BPAI Agrees Invalidated Claims are Invalid

In a strange development, the BPAI issued a decision yesterday invalidating claims 1-6 of U.S. Patent 6, 961,737. While the decision itself is straight forward, it is odd in that claims 1, 3, 4 and 6 were previously invalidated by the CAFC.

As discussed this time last year, the ‘737 Patent was one of the patents at issue in In Dow Jones & Co., Inc. v. Ablaise Ltd., (Fed. Cir. 2010). On May 28, 2010, the CAFC determined that all but claims 2 and 5 of the ‘737 Patent were invalid based upon prior art, including a patent identified as the “Bobo Patent.” The decision was noteworthy as footnote 3 explained the final rejection status of the reexamination, lamenting that the appeal may have been mooted altogether had the reexamination been at a more advanced point. At that time I pointed out that had the defendants not delayed their request for some two years that they may have been able to save themselves the cost of the CAFC appeal.

Yesterday, the BPAI essentially agreed with the CAFC, invalidating all claims based on the Bobo Patent, but such was a waste of time and resources. (decision here)

As noted in MPEP 2286, a final Federal Court holding of invalidity or unenforceability (after all appeals), is binding on the Office. Upon the issuance of a final holding of invalidity or unenforceability, the claims being examined which are held invalid or unenforceable will be withdrawn from consideration in the reexamination.

So why did the BPAI waste the time in issuing this appeal decision?

Reading the BPAI appeal, it becomes immediately apparent that the two claims left intact by the CAFC (claims 2 and 5) were not at all the focus of the appeal (See page 7 of the Decision). Instead, the entirety of the appeal discussion was directed to claims previously invalidated by the CAFC. Had the BPAI been aware of the previous decision, it seems their work would have been greatly reduced. (based upon the seemingly conclusory arguments submitted for claims 2 and 5).

PAIR records indicate that briefing was completed prior to the CAFC decision, and the Examiner Answer may have issued prior to the CAFC decision becoming final (expiration of rehearing/appeal time). However, thereafter the dispute continued on to the docketing and ultimate BPAI decision, some 12 months later.

Of course, the Office performs their own litigation searching.  But in cases such as this, where the patent is asserted against a wide swath of industry, digesting all of the various filings can be a formidable task. For this reason MPEP 2282 encourages not only the Patent Owner and Third Party, but any parties to update the Office as to such decisions.

In this case the Decision was provided to the Office by the Patent Owner on June 3, 2010. Unfortunately it was not submitted as a Notice of Concurrent Proceeding (MPEP 2282), but instead, on a Form 1449 IDS filing; for this reason, it was likely overlooked in the file.