Tuesday, June 30, 2015

Microsoft loses at PTAB in re-exam 95002315

Back in January 2014, techcrunch noted:

Motorola Mobility is being sold to Lenovo, in a deal worth $2.91B. Google is divesting itself of the handset division it purchased for $12.5B in 2011, but it will keep some of the assets — including patents.

One infers patent challenges were passed along as well. One of these was against Microsoft with Patent Owner, Microsoft Corporation (“Owner”), unsuccessful in its appeal to PTAB under 35 U.S.C. §§ 134(b) and 315(a) from various adopted rejections.

PTAB noted: We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)(precedential)
(citing In re Oetiker, 977 F.2d 1443, 1445(Fed. Cir. 1992))

Of Ex parte Frye, from LawUpdates: In a recent and rare precedential decision, the Board of Patent Appeals and Interferences (BPAI) has clarified that examiner findings are given no deference when specifically challenged on appeal. However, the Board will neither review nor disturb examiner findings that are not specifically challenged on appeal. The opinion in Ex Parte Nancy C. Frye, 94 U.S.P.Q.2d 1072, 2010 WL 889747 (BPAI 2010) is particularly notable because both U.S. Patent and Trademark Office Director David J. Kappos and Deputy Director Sharon R. Barner joined the Board in issuing the opinion.


Director Kappos best stated the message of Frye on his blog: “In summary, preserving a complete de novo review on the one hand, while not diverting Board effort into issues no raised by the appellant on the other hand, preserves the right balance between thorough review and administrative efficiency.”

The Frye decision appears designed to emphasize the importance of challenging on appeal the specific factual findings made by the examiner, rather than merely the general basis for the examiner’s rejection. The Board will defer to examiner findings that are not specifically challenged.


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