PTO Board : US PTO Litigation Alert™

DIRECTV LOSES TWO PATENTS

| May 4, 2010

The PTO Board of Appeals affirmed yesterday the rejection of two DIRECTV satellite communication patents, U.S. Patent Nos. 6,389,336 and 6,327,523.

The ‘336 patent claims a satellite communication system that includes a service area on the surface of the Earth, having a predetermined minimum elevation angle from the horizon over a service area. 
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STEM CELL PATENT REJECTED BY PTO BOARD

| April 30, 2010

In a case having potentially great impact on the stem cell industry, the PTO Board of Appeals has rejected the claims of U.S. Patent No. 7,029,913, entitled “Primate Embryonic Stem Cells.”  In doing so, the Board reversed the examiner’s decision that had earlier confirmed the patentability of those claims.
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CAFC REVERSES PTO’S BROAD CLAIM CONSTRUCTION

| April 30, 2010

It is well-known that the PTO gives claims their broadest reasonable construction consistent with the specification, both in original examination and in reexamination.

But in the recent case In re Suitco Surface, the CAFC found that the PTO’s claim construction had been too broad. 
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BOARD REJECTS APPLE’S BROADENED REISSUE

| April 30, 2010

On Monday, the PTO Board of Appeals affirmed the examiner’s rejection of Apple’s Reissue App. S.N. 11/503,541, as an improper attempt to broaden the original claims more than two years after the original issue date of the patent.
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DEVELOPMENTS THE WEEK OF APRIL 12TH

| April 21, 2010

(1) Expert May not Refer to Pending Reexamination

Judge William Young ruled in NewRiver, Inc. v. Newkirk Products, Inc. (D. Mass., Case No. 1:06-cv-12146), that neither the witnesses nor the lawyers were allowed to mention, in the presence of the jury, a pending reexamination initiated by Defendant Newkirk.  Even so, an expert witness for Newkirk did so, and Plaintiff NewRiver moved for a new trial, arguing that its patent’s presumption of validity had been undermined.
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REJECTION OF KATZ PATENT AFFIRMED IN PART

| April 5, 2010

The PTO Board has affirmed the rejection of most of the claims of Ronald Katz’ U.S. Patent 6,292,547.  The ‘547 patent is entitled “TELEPHONIC-INTERFACE STATISTICAL ANALYSIS SYSTEM” and is part of a substantial patent portfolio owned by Katz covering interactive voice response devices and methods for use in a range of communication systems, including public telephone networks.  The ‘547 patent mentions polling, auction, lottery, game and mail order uses.
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RECENT DEVELOPMENTS

| April 5, 2010

(1) PTO Board Relies on Internet Posting to Reject Refrigerant Claims

The Board has affirmed the rejection of certain claims of U.S. Patent No. 6,336,333, owned by OZ Technology.  The ’333 patent claims an automobile refrigeration system designed to use refrigerant R-12, in which the R-12 has been replaced with a mixture of propane and butane in amounts that give approximately the same properties as R-12.  Reexamination was requested by Thermofluid Technologies.
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PTO BOARD AFFIRMS REEXAMINATION REJECTIONS

| March 23, 2010

Patent applicants enjoy a very high rate of success at the PTO Board in overturning examiner rejections.  The opposite is true for patentees appealing final rejections in reexamination proceedings.
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