Sunday, March 27, 2011

Tangled Procedural Webs of the ITC and the USPTO

Adding to the complexity of Kodak's ITC matter against Apple are the temporally intertwined actions of the USPTO on reexamination requests related to the '218 patent.   Two such requests were filed, the first by LG Electronics on July 31, 2009, the second by RIM on March 9, 2010.


Kodak takes issue with the ALJ's finding of invalidity of the '218 in part because it conflicts with a USPTO determination during the reexamination process:

[following a redacted portion in public version of filing]
"He found this even though three expert Examiners at the USPTO had recently confirmed that claim 15 is patentable after considering the same prior art and invalidity analysis (Apple's expert Dr. Bovik's Expert Report) in two reexaminations (one of which was filed by counsel for RIM).  Kodak provided a copy of the USPTO's decision to the Chief ALJ on December 28, 2010, but the Final ID fails to even acknowledge the USPTO's decision, let alone provide it substantial deference as the Federal Circuit requires.
The Chief ALJ also improperly decided the invalidity issues based on combinations of prior art that were not advanced or addressed by any party in this Investigation."
(Kodak's Petition for Review)

Indeed, the consolidated reexam (USPTO control numbers 90/010,631 and 90/010,899) led to the confirmation of '218 claim 15:

Claims 15 and 23-27 are confirmed. The following is an examiner's statement of reasons for patentability and/or confirmation of the Claims found patentable in this reexamination proceeding:
The closest prior art fails to disclose or fairly suggest:
An electronic still camera having a motion processor for initiating capture of a still image while previewing the motion images presented on the color display and a second number of color pixel values being less than a first number, in combination with the remaining limitations, as called for in claim 15 (claims 23-27 depend directly or indirectly on independent claim 15).
(Ex parte reexamination communication from USPTO, 12/23/2010)

Note: Both LGE and RIM also filed reexamination requests related to another patent, US5,493,335.  The first listed inventor on the '335 patent is Kenneth A. Parulski of Kodak, who is also the first named inventor on the '218 patent at issue in the Apple case.  The Parulski '335 is one of the references cited by the ALJ in the determination that the '218, the patent at issue in the Apple case, is invalid.

Sources:
  • Final Initial and Recommended Determinations, ITC 337-703, Official Receive Date 3/08/2011
  • US ITC Filing, COMPLAINANT EASTMAN KODAK COMPANY'S PETITION FOR REVIEW OF THE FINAL INITIAL AND RECOMMENDED DETERMINATIONS, Filed February 17, 2011 by Eric C. Rusnak of K&L Gates, representing Eastman Kodak.
  • US Patent 6,292,218
  • USPTO PAIR Image File Wrappers (90/010,631, 90/010,899)

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