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Paul Allen v. World - The world kicks back - UPDATED
Friday, May 27 2011 @ 08:30 AM EDT

You may recall from our last communication on this case that the judge declined to issue a stay of the case pending the anticipated reexamination of the asserted patents because the USPTO had yet to accept the reexamination request. Well, that worm has now turned.

According to a status report filed with the court by Yahoo! (see full text below), the reexamination requests with respect to three of the four patents have been granted, and we should expect to hear about the fourth any day now.

Two of the reexamination requests (those for patents 6263507 and 6034652) were filed as ex parte requests. That means the requesting party has submitted what they believe to be relevant prior art, but it is entirely up to the examiner to assess the relevance of that prior art and apply it with no further input from the requesting party. In the other two cases (patents 6788314 and 6757682) the requests are for inter partes reexaminations, meaning the requesting party is an on-going participant to the reexamination process. Why were two of the requests made ex parte and the other two inter partes? For patents issued with filing dates before November 11, 1999, a requesting party may only request ex parte examination.

So how extensive are these reexamination requests? See for yourself. Linked below are the reexamination requests, the order granting the reexamination, and, where applicable, the non-final rejection for each of the three cases accepted for reexamination so far. We will add the fourth case when it is accepted (which it almost certainly will be). We have not converted these documents to text because they are really long.


Patent No. 6263507
Control No. 90/011577
Granted 5/6/11

Request for Ex Parte Reexamination [PDF]

Order Granting Reexamination [PDF]



Patent No. 6034652
Control No. 90/011576
Granted 5/20/11

Request for Ex Parte Reexamination [PDF]

Order Granting Reexamination [PDF]



Patent No. 6788314
Control No. 95/001577
Granted 5/19/11

Request for Inter Partes Reexamination [PDF]

Order Granting Reexamination [PDF]

Non-Final Rejection [PDF]



Patent No. 6757682
Control No. 95/001576
Not yet granted

Request for Inter Partes Reexamination [PDF]

Here is the status report as text:

***************************

Honorable Marsha J. Pechman

UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF WASHINGTON
AT SEATTLE

___________________________

INTERVAL LICENSING LLC,

Plaintiff,

v.

AOL, INC.; APPLE, INC.; eBAY, INC.;
FACEBOOK, INC.; GOOGLE INC.; NETFLIX,
INC.; OFFICE DEPOT, INC.; OFFICEMAX INC.;
STAPLES, INC.; YAHOO! INC.; and YOUTUBE,
LLC,

Defendants.

_______________________

Case No. 2:11-CV-00716-MJP
Lead Case No. 2:10-CV-01385-MJP

STATUS REPORT REGARDING
PETITIONS FOR
REEXAMINATION

_______________________

As instructed by the Court during the April 25, 2011 Hearing on Defendants’ Motions to Sever (Dkt. 229, 230), the parties, through their undersigned whips, advise the Court of the status of the Requests for Reexamination that are pending with respect to each of the Patents-In- Suit.

Patent No.Request for Reexamination Filed (Control No.)Status
6,263,507 March 17, 2011 (90/011,577)
(ex parte)
Reexamination Granted 5/6/2011
6,034,652 March 16, 2011 (90/011,576)
(ex parte)
Reexamination Granted 5/20/2011
6,788,314 March 16, 2011 (95/001,577)
(inter partes)
Reexamination Granted and First Office
Action Issued 5/19/2011
6,757,682March 16, 2011 (95/001,576)
(inter partes)
Awaiting Response from PTO

Respectfully submitted,

FROMMER LAWRENCE & HAUG LLP

Dated: May 24, 2011 By: s/Mark P. Walters
Mark P. Walters, WSBA No. 30819
Dario A. Machleidt, WSBA No. 41860
[address, phone, fax, email]

Attorneys for Defendant Yahoo! Inc.

