PTO Refuses Microsoft Request for 2nd Reexamination of i4i Patent, but Supreme Court Grants Cert on Clear & Convincing Standard

Scott Daniels | November 29, 2010

At the end of August, after the CAFC had affirmed a $290 million verdict for infringement of i4i’s U.S. Patent No. 5,787,449, and after the PTO had confirmed the validity of the ‘449 claims in reexamination, Microsoft requested that the Supreme Court review the verdict to determine whether a judgment of patent invalidity requires proof by “clear and convincing evidence.”  This morning the Supreme Court granted Microsoft’s petition. 

Of greater interest to this Blog, however, Microsoft also requested that the PTO conduct a second reexamination of those claims.  The PTO, however, has now refused to grant any reexamination of the ‘449 claims.

Specifically, the PTO determined that Microsoft’s proposed combination of prior art references failed to raise a Substantial New Question of Patentability (SNQ).  The references relied upon by Microsoft – the Kumigaya and DeRosa patents – had been considered in the original ‘449 prosecution and in the first reexamination, respectively.  Further, Microsoft’s new request failed to use the disclosure of the references for “a substantially different purpose” from that of the earlier proceedings or to identify any portion of the disclosure that had “escaped review” by the earlier examiners.  See In re Swanson, 540 F.3d 1368, 1377 (Fed. Cir. 2008).  Microsoft had simply questioned the judgment of the earlier examiners in finding the claims to be patentable, without pointing to new teachings of Kumigaya and DeRosa that disclosed each of the limitations in the ‘449 claims.

In a post later this week, we will report on a more detailed PTO analysis of the SNQ issue in a case less publicized than Microsoft/i4i.

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