Scott Daniels | August 23, 2011
Oracle’s action in the Northern District of California, where it accuses Google of infringing seven patents related to the Java platform, is proceeding apace with a trial scheduled to start at the end of October. In the meantime, Google’s requests for reexamination are also moving quickly at the Patent Office. As of last week, the PTO had granted reexamination and rejected the claims of five of the Oracle patents; for the sixth patent, it has confirmed the validity of many of the claims and rejected several others.
On Friday, the PTO acted on Oracle’s remaining patent in dispute, U.S. Patent No. 6,910,205, rejecting each of the Oracle claims-in-suit. Claims 1-4 and 8 were rejected as being anticipated by one reference, and claim 8 was rejected as being anticipated by a second reference.
But the outcome was by no means a complete success for Google – the PTO refused to adopt a third anticipation rejection proposed by Google. And, in a rather pointed manner, the PTO refused to adopt two proposed obviousness rejections, stating that Google’s Request had failed to provide “a legally tenable rationale for combining the cited teachings under § 103” as required by KSR, and instead gave “mere conclusory statements.”
This requirement of KSR – that the party proposing a combination of prior art “identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does” – seems to be invoked more and more frequently at the PTO. For instance, also last Friday, the PTO Board of Appeals reversed the rejection of claims in reexamination, finding that the “Examiner’s articulated rationale” for combining two references failed to rebut the patentee’s assertion that the art actually “taught away” from combining those references.
Oracle will now traverse the rejection of the ‘205 claims.