Scott Daniels | November 3, 2009
The PTO announced today ex parte reexaminations of U.S. Patent Nos. 7,335,924 and 7,384,808 which relate to high-brightness light emitting diodes. The ‘924 and ‘808 patents are owned by Huga Optotech. The requests were filed by Epistar on August 3, 2009.
Late last year Epistar filed a complaint in the District of Columbia seeking declaratory judgment that the ‘924 and ‘808 patents, as well as U.S. Patent No. 6,287,882, were invalid and not infringed. Shortly after filing the present reexamination requests, Epistar filed a notice of voluntary dismissal of that declaratory judgment action.
The ‘924 request asserted that the combination of the prior art Chen and Suzuki patents raises a substantial new question of patentability (SNQ) for certain of the ‘924 claims. The PTO noted that Chen had been applied by the examiner in the original prosecution, as had a secondary reference, Fan, which had a disclosure similar to that in Suzuki. But Suzuki was more relevant than Fan to the claimed diodes, the PTO found, because it disclosed “carbon-doped III-V semiconductor material for use as a non-alloy ohmic contact layer,” as required by the ‘924 claims.
The PTO concluded that there was a SNQ.
The ‘924 request also asserted that the combination of Chen with the Saeki patent also raised an SNQ. The PTO agreed, applying a similar analysis as with Chen and Suzuki, and found that Saeki was also more relevant to the claimed diodes than the secondary Fan reference that had been before the examiner in the original ‘924 prosecution.
With respect to the ‘808 patent, the PTO found that the Chen patent alone raised an SNQ because the reference disclosed various claimed features that the original examiner concluded were missing from the prior art. The PTO explained that
Chen is being viewed in a new light of, in fact, teaching each of the steps found important to patentability of claim 1 and its dependent claims that appear to have escaped review by the examiner of the [‘808] application.
(Emphasis added). Significantly, the PTO was willing to acknowledge an apparent oversight by the original examiner as a basis for finding an SNQ.1
1The PTO additionally found SNQs based on the combinations of Chen and Suzuki, and Chen and Saeki, as it did for the ‘924 claims.