By: s/Justin A. Nelson
Justin A. Nelson
SUSMAN GODFREY
[address, phone, email]
Attorneys for Plaintiff Interval Licensing

**********

UPDATE

The reexamination request on the last of the four Interval patents has now been granted. The updated information on that reexamination is listed below:

Patent No. 6757682
Control No. 95/001576
Reexamination grante 6/3/2011

Request for Inter Partes Reexamination [PDF]

Notice of Non-Final Action [PDF]

*************


  


Paul Allen v. World - The world kicks back - UPDATED | 157 comments | Create New Account
Comments belong to whoever posts them. Please notify us of inappropriate comments.
Corrections Here
Authored by: feldegast on Friday, May 27 2011 @ 08:33 AM EDT
Korections -> Corrections

---
IANAL
My posts are ©2004-2011 and released under the Creative Commons License
Attribution-Noncommercial 2.0
P.J. has permission for commercial use.

[ Reply to This | # ]

Off Topic
Authored by: feldegast on Friday, May 27 2011 @ 08:35 AM EDT
Please post comments not related to the main article of other main threads here

---
IANAL
My posts are ©2004-2011 and released under the Creative Commons License
Attribution-Noncommercial 2.0
P.J. has permission for commercial use.

[ Reply to This | # ]

Newspicks Thread
Authored by: feldegast on Friday, May 27 2011 @ 08:37 AM EDT
Remember to put the newspick item in the title and/or comment section since they
tend to scroll off the page rather quickly.

---
IANAL
My posts are ©2004-2011 and released under the Creative Commons License
Attribution-Noncommercial 2.0
P.J. has permission for commercial use.

[ Reply to This | # ]

Comes documents here
Authored by: feldegast on Friday, May 27 2011 @ 08:39 AM EDT
Any documents that have been transcribed from Comes vs. Microsoft

---
IANAL
My posts are ©2004-2011 and released under the Creative Commons License
Attribution-Noncommercial 2.0
P.J. has permission for commercial use.

[ Reply to This | # ]

Is RIM relevant?
Authored by: rsteinmetz70112 on Friday, May 27 2011 @ 09:04 AM EDT
Is the history of the RIM case relevant here that is have courts considered its
consequences?


---
Rsteinmetz - IANAL therefore my opinions are illegal.

"I could be wrong now, but I don't think so."
Randy Newman - The Title Theme from Monk

[ Reply to This | # ]

That has got to hurt
Authored by: The Mad Hatter r on Friday, May 27 2011 @ 09:12 AM EDT

Remember the attempt to have patents that had survived a certain number of years
without challenge made so that they could not be overturned? Now we see why. The
two older patents which were granted ex parte would have fallen into the age
range which the proposed law would have made no longer available to challenge.

The rent seekers must be getting desperate I'm guessing.



---
Regards

Wayne Borean

http://madhatter.ca - Through the Looking Glass
http://wayneborean.ca - About Writing
http://weblit.ca - Web Lit Canada

[ Reply to This | # ]

The Prior Art
Authored by: Ian Al on Friday, May 27 2011 @ 11:22 AM EDT
I have only scanned the first item and that took a while.

My first impression is the laying of multiple charges for the demolition of a
building no longer fit for purpose. There seems to be a complex web of fuse
wires ready to take out all the main structural members.

I'm going to have a closer look as this is the first time I have seen how patent
claims operate and how prior art is assessed in relation to the claims.

---
Regards
Ian Al
OK, Just one more article and then I'll seek help.

[ Reply to This | # ]

The non-final rejection
Authored by: Anonymous on Friday, May 27 2011 @ 07:01 PM EDT
It's interesting here. What looked at first a wholesale slaughter of the attempt
to get this patent nullified is nothing of the sort.

Even though the re-examiner stated that none of the arguments put forward by 3PR
were actionable, they still decided the claims were anticipated for other
reasons.

Hence the effect was the same, the effective destruction of the patent (at least
for now) but that reasons came from the re-examiner rather than the submitter of
the re-exam request.

