Three Tidbits

Scott Daniels | May 5, 2011

1.     PTO Affirms Reexamination of Katz ‘120 Patent

Earlier this week the PTO Board of Appeals affirmed the rejection of the claims in reexamination of U.S. Patent No. 5,974,120 assigned to Ronald Katz Technology Licensing.  Essentially, the Board agreed with the examiner that the ‘120 claims in reexamination – that claimed a telephone processing system for receiving call from terminals in different call modes (e.g., “800” or an area code) – was obvious over certain combinations of prior art references, despite Katz’ technical arguments and assertions of commercial success.

A point that might interest some is that the ‘120 patent, which expired July 7, 2009, is only now being held invalid.  Clearly, there is no fault to be found with the patentee, the reexamination requesters, or PTO.  Yet one wonders about a patent system in which an invalid patent (assuming that the Board is correct) remains in force so long, here since October 1999. 

2.     CAFC Affirms Rejection of Reissue Claims for Impermissible Recapture

The recapture rule prohibits a patentee from recapturing claimed subject matter that it had surrendered during the original prosecution of the patent.  Three questions must be addressed to determine whether the rule has been violated:

 (1)   are the reissue application claims broader in scope than the patented claims;

(2)   if so, do the broader aspects of the reissue claims relate to the subject matter surrendered in the original prosecution; and

(3)   has the surrendered subject matter “crept into” the reissue claims.

 In re Clement, 131 F.3d 1464 (Fed. Cir. 1997).  

Here, the patentee amended its semiconductor packaging claims during the original prosecution to recite “a circular attachment pad” limitation. In its reissue application, the patentee sought to remove the word “circular” from the limitation.  The CAFC found, essentially, that at least part of the surrendered subject matter had “crept into” the reissue claims.  The CAFC therefore affirmed the PTO’s rejection of the reissue claims.

3.     Medtronic Requests Reexamination of Edwards Lifesciences Heart Valve Patents

Medtronic requested inter partes reexamination yesterday of U.S. Patent Nos. 6,582,462 and 7,789,909 owned by Edwards Lifesciences and claiming certain heart valve systems.  Edwards has sued Medtronic in Delaware for infringing the ‘462 and ‘909 patents, as well as two other patents already in reexamination  The ‘909 reexamination request raises an interesting question of whether the ‘909 claims have sufficient Section 112 support in a parent application to be entitled to benefit of the filing date of that earlier application.

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