This has been dragging on for a couple of years, and I’m glