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Google Reexam Requests Devastating to Lodsys
Thursday, August 18 2011 @ 12:50 PM EDT

"You wanna know how you do it?
Here's how, they pull a knife, you pull a gun.
He sends one of yours to the hospital, you send one of his to the morgue.
That's the Chicago way . . ."

- The character Malone in the movie "The Untouchables"

On Friday, August 12, Google filed inter partes reexamination requests with the U.S. Patent and Trademark Office on the two patents asserted in patent infringement claims by Lodsys against, among others, several Android developers. The patents subject to these requests are U.S. Patent Nos. 7,222,078 and 7,620,565.

We have had a chance to review the reexamination requests, and after that review we believe Lodsys is in for a rough time. We have seen reexam requests before, but when we saw these, the above quote came to mind. Lodsys, you shouldn't have brought a knife to a gunfight.

And for all of those naysayers who have shouted Google is not doing enough to protect Android app developers and that Android app developers should cave to the Lodsys demands, you need to reconsider your position.

A bit of a forewarning. Reexam requests do not read like novels. This is highly technical information addressed in the context of patent claims. Also, because of the sheer extent of the prior art and its application in these two case, the requests are quite long, running to some 250+ pages each. For that reason we have not reproduced them in their entirety in html. We do, however, provide the reexamination requests, the supporting prior art, and the claim chart exhibits for each, which you can find below.

Let's start with the '078 reexam request. The patent consists of 74 claims of which only four (1, 54, 60 and 69) are independent claims. Google is seeking reexamination of 35 of these claims, including independent claims 1 and 69.

The first thing we note is that the '078 patent was filed in December 2003, but its priority date goes back to August 6, 1992 (this is also true of the '565 patent) so prior art would need to precede that date. Of the five key items of prior art on which Google relies, the youngest was filed in 1991, and the oldest has a priority date that goes back to 1988. In other words, the prior art asserted by Google was around before the earliest date of the invention embodied in the '078 patent.

The heart of the '078 reexamination request is found in this statement from the request:

In allowing the ‘078 Patent to issue, the Examiner in the original prosecution stated that the prior arts do not disclose or fairly teach:

a user interface which is part of each of the units of the commodity, configured to provide a medium for two-way local interaction between one of the users and the corresponding unit of the commodity, and further configured to elicit, from a user, information about the user’s perception of the commodity;

a memory within each of the units of the commodity capable of storing results of the two-way local interaction, the results including elicited information about the user perception of the commodity.

As noted later in the reexamination request, the highlighted language above was a critical limitation that allowed the '078 patent to issue. It is also worth noting that this highlighted language is, to a large extent, the critical language in the claims Lodsys is asserting against the application developers.

The statement goes on:

Ex. PAT-C, ‘078 Pros. Hist., Notice of Allowability, p.2, January 19, 2007 (emphasis added). The prior art relied on in this Request discloses and teaches all the features recited by Claims 1- 7, 10-16, 18, 22, 24, 25, 30-32, 38, 46-48, 50-53, and 69-74 of the ‘078 Patent, including the above-recited features that the Examiner in the original prosecution found to contain allowable subject matter.

In addition, the prior art relied on in this Request discloses new, non-cumulative technological teachings that were not previously considered or discussed on the record during the prosecution of the ‘078 Patent. Had the Examiner considered the prior art relied on in this Request, Claims 1-7, 10-16, 18, 22, 24, 25, 30-32, 38, 46-48, 50-53, and 69-74 would not have issued. Reexamination is respectfully requested in view of the SNQs presented below.

The request then goes on to apply the newly cited prior art against these claims and especially against the highlighted language. For example, the Durden patent (listed below):

discloses the following features that the Examiner in the original prosecution found to contain allowable subject matter:

a user interface which is part of each of the units of the commodity, configured to provide a medium for two-way local interaction between one of the users and the corresponding unit of the commodity, and further configured to elicit, from a user, information about the user’s perception of the commodity;

and a memory within each of the units of the commodity capable of storing results of the two-way local interaction, the results including elicited information about the user perception of the commodity.

Hmmmm, where have we seen that language before? Amazingly, each of the other four items of cited prior art also disclose these same two critical elements. In other words, there were five patents outstanding at the time the '078 patent issued that each embodied the critical limitations on the '078 claims. What are the odds of that? We are not talking about prior art that must be combined to form an obviousness objection.

