USPTO Affirms All Rejections in the Firm’s Reexamination Request

Sisson & Banyas, Attorneys at Law, LLC proudly announces that the Patent Trial and Appeal Board (“PTAB”) at the United States Patent and Trademark Office has affirmed all rejections in the Firm’s Ex Parte Reexamination Request of United States Patent No. 7,943,216 (the “’216 Patent”). As a result of the PTAB’s 16 May 2016 Appeal Decision*, all of the claims in the ‘216 Patent remain rejected pending further appeals.

The Firm requested this Ex Parte Reexamination after extended global patent litigation proceedings in Germany, Italy, and the United States. While the customer prevailed in Germany and Italy, the United States jury found the ‘216 Patent claims valid, and further found that the customer’s product infringed those claims. The court then enjoined the customer from participating in the U.S. market with the product. Earlier this year, the court removed the injunction allowing the customer’s product into the U.S. market.

In response to the jury verdict, Sisson & Banyas, Attorneys at Law, LLC filed two Ex Parte Reexamination requests establishing several substantial new questions of patentability based on prior art patent documents which had not been considered during the original prosecution of the ‘216 Patent. The Ex Parte Reexamination requests were accompanied by declaratory evidence containing detailed experiments calling into question the validity of an unexpected “synergy” which formed the basis for patentability in the original prosecution. According to the PTAB, the experiments were “compelling evidence” in establishing a “preponderance of evidence”, that the Examiner was correct to disregard the data supporting the unexpected “synergy”.

The PTAB’s Appeal Decision represents a significant step towards establishing that the ‘216 Patent was in fact invalid, and that the infringement decision should not stand.

Principal Attorney Ed Sisson commented on the PTAB’s decision:

As the Requestor, we are happy with this decision. This decision reinforces the view that certain patent validity challenges are better handled through the expertise of the United States Patent and Trademark Office than left in the hands of a jury.

*PTAB Appeal No.: 2016-001727