Ronald Katz & Sorenson Research Appeals DecidedFor those keeping score, the infamous patent portfolio of Ronald Katz continues to wither under the pressure of patent reexamination. Previously, I pointed out the problems patent reexamination has created for the Katz portfolio in parallel litigation. Likewise, last year, an expanded BPAI panel clarified their decision to reject claims in Katz Patent 5,561,707 by explaining the proper analysis for construing expired patent claims during patent reexamination.Yesterday, the BPAI shot down claims of yet another patent of the Katz portfolio (5,815,551) in Ex Parte Ronald Katz Technology Licensing L.P. In the most recent appeal, it appears Katz pursued very similar arguments to that rejected by the BPAI last year with respect to expired patents.Another infamous troll, Sorenson Research & Development Trust, fared much better yesterday at the BPAI.In Ex Parte Jens Erik Sorenson (4,935,184) yet another expired patent was considered by the BPAI. However, rather than disputing the standard applied to such patents during reexamination, Sorenson disputed the inherency finding of the examiner relative to a key claim term. The Board explained their reversal of the examiner as follows:[C]laim 1 requires that the stabilizing regions provided by the solidified first plastic material must rigidly secure the first common mode part in position in relation to the second complementary mold part.We are of the opinion that the Examiner has not provided a sufficient basis with factual underpinnings to support the position that Moscicki inherently discloses this aspect of claim 1. . . . . [T]hough Moscicki’s first plastic material may impede some movement of the first common mold part in relation to the second complementary mold part, it may not be sufficiently solidified to “rigidly secure” the first common mold part in position in relation to the second complementary mold part. Indeed, the Kazmer Declaration provides evidence that Moscicki’s first plastic material would not “rigidly secure” as required by claim 1.The Sorenson patent expired in February of 2008, thus it would appear to have only 3 years of enforceability remaining (i.e., 6 years beyond expiration). Since any renewed request for patent reexamination is unlikely to reach a final conclusion before that time, it seems that this licensing campaign will contin

For those keeping score, the infamous patent portfolio of Ronald Katz continues to wither under the pressure of patent reexamination. Previously, I pointed out the problems patent reexamination has created for the Katz portfolio in parallel litigation. Likewise, last year, an expanded BPAI panel clarified their decision to reject claims in Katz Patent 5,561,707 by explaining the proper analysis for construing expired patent claims during patent reexamination.

Yesterday, the BPAI shot down claims of yet another patent of the Katz portfolio (5,815,551) in Ex Parte Ronald Katz Technology Licensing L.P. In the most recent appeal, it appears Katz pursued very similar arguments to that rejected by the BPAI last year with respect to expired patents.

Another infamous troll, Sorenson Research & Development Trust, fared much better yesterday at the BPAI.

In Ex Parte Jens Erik Sorenson (4,935,184) yet another expired patent was considered by the BPAI. However, rather than disputing the standard applied to such patents during reexamination, Sorenson disputed the inherency finding of the examiner relative to a key claim term. The Board explained their reversal of the examiner as follows:

[C]laim 1 requires that the stabilizing regions provided by the solidified first plastic material must rigidly secure the first common mode part in position in relation to the second complementary mold part.

We are of the opinion that the Examiner has not provided a sufficient basis with factual underpinnings to support the position that Moscicki inherently discloses this aspect of claim 1. . . . . [T]hough Moscicki’s first plastic material may impede some movement of the first common mold part in relation to the second complementary mold part, it may not be sufficiently solidified to “rigidly secure” the first common mold part in position in relation to the second complementary mold part. Indeed, the Kazmer Declaration provides evidence that Moscicki’s first plastic material would not “rigidly secure” as required by claim 1.

The Sorenson patent expired in February of 2008, thus it would appear to have only 3 years of enforceability remaining (i.e., 6 years beyond expiration). Since any renewed request for patent reexamination is unlikely to reach a final conclusion before that time, it seems that this licensing campaign will continue.