These five items of prior art go to the fact that the critical elements of the '078 patent claims are not even novel!

This fact is more specifically demonstrated in each of the claim charts, which we have also listed below. The remainder of the reexamination request proceeds to go through the application of this prior art in excrutiating detail. Let's take a look at just the application of the Durden patent to claim 1 of the '078 patent:

Claim 1 should be rejected under 35 U.S.C. § 102(b) as unpatentable over Durden. Requestor provides a concise statement of the substantial new question of patentability for Claim 1 based on Durden under 35 U.S.C. § 102(b).

Please see attached Exhibit CC-A for a claim chart comparing Durden with Claim 1 of the ‘078 Patent under 35 U.S.C. § 102(b)

Claim 1 recites and Durden discloses “[a] system comprising units of a commodity that can be used by respective users in different locations.” Ex. PAT-A, ‘078 Patent, 91:44-46 (emphasis added).

Durden discloses set-top terminals (“units of a commodity”) that can be used by respective subscribers in different locations.

“Each subscriber in the addressable cable system is provided with a set-top terminal (STT) 15 by the cable operator as schematically indicated in FIG. 1. STT 15 allows the subscriber to tune and descramble the services that he has requested from the cable system operator.”

Ex. PA-A, Durden, 6:43-48 (emphasis added). Figure 1 shows Durden’s set-top terminal (“unit of a commodity”).

Id., Fig. 1.

Claim 1 next recites and Durden discloses “a user interface, which is part of each of the units of the commodity…Ex. PAT-A, ‘078 Patent, 91:47-48 (emphasis added).

Durden discloses a hand-held remote control and LED display (“a user interface”) that is a part of the converter/set-top terminal (“unit of a commodity”).

“With the converter turned on, the subscriber depresses the keyboard keys “PRG” and “–” of his hand–held remote control. If an access code is required to purchase programming, this must be entered before the converter will enter the IPPV mode and display “VCR” using LED elements.”

Ex. PA-A, Durden, 11:67–12:5 (emphasis added). Durden also discloses an IPPV module (“a user interface”) that is part of the set-top terminal (“unit of the commodity”) and is used to authorize a purchase of a pay-per-view event.

Module 20 allows the subscriber to authorize his STT to receive a pay–per– view event, store the data associated with the purchase of that event in memory 21, and transmit that stored data to the cable operator via the telephone network 24.

Id., 6:57–61 (emphasis added).

Claim 1 next recites and Durden discloses that the user interface is “configured to provide a medium for two-way local interaction between one of the users and the corresponding unit of the commodity…Ex. PAT-A, ‘078 Patent, 91:48-50 (emphasis added).

Durden discloses that the subscriber depresses keys to enter an access code and sees the LED elements (“two-way local interaction”) of the converter/set-top terminal.

“With the converter turned on, the subscriber depresses the keyboard keys “PRG” and “–” of his hand–held remote control. If an access code is required to purchase programming, this must be entered before the converter will enter the IPPV mode and display “VCR” using LED elements.”

Ex. PA-A, Durden, 11:68–12:5 (emphasis added).

Claim 1 next recites and Durden discloses that the user interface is “further configured to elicit, from a user, information about the user’s perception of the commodity.Ex. PAT-A, ‘078 Patent, 91:50-52 (emphasis added).

Durden discloses that the set-top-terminal is configured to allow the subscriber to authorize a purchase of a pay-per-view program.

“Each subscriber in the addressable cable system is provided with a set–top terminal (STT) 15 by the cable operator as schematically indicated in FIG. 1. STT 15 allows the subscriber to tune and descramble the services that he has requested from the cable system operator.

Ex. PA-A, Durden, 6:43–48 (emphasis added). ). The subscriber enters an event ID for the program that he wishes to purchase (“elicit, from a user, information about the user’s perception”).

the subscriber simply enters the three or four digit event ID number of the program he wishes to purchase.

Id., 12: 9-11 (emphasis added). Durden also discloses that the set-top terminal is configured to cancel a pre-bought program (“elicit, from a user, information about the user’s perception”).