[ Reply to This | # ]

This should grab the judge's attention
Authored by: celtic_hackr on Friday, May 27 2011 @ 10:20 PM EDT
So of the four patents involved, three have already been granted re-examination,
and one-third of those patents has already been rejected as unpatentable. So 25
percent of the case is already potentially history. Why would you want to
continue to spend valuable time, money and resources building a case for
something that has been rejected as patentable?

I notice that the one rejected is the only one they have accepted so far that is
"inter partes", and not the ex partes. Which might explain why so many
of these patents being dragged up are pre 1999 patents. I think I detect a
pattern. So in about 9 more years we won't need to fear the ex partes anymore.
And it will make patent trolls work harder.

Every little bit helps, although total reform would be nice.

[ Reply to This | # ]

OK Judge, What's the damage?
Authored by: Ian Al on Monday, May 30 2011 @ 04:14 AM EDT
Before I begin, I think PJ has been messing about with the tags again, so,

'This comment may contain sarcasm'

What exactly are these four most excellent inventions? They are not software
inventions, even though they mention computer displays. When they mention
comparison of content, they don't propose using computers to do this. They
merely list prior art which was computer based.

These are not software patents. They apply equally to the non-computerised car
displays in use when the patents were awarded.

They are not machine patents. Unlike the most excellent audio codecs in
Microsoft v. AT&T they are not made out of physical components (the
requirement for a machine patent) by installing the software from the final
installation CD on to a general purpose computer.

As a final test, Paul Allen still has significant holdings and was a senior
figure in the world's most innovative software company (allegedly). If they were
software machine inventions then he would have had Microsoft manufacture them
and they would have been patented or licensed by Microsoft. They were not (as
far as we can tell from the prior art given by Paul Allen).

They transform nothing. Even if transformation of content were patentable
transformations, these patents do not claim that. They are not transformation
patents.

They are not process patents because they have no significant post-solution
activity (Flook).

Thus, they are patents on methods. I would not go so far as to limit them to
business methods because they are methods of presenting information. That is
just as relevant to schools and universities as it is to business.

So, what value has been lost to the inventor by the world, except Paul Allen,
using his invention? The patents note in their descriptive sections that display
of information using computers is the field in which the patents are most
excellent. His ability to determine the direction of Microsoft has already been
alluded to. He, apparently, decided that the patents were not so valuable that
the company in which he had a large ownership and control would implement the
inventions.

The inventions lay unused for decades until the world stumbled across them many
times, completely independently, in companies not necessarily skilled in the
arts of computing or information management and display. Some of the companies
just sell stuff!

So, Paul Allen never attempted to get the biggest software company in the world
to use his invention. He never attempted to get any company in the world to use
his invention or he would have told us about his world-wide approaches to all
the companies he is suing.

He never attempted to crystallise the commercial value of his inventions by
implementing them himself or by licensing another company to do so on his
behalf. He has never been commercially damaged by the world reinventing his
inventions and using them. The only commercial return he could ever expect to
make is in coercing companies to settle his law suits.

So, Judge, what is the damage to Paul Allen?

---
Regards
Ian Al
OK, Just one more article and then I'll seek help.

[ Reply to This | # ]

Question about reexamination
Authored by: Anonymous on Monday, May 30 2011 @ 10:38 AM EDT
Over the years, rules what patents should be valid are changing. When a patent
is reexamined, do the rules apply of the time when the patent was granted, or
the rules that are valid now, which might be stricter? In an extreme case, if a
patent was correctly granted according to the rules at the time, but wouldn't
be
granted according to today's rules, would that be grounds for
reexamination?

