Ex Parte 7765482 et al

Patent Trial and Appeal Board

Mar 29, 2018

90012987 (P.T.A.B. Mar. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
90/012,987 09/10/2013
34611 7590 03/30/2018
LAW OFFICE OF DUANE S. KOBAYASHI
1325 Murray Downs Way
Reston, VA 20194
FIRST NAMED INVENTOR
7765482
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
347269-000059 7602
EXAMINER
MENEFEE, JAMES A
ART UNIT PAPER NUMBER
3992
MAILDATE DELIVERY MODE
03/30/2018 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex Parte SUMMIT 6 LLC,
Patent Owner
Appeal2015-006201
Ex Parte Reexamination Control No. 90/012,987
Patent 7,765,482 B2
Technology Center 3900
Before JEFFREY B. ROBERTSON, Administrative Patent Judge.
ORDER DISMISSING APPEAL AND REMANDING EX PARTE
REEXAMINATION
This ex parte reexamination proceeding is presently before the Patent
Trial and Appeal Board (Board) for consideration of the appeal proceeding
in light of a recent Decision by the U.S. Court of Appeals for the Federal
Circuit (CAFC) concerning the instant patent.
Appeal2015-006201
Ex Parte Reexamination Control No. 90/012,987
Patent 7,765,482 B2
SALIENT FINDINGS
1. On September 10, 2013, a request for ex parte reexamination of U.S.
Patent No. 7,765,482 B2 ('482 patent) was filed, which was assigned
Control No. 90/012,987 ('987 proceeding).
2. Reexamination of claims 38, 40, 44--46, and 49 the '482 patent was
ordered in the '987 proceeding on November 6, 2013.
3. Prosecution was conducted in the '987 proceeding, and on May 21, 2014,
a final rejection was mailed, which rejected claims 38, 40, 44--46, and 49
as being unpatentable.
4. Patent Owner filed a Notice of Appeal in the '987 proceeding on
September 22, 2014.
5. On February 25, 2015, a petition requesting inter partes review of claims
12, 13, 16, 18, 19, 21-25, 35-38, 40--42, 44--46, and 49 of the '482 patent
was filed, which was assigned case no. IPR2015-00806 (' 806
proceeding).
6. Briefing was completed in the '987 proceeding on March 20, 2015.
7. On June 17, 2015, an Appeal Docketing Notice was mailed in the '987
proceeding.
8. On September 9, 2015, a Decision to institute review of claims 12, 13,
16, 18, 19, 21-25, 35-38, 40--42, 44--46, and 49 of the '482 patent was
issued in the '806 proceeding.
9. On September 25, 2015, in the '806 proceeding, Patent Owner filed a
motion to stay the '987 proceeding.
10. On October 7, 2015, an Order granting Patent Owner's motion to stay
the '987 proceeding was entered in the '806 proceeding.
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Appeal2015-006201
Ex Parte Reexamination Control No. 90/012,987
Patent 7,765,482 B2
11. On October 8, 2015, a petition requesting inter part es review of claims
12, 13, 16, 18, 19, 21-25, 35-38, 40--42, 44--46, and 49 of the '482 patent
was filed, and was assigned case no. IPR2016-00029 ('029 proceeding),
which was accompanied by Petitioner's motion for joinder with the '806
proceeding.
12. The Order to stay was entered in the '987 proceeding on October 16,
2015.
13. On April 4, 2016, a Decision to institute the '029 proceeding was
entered, and Petitioner's motion for joinder with the '806 proceeding was
granted.
14. On September 6, 2016, a Final Written Decision was issued in the
joined '806 and '029 proceedings, which found all of claims 12, 13, 16,
18, 19, 21-25, 35-38, 40-42, 44--46, and 49 of the '482 patent to be
unpatentable.
15. Patent Owner filed a Notice of Appeal to the CAFC on November 7,
2016, in the joined '806 and '029 proceedings.
16. On December 7, 2017, the CAFC issued a Decision in the joined '806
and '029 proceedings, which affirmed the Board's determination of
unpatentability.
17. The CAFC's mandate issued on January 16, 2018.
18. On March 21, 2018, an Order lifting the stay of the '987 proceeding was
entered.
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Appeal2015-006201
Ex Parte Reexamination Control No. 90/012,987
Patent 7,765,482 B2
DISCUSSION
An Order lifting the stay of this ex parte reexamination was issued on
March 21, 2018. Patent Owner's appeal of the final rejections of claims 38,
40, 44--46, and 49 of the '482 patent in the '987 proceeding, is before the
Board for consideration. However, in the joined '806 and '029 proceedings,
the CAFC issued a Decision, which affirmed the Board's determination of
unpatentability of claims 12, 13, 16, 18, 19, 21-25, 35-38, 40-42, 44-46,
and 49 of the '482 patent. The mandate has issued. The time for filing a
petition for a writ of certiorari has expired.
In accordance with MPEP § 2286, Part IV, 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.
If all of the claims being examined in the reexamination proceeding are
finally held invalid or unenforceable, and the decision was rendered
subsequent to the order, the reexamination will be terminated by the CRU or
TC Director as no longer containing a substantial new question of
patentability, and the reexamination will be concluded.
Claims 12, 13, 16, 18, 19, 21-25, 35-38, 40--42, 44--46, and 49 of the
'482 patent have been finally determined to be unpatentable in the joined
'806 and '029 proceedings. Claims finally held invalid by a federal court,
after all appeals, will be withdrawn from consideration and not reexamined
during a reexamination proceeding. Accordingly, claims 38, 40, 44-46, and
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Appeal2015-006201
Ex Parte Reexamination Control No. 90/012,987
Patent 7,765,482 B2
49 of the '482 patent may not continue to be reexamined in the '987
proceeding, and are therefore withdrawn from consideration.
Because there is no claim remaining in the '987 proceeding on appeal,
IT IS ORDERED THAT the appeal is dismissed.
DECISION
In view of the foregoing, the appeal is DISMISSED.
The '987 proceeding is remanded to the Office of the Commissioner
for Patents for appropriate action consistent with MPEP § 2286, Part IV.
COUNSEL FOR PATENT OWNER:
LAW OFFICE OF DUANE S. KOBAYASHI
1325 Murray Downs Way
Reston VA 20194
COUNSEL FOR THIRD PARTY REQUESTER:
DLA PIPER LLP (US)
401 CONGRESS
SUITE 2500
AUSTIN, TX 78701
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