In re: AT&T Intellectual Property II, L.P.


Docket No. 2016-1830

DYK, MAYER, REYNA
May 10, 2017

Brief Summary: No error found with the Board’s authority to reexamine even though LG withdrew since LG submitted the request and “was still involved in the proceedings at the time the institution decision was made.” Anticipation conclusion affirmed.

Summary: AT&T appealed PTAB final decision in an inter partes reexamination of US 7,454,071 directed to methods of compressing and transmitting digital video data, arguing the board improperly instituted the proceedings and erred in finding anticipation. The opinion explains that two days before the IPR procedures went into effect, LG requested inter partes reexamination of the ‘071 patent, alleging anticipation by the “Yang” prior art document. Before the PTO decided whether to initiate reexamination, LG sought to have its request for reexamination denied but “[c]ritically…did not withdraw from the reexamination proceedings, nor did it withdraw its request for reexamination” but “[i]nstead…filed a petition asking the PTO to suspend its standard rule prohibiting a requester from filing any documents between theh time of requesting inter partes reexamination and the PTO’s initial office action on the merits” (37 CFR 1.939). LG stated it justification for this request was “that it ‘does not believe…there is a reasonable likelihood of prevailing”. It “sought the suspension so that it could file a second request asking the PTO to deny [its] initial request”. The PTO then issued an Office Action granting the initial request which was followed by AT&T’s request for reconsideration and LG’s comment “urging the PTO to withdraw its stated grounds for rejection because they were ‘based on a factual interpretation of Yang that [was] not consistent with Yang’s disclosure.” And LG’s request to suspend the rules was denied since the PTO did not find this to be an “extraordinary situation” since the examiner is required to review the art to determine whether to begin reexamination. The examiner then agreed with the parties’ arguments overcoming Yang but rejected the claims based on new grounds (the Krause reference). LG then withdrew from the proceedings and AT&T was granted an interview with the examiner but the claims remained rejected in view of Krause. The FC panel first found no error with the Board’s authority under § 312(c) to move forward since LG submitted the request and “was still involved in the proceedings at the time the institution decision was made.” Regarding anticipation, the FC panel concluded the Board’s finding of anticipation was supported by substantial evidence (“prior art reference must disclose every limitation of the claimed invention, either expressly or inherently…substantial evidence is more than a mere scintilla; it is evidence that a ‘reasonable mind might accept as adequate’” (Blue Calypso, FC 2016)). It explained that “[a]nticipation occurs when a prior art reference discloses each element of the claim invention, not only where a particular embodiment within a reference discloses each element of the claimed invention” (Blue Calypso, FC 2016). Here, the FC panel concluded “a reasonable mind could accept the conclusion that Krause” disclosed the claimed invention and, therefore, “the Board’s decision is supported by substantial evidence.” And AT&T’s argument that the examiner “changed its basis for finding anticipation by Krause” was not accepted. The Board decision was therefore affirmed.

This entry was posted in Anticipation (35 USC 102), Appeal, Reexamination. Bookmark the permalink.

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