[ Reply to This | # ]

Defense against most excellent patents
Authored by: Ian Al on Tuesday, May 31 2011 @ 03:31 AM EDT
In Bilski, the Supremes said,
Flook stands for the proposition that the prohibition against patenting abstract ideas “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment” or adding “insignificant postsolution activity.
They went on to say,
The application in Diehr claimed a previously unknown method for “molding raw, uncured synthetic rubber into cured precision products,” using a mathematical formula to complete some of its several steps by way of a computer. Diehr explained that while an abstract idea, law of nature, or mathematical formula could not be patented, “an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.” Diehr emphasized the need to consider the invention as a whole, rather than “dissect[ing] the claims into old and new elements and then . . . ignor[ing] the presence of the old elements in the analysis.” Finally, the Court concluded that because the claim was not “an attempt to patent a mathematical formula, but rather [was] an industrial process for the molding of rubber products,” it fell within §101’s patentable subject matter.
and
The concept of hedging, described in claim 1 and reduced to a mathematical formula in claim 4, is an unpatentable abstract idea, just like the algorithms at issue in Benson and Flook. Allowing petitioners to patent risk hedging would preempt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea. Petitioners’ remaining claims are broad examples of how hedging can be used in commodities and energy markets. Flook established that limiting an abstract idea to one field of use or adding token postsolution components did not make the concept patentable. That is exactly what the remaining claims in petitioners’ application do. These claims attempt to patent the use of the abstract idea of hedging risk in the energy market and then instruct the use of well-known random analysis techniques to help establish some of the inputs into the equation. Indeed, these claims add even less to the underlying abstract principle than the invention in Flook did, for the Flook invention was at least directed to the narrower domain of signalling dangers in operating a catalytic converter.
It would be great fun to subject the Paul Allen patents to the same rigorous analysis, but that moment has passed in some cases. However, could not the alleged infringing activity be analysed against those standards?

If the internet were a part of a process to make cured, precision, rubber components as in Diehr it would infringe on the Diehr patent. Also, if the internet were a machine because it has been installed and interconnected a la Microsoft v. AT&T, then it might infringe on the AT&T patent. If Microsoft can infringe by installing Windows Media Player on a computer, then the world can infringe by using the interweb to play music and videos.

However, what if the most excellent patent had been granted, but was invalid post Bilski? What if, as in the current Paul Allen example, it was not possible to challenge the patents according to the post-Bilski understanding of the law?

Unfortunately, Microsoft v. AT&T means that any machine patent might be infringed by cloud computing. That, to my mind, confirms that some of the Supreme Court findings in that case were wrong-headed. However, anything that stays within the internet cannot, by definition, transform matter or materials. That also applies to single computer systems. If software hands don't reach out and transform something, they cannot, by definition, infringe on a transformation patent.

The same argument can be applied to the internet and single computer systems in relation to method and process patents. Unfortunately, Paul Allen has succeeded in patenting abstract ideas by suggesting in the patent descriptions that the idea be limited to computers (an approach rejected by the Supremes in Flook). However, if the, allegedly, infringing process or method is wholly within a computer system or within the interweb, then it cannot, by definition, have any post-solution activity. This would not apply to a patent on a method of taking internet sales because there is demonstrable post-solution activity, but the Supremes pointed out that, in Flook,
The applicant there attempted to patent a procedure for monitoring the conditions during the catalytic conversion process in the petrochemical and oil-refining industries. The application’s only innovation was reliance on a mathematical algorithm. Flook held the invention was not a patentable “process.”
They stress that no amount of indicator lights, warning messages, or information display can be significant post-solution activity. The end result of the Paul Allen patents is limited to such display. It seems to me that a defence can be that any implementation of the patents in the defendants' computer systems can only, by definition, be the expression of abstract ideas and thus not infringing on any patent.

---
Regards
Ian Al
OK, Just one more article and then I'll seek help.

[ Reply to This | # ]

Paul Allen v. World - The world kicks back
Authored by: Anonymous on Monday, June 06 2011 @ 06:14 PM EDT
Reexamination is one of the best ways to fight back against patent trolls, or is at least a good first step.

[ Reply to This | # ]

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