“…it is possible to step through the list of programs which have been pre-bought with an opportunity to cancel any event which the subscriber no longer wishes to view or which have erroneously entered.”

Id., 12:14-18 (emphasis added).

Claim 1 next recites and Durden discloses ““a memory within each of the units of the commodity capable of storing results of the two-way local interaction, the results including elicited information about user perception of the commodity.Ex. PAT-A, ‘078 Patent, 91:53-56 (emphasis added).

Durden discloses a memory within each of the subscriber’s set-top terminal (“units of the commodity”). Figure 1 shows the memory.

Ex. PA-A, Durden, Fig. 1 (emphasis added).

Durden discloses that the data associated with the purchased pay-per-view event (“information about the user perception of the commodity”) is stored in the memory.

“Module 20 allows the subscriber to authorize his STT to receive a pay–per– view event, store the data associated with the purchase of that event in memory 21, and transmit that stored data to the cable operator via the telephone network 24.”

Id., 6:57–61 (emphasis added).

Claim 1 next recites and Durden discloses “a communication element associated with each of the units of the commodity capable of carrying results of the two-way local interaction from each of the units of the commodity to a central location.” Ex. PAT-A, ‘078 Patent, 91:57-60 (emphasis added).

Durden discloses a transmitter (“communication element”) associated with the settop terminal (“unit of the commodity”).

A transmitter coupled to the memory transmits the stored billing information over a telephone network.”

Id., 3:39–41 (emphasis added). Durden discloses that the billing information transmitted to a billing computer (“a central location”) includes the subscriber’s authorization (e.g., access code) (“results of the two-way local interaction”).

Billing computer 5 records and maintains records for each cable subscriber. These records may contain information such as the subscriber’s name, address and telephone number, the type of equipment the subscriber has in his possession, and which pay services the subscriber is authorized to view.”

Id., 4:51–57 (emphasis added).

Claim 1 next recites and Durden discloses “a component capable of managing the interactions of the users in different locations and collecting the results of the interactions at the central location.” Ex. PAT-A, ‘078 Patent, 91:61-63 (emphasis added).

Durden discloses a system manager (“a component” “at a central location”) reads billing information including the subscriber’s authorization (e.g., access code) (“results of the two-way local interaction”) uploaded from the IPPV modules of the subscriber’s set-top terminal.

“A computer of system manager 8 will have a disk and controller dedicated to the storage of IPPV information. A memory resident program of system manager 8 will read the IPPV transactions, uploaded from the IPPV modules in the system.”

Ex. PA-A, Durden, 5:12–16 (emphasis added). Durden also discloses that the billing computer (“a component” “at a central location”) maintains records including the subscriber’s authorization (e.g., access code) (“results of the two-way local interaction”).

Billing computer 5 records and maintains records for each cable subscriber. These records may contain information such as the subscriber’s name, address and telephone number, the type of equipment the subscriber has in his possession, and which pay services the subscriber is authorized to view.”

Id., 4:51–57 (emphasis added).


We see the same situation with the '565 patent. The '565 patent has an even more recent filing date: August 25, 2006. It embodies 32 claims of which four (1, 15, 27 and 30) are independent. Google is seeking inter partes reexamination of 28 of the 32 claims, including all four of the independent claims.

As with the '078 reexamination, Google is relying on just five items of newly identified prior art, all patents. In fact, three of the patents relied upon as prior art in the '565 reexamination request were also used in the '078 request. So once again you have patent prior art that precedes the challenged patent.

In the '565 reexamination request the key feature (and basis for rejection) is identified as:

In allowing the ‘565 Patent to issue, the Examiner in the original prosecution stated that the prior arts do not disclose:

incrementing a counter corresponding to the trigger event upon detection of the trigger event, and causing the display of a user interface, configured to probe for information regarding a use of the product, if the counter exceeds a threshold.

Ex. PAT-C, ‘565 Pros. Hist., Notice of Allowability, p. 3, July 1, 2009 (emphasis added). The prior art relied on in this Request discloses and teaches all the features recited by Claims 1-11, 13-15, 17-22, and 25-32 of the ‘565 Patent, including the above-recited features that the Examiner in the original prosecution found to contain allowable subject matter.

