Wednesday, May 26, 2010

Status unclear from the USPTO Public Pair website

Footnote 2 of the decision Orion v. Hyundai states:

Also, the asserted claims of the ’627 patent were the subject of an ex
parte reexamination proceeding, initiated by a third party. In a Final Office Action dated
May 5, 2009, the U.S. Patent and Trademark Office rejected the claims as anticipated
by prior art references, not overlapping with the prior art raised by Hyundai in this
action. The status of the reexamination proceeding, or any subsequent appeal, is
unclear from the USPTO Public Pair website.

Elsewhere in the decision there is discussion of what constitutes a printed publication,
and, yes, In re Hall is cited:

Whether a document constitutes a printed publication under § 102 is a question
of law based upon the underlying facts of each particular case. Cordis Corp. v. Boston
Scientific Corp., 561 F.3d 1319, 1332-33 (Fed. Cir. 2009). Here, to qualify as a printed
publication, the Electronic Parts Catalog promotional publication must have been
disseminated or otherwise made accessible to persons interested and ordinarily skilled
in the subject matter to which the advertisement relates prior to the critical date. See
Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008);
In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986) (explaining that public accessibility is the
“touchstone in determining whether a reference constitutes a ‘printed publication’ bar
under 35 U.S.C. § 102(b)”).

Of anticipation:

In addition to qualifying as a printed publication, a single prior art reference must
expressly or inherently disclose each claim limitation to anticipate a claim. Finisar,
523 F.3d at 1334. Additionally, the reference must “enable one of ordinary skill in the
art to make the invention without undue experimentation.” In re Gleave, 560 F.3d 1331,
1334 (Fed. Cir. 2009). Further, the party asserting invalidity due to anticipation must
prove anticipation, a question of fact, by clear and convincing evidence. Yoon Ja Kim v.
ConAgra Foods, Inc., 465 F.3d 1312, 1324 (Fed. Cir. 2006).


For purposes of the anticipation analysis, the only dispute is whether the prior art
Electronic Parts Catalog reference meets the “proposal” element. See Blackboard, 574
F.3d at 1379-80 (reversing a district court’s denial of JMOL on anticipation and finding
the claim invalid as anticipated where the plaintiff disputed anticipation of only one
limitation and this court found that the prior art taught that limitation).

The issue is one of matching claim elements:

Thus, testimonial and documentary evidence regarding the Electronic Parts
Catalog reference establish that the Electronic Parts Catalog reference anticipates claim
1 of the ’627 patent. See Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1319-
20 (Fed. Cir. 2009) (reversing a jury verdict and finding a method patent anticipated
where a plaintiff tried to distinguish the prior art based on disclosed functions “in
addition” to those claimed by the patent). Like the plaintiff in Exergen, Orion attempts to
distinguish the IDB2000 system because it could display wholesale prices in addition to
retail prices.

The presence of additional features in the prior art publication does not negate the presence of the claimed


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