 Patent
On November 28, 2012, Google submitted a request to the USPTO for ex parte reexamination of U.S. Patent No. 6,775,664, the other of the two patents-in-suit. The request was assigned Control No. 90/012,722. On January 17, 2013, the USPTO issued a determination ordering a reexamination, but found that three of the prior art references identified by Google were not considered prior art to the ‘664 patent.
In an effort to have those three prior art references considered in a reexamination request of U.S. Patent No. 6,775,664, Google filed a second reexamination request of that patent on February 8, 2013. On March 7, 2013, the USPTO issued a determination ordering a reexamination based on the three additional references. The reexamination was assigned Control No. 90/012,791.
I/P Engine expects that the two reexaminations of U.S. Patent No. 6,775,664 may be merged into a single proceeding. Further action from the USPTO is expected, including either a Notice of Intent to Issue a Reexamination Certificate affirming the patentability of all subject claims or a First Non-Final Office Action.
The court dockets for I/P Engine’s proceedings in U.S. District Court and at the Court of Appeals for the Federal Circuit are publicly available on the Public Access to Court Electronic Records website, http://www.pacer.gov, which is operated by the Administrative Office of the U.S. Courts.
Documents regarding USPTO proceedings are publicly available on the Patent Application Information Retrieval website, http://portal.uspto.gov/pair/PublicPair, which is operated by the USPTO.