The Wicker patent case, confusing issues of prior art?

Taking the following AP story at face value, the text In September, company lawyers determined that the U.S. Patent and Trademark Office had in effect overruled the 1995 court decision three years later when it granted a more thorough patent application he had written with his sons' help. suggests that the USPTO approved broader claims after a court had invalidated narrower claims over prior art. The USPTO does not have the authority to overrule a court decision on patent claim validity.

***by Ben Dobbin of AP-->

While testing a fine-line engraving method, Ralph Wicker befriended Patrick White, a print shop owner who put the latest color copier models at his disposal. Shortly before securing a patent in 1991, Ralph presented his work to Secret Service officials, who urged him not to tell anyone, his sons say.

But the Treasury stopped taking his calls, his sons say, then unveiled a technique it called "concentric fine-line printing."

In a 1995 lawsuit, Ralph accused the Treasury Department of pirating his patented method of incorporating fine-line engravings in its new $100 bill. He rejected a $3million settlement offer.

Although finding that "the United States in fact was infringing" upon his 1991 and 1993 patents, the U.S. Court of Federal Claims determined two earlier European patents invalidated parts [?] of his invention.

Ralph died in 1997 of liver cancer. In 1999, Tom and David Wicker received word that the European Patent Office had decided their late father's work was a technological leap over "prior art" patents in Britain in 1968 and Germany in 1986 that had tripped up the lawsuit in Washington.

In 2002, the brothers transformed their expanding portfolio of patents into Document Security Systems Inc., a publicly traded company headed by White. Tom Wicker was given 1 million shares; the stock recently surged above $13. The Rochester-based company employs 21 people and generates $2 million in anti-piracy products sales.

Tom Wicker has secured patents of his own to tackle forgeries. The technology embeds hidden images that become visible when documents, photos, movies or compact discs are copied.

Ralph Wicker's fine-line method appears today in all U.S. bank notes and has been inserted into at least 75 currencies, the Wickers say. Their first in a potentially long line of patent-infringement targets is the euro.

In September, company lawyers determined that the U.S. Patent and Trademark Office had in effect overruled the 1995 court decision three years later when it granted a more thorough patent application he had written with his sons' help.

The upshot: The Wickers hope to negotiate a multimillion-dollar payoff with the Treasury. A Bureau of Engraving and Printing spokeswoman declined comment.

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Need to look into this matter in more detail, later...

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Final Holding of invalidity: A final holding of claim invalidity or unenforceability (after all appeals) is controlling on the Patent Office. In such cases, a substantial new question of patentability would not be present as to the claims held invalid or unenforceable. See Ethicon v. Quigg, 849 F.2d 1422, 7 USPQ2d 1152 (Fed. Cir. 1988). Where all claims are affected, the reexamination will be vacated by the TC Director. A non-final holding of claim invalidity or unenforceability, however, will not be controlling on the question of whether a substantial new question of patentability is present.
[See also 35 U.S.C. 311 ]


Separately, this could have some relevance to the patent quality debate.