Scott Daniels | February 10, 2011
A Right of Appeal Notice (RAN) has issued in the inter partes reexamination of Visto’s U.S. Patent No. 7,363,349 which claims gateway servers and methods for real-time data retrieval. In the RAN, the examiner states that the amended claims are patentable over the prior art because of Visto’s amendment of each of the independent claims to recite a limitation from one of the dependent claims. The reexamination request had been filed by Research in Motion (RIM) who now has the option of appealing the examiner’s decision to the PTO Board.
Who won? The case demonstrates the uncertainty of “reexamination kill-rates.” Assigning success in a case to one side or the other, where claims have been amended, depends on the commercial realities. If the market for the claimed product is largely in the future, Visto is the winner as it emerges from reexamination (assuming that RIM does not pursue and win an appeal) with a patent enjoying an “enhanced presumption of validity.” On the other hand, if the market for the claimed product is largely in the past, RIM is the winner – Visto’s damages for infringement of its independent claims for the period prior to the PTO’s issuance of the reexamination certificate are eliminated by Visto’s claim amendments. That issuance date could be extended by a year or two if RIM appeals the examiner’s decision.
Visto had sued RIM for infringement of the ‘349 patent in 2008, but the case has been dismissed, apparently on the basis of a settlement agreement.