Scott Daniels | February 24, 2012
It has been a rocky few weeks for Oracle on the PTO reexamination front of its patent and copyright dispute with Google. Of the seven patents that Oracle has alleged to be infringed by Google’s Android®, the PTO rejected the claims of three this month. (These developments are put into perspective by Florian Mueller in his excellent post Wednesday http://fosspatents.blogspot.com/2012/02/non-final-invalidation-of-james-gosling.html).
At the beginning of the month, the PTO made final its rejection of all the claims in the ex parte reexamination of Oracle’s U.S. Patent No. 5,966,702. Although the examiner withdrew one of the two previous anticipation rejections, she maintained the other, addressing each of the arguments Oracle had raised. Oracle has the right to traverse this final rejection, but the examiner is unlikely to reverse her position, and Oracle will likely need to appeal the rejection to the PTO Board of Appeals.
Second, on February 16th, the PTO issued an Action Closing Prosecution in the inter partes reexamination of Oracle’s U.S. Patent No. 6,910,205. As with the ‘702 reexamination, the examiner has not adopted all the rejections proposed by Google, but she has concluded that all the claims in reexamination are anticipated by a prior art reference. The “Action Closing Prosecution” in inter partes reexaminations has certain substantive similarities to a final rejection in ex parte reexaminations.
On the same date, the PTO issued a non-final rejection of all the claims in reexamination of Oracle’s U.S. Reissue Patent No. 38,104: claims 11-126 and 33-41 were rejected as anticipated by one reference, and claims 11, 13-23 and 27-41 were rejected anticipated by a second reference. Because the rejection is non-final, Oracle has the full opportunity to reply to the rejections with legal argument and expert declarations.
Mr. Mueller predicts that Oracle might be unsuccessful, however, in overcoming the rejection and that the examiner will eventually make final the rejection of the ‘104 patent claims. This appears to be a sound prediction in view of evident thoroughness of the non-final rejection and the fact that the same panel of examiners considering the ‘104 patent, made final the rejection of the ‘702 patent and closed prosecution of the ‘205 patent.