updated 07:10 pm EDT, Tue May 29, 2012
USPTO 'ex parte' requests all made last week, involved in current suits
Three anonymous ex parte requests challenging the validity of noteworthy patents held by two tech giants were filed with the United States Patent and Trademark Office last week. Two were filed against Apple, while a third challenged a Facebook patent. One was filed versus Apple's patent numbered 7,479,949 for touchscreen interfacing. The second against Apple was patent 7,469,381 in regards to document presentation on a touchscreen display. Facebook's patent involves a dynamic news feed about a user of a social network. The instigators of all three complaints are unknown.
Patent 7,479,949 is the primary patent in dispute in the ongoing Motorola (now Google) versus Apple lawsuit. The second Apple patent being challenged is the patent in question in the still-contested Apple versus Samsung legal skirmish. There is no paper trail per se in the filings -- all the requisite documentation for the requests were filed electronically. The most likely candidate for both patent challenges is Google, due to the absorption of Motorola and the concurrent lawsuits acquired in the process. Both Apple patents have survived the same request in the past, when they were most likely requested by Nokia.
The Facebook patent, number 7,669,123, was viewed as overly broad when issued in 2010. While Yahoo was the likeliest candidate for filing, the search engine provider has denied issuing the challenge. Facebook used this patent against Yahoo in a countersuit in March.
Ex parte patent re-examinations are requested when a third party may have prior art examples of previous use of a patentable invention prior to the patent filing. Patent holders have 30 days to respond to USPTO actions involving the reexamination. Failure to respond automatically invalidates the patent, unless the delay in response can be proven to be unintentional or unavoidable. The USPTO can decide independently to issue an ex parte challenge. Strategically, the patent holder can order the reexamination to confirm the validity of the patent prior to an upcoming lawsuit.