Scott Daniels | September 1, 2009
The PTO has filed a notice of intent to issue a reexamination certificate regarding the claims of Luciano Paone’s U.S. Patent No. 6,259,789. The ‘789 patent relates to a method for encrypting data, employing a block cipher encryption algorithm.
Paone sued Microsoft in New York in July 2007, for infringing the ‘789 patent. In May 2008, Microsoft countered by filing the present reexamination request, and the PTO subsequently determined that two substantial new questions of patentability were raised with respect to each of the claims identified in the request.
Those claims were later rejected by the PTO as being obvious over the prior art references cited in the request. And on April 5, 2009, the New York court stayed Paone’s law suit in light of that rejection, pending final resolution of the reexamination.
Now, however, the PTO has decided to withdraw the prior art rejection in light of arguments made by Paone. Six original claims were confirmed, and eight amended or new claims were found to be patentable. Four claims, however, were cancelled, including independent claims 1, 23 and 32.
It is not clear whether the court will lift the stay since Microsoft has filed with the PTO two more reexamination requests against the ‘789 patent: one on June 29, and another on July 27. Reexamination has been ordered for the first new request, but no determination has yet been made with respect to the second.