In addition, the prior art relied on in this Request discloses new, non-cumulative technological teachings that were not previously considered or discussed on the record during the prosecution of the ‘565 Patent. Had the Examiner considered the prior art relied on in this Request, Claims 1-11, 13-15, 17-22, and 25-32 would not have issued. Reexamination is respectfully requested in view of the SNQs presented below.

SNQs are significant new questions (of patentability).

As in the '078 case, Google offers that each of the five patents cited as prior art in the '565 case establish those patents as disclosing the key feature of novelty in the '565 patent. The level of proof in each instance is just as detailed as that provided in the '078 reexamination request.

I can't emphasize the following point enough.

Most reexamination requests rely on a finding of obviousness, which is a far more subject standard than demonstrating a lack of novelty. A lack of novelty can be established by any one piece of prior art that discloses each of the key elements of claimed invention. In each of these cases Google has identified not one, but five separate pieces of prior art that each alone demonstrates a lack of novelty in the critical Lodsys claims.

Look for the Lodsys defendants to seek a stay pending reexamination once these requests are granted, and I have no doubt they will be granted.

BANG!

************

Reexamination Request of 7,222,078

- Request Transmittal Form
- Request for Inter Partes Reexamination
- Prior Art A - U.S. Patent No. 5,003,384 (“Durden”)
- Prior Art B - U.S. Patent No. 5,077,582 (“Kravette”)
- Prior Art C - U.S. Patent No. 4,992,940 (“Dworkin”)
- Prior Art D - U.S. Patent No. 5,477,262 (“Banker”)
- Prior Art E - U.S. Patent No. 5,956,505 (“Manduley”)
- Claim Chart A - Claim Chart for Durden invalidating Claims 1-7, 10-16, 18, 22, 24, 25, 30- 32, 38, 46-48, 50-53, and 69-74 under 35 U.S.C. § 102(b)
- Claim Chart B - Claim Chart for Kravette invalidating Claims 1-7, 10, 15, 16, 18, 22, 24, 25, 30-32, 38, 46-48, 50-53, and 69-74 under 35 U.S.C. § 102(e)
- Claim Chart C - Claim Chart for Dworkin invalidating Claims 1-7, 10-16, 18, 22, 24, 25, 30- 32, 38, 46-48, 50-53, and 69-74 under 35 U.S.C. § 102(b)
- Claim Chart D - Claim Chart for Banker invalidating Claims 1-7, 10-16, 18, 22, 24, 25, 30- 32, 38, 46-48, 50-53, and 69-74 under 35 U.S.C. § 102(e)
- Claim Chart E - Claim Chart for Manduley invalidating Claims 1-7, 10, 15, 16, 18, 22, 24, 25, 30-32, 38, 46-48, 50-53, and 69-74 under 35 U.S.C. § 102(e)


Reexamination Request of 7,620,565

- Request Transmittal Form
- Request for Inter Partes Reexamination
- Prior Art A - U.S. Patent No. 5,003,384 (“Durden”)
- Prior Art B - U.S. Patent No. 5,077,582 (“Kravette”)
- Prior Art C - U.S. Patent No. 5,083,271 (“Thacher”)
- Prior Art D - U.S. Patent No. 5,956,505 (“Manduley”)
- Prior Art E - U.S. Patent No. 5,291,416 (“Hutchins”)
- Claim Chart A - Claim Chart for Durden invalidating Claims 1-6, 8-11, 13-15, 17-19, 21, 22, and 25-32 under 35 U.S.C. § 102(b)
- Claim Chart B - Claim Chart for Kravette invalidating Claims 1-6, 8-11, 13-15, 17- 19, 21, 22, and 25-32 under 35 U.S.C. § 102(e)
- Claim Chart C - Claim Chart for Thacher invalidating Claims 1-6, 8-11, 13-15, 17- 19, 21, 22, and 25-32 under 35 U.S.C. § 102(e)
- Claim Chart D - Claim Chart for Manduley invalidating Claims 1-6, 8-11, 13-15, 17- 19, 21, 22, and 25-32 under 35 U.S.C. § 102(e)
- Claim Chart E - Claim Chart for Hutchins invalidating Claims 1, 2, 5-10, 14, 15, 17- 22, and 26-32 under 35 U.S.C. § 102(e)



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