PTO Denies TiVo Petition to Vacate Reex. Order

Scott Daniels | August 21, 2009

The PTO has denied TiVo’s petition to vacate the PTO’s order of January 7, 2009, granting reexamination of TiVo’s U.S. Patent No. 6,233,389.

TiVo argued that reexamination should not have been granted because the prior art reference relied upon in the request was cited and initialed by the examiners in an earlier reexamination of the ‘389 patent. This, TiVo stated, meant that the earlier reexamination examiners had “considered all portions of the cited references they said were considered.” Accordingly, there was no substantial new question of patentability (“SNQ”).

The PTO disagreed, noting that the reference was among 200 cited in the earlier reexamination and that it was not discussed by examiners. The PTO relied upon 35 U.S.C. § 303 and In re Swanson for the principle that a reference may raise a SNQ despite having been cited in earlier prosecution. The PTO concluded that as

the order granting reexamination identifies what feature was not found in the ‘750 reexamination (page 4), where those elements are shown in the Thomson reference (page 6), and concludes that this feature would be important to a reasonable examiner (page 8), and as the 2002 amendment to 35 U.S.C. § 303 makes clear that references already of record may be used to find that a substantial new question of patentability is present, the decision of the examiner has not been shown to be in error.

An Office Action issued August 3, rejecting the two claims under reexamination. A response to that Action is due October 5.

See the archived story of August 4, 2009, describing the litigation background of the ‘389 patent.

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