USPTO Denies Petition for Further Review

The epic battle between Microsoft and i4i effectively ended with the Supreme Court ruling upholding the clear and convincing standard. Yet, some lingering arguments at the USPTO were only recently finalized relative to i4i’s U.S. Patent 5,787,449.

As a reminder, Microsoft had made two attempts to invalidate the ‘449 Patent at the USPTO. A first ex parte patent reexamination was favorably concluded to i4i without amendment to the original claims (90/010,347), and the second request was denied outright (90/011,198) on November 24, 2010.

On December 27, 2010 a Rule 1.181 petition was filed to seek supervisory review of the examiner’s November denial. This petition was denied on September 29. 2011. The original petition, and the related decision may be found (here)

In denying the petition the Office found that the submitted art was largely cumulative of that already considered, and took issue with some of the positions asserted by Microsoft in their second request, noting:

Requester seems to alter what they consider a tag to suit their current argument. However, these changing definitions are internally inconsistent within the request.. . . . . . .the section cited refers to start tags for Chapter and Title. Reading until the next code is found does not necessarily mean that the next code is an end code and, in the portion that requester refers to, it is not the end tag. Furthermore, these tags have nothing to do with the nodes in the tree structure . . . .Requester is forcing the term tag to take on an unsupportable meaning to attempt to combine the references in a manner that would contain a new teaching.

Interestingly, the Office did take the opportunity to correct a statement in the first reexamination relating to the breadth of claim scope for the claim term “addresses of use,” adopting the court’s construction (see page 6 of the petition decision)

Of course, a grant of the December petition would not have had any real impact on the now settled dispute. The recent USPTO endorsement is just a bit more icing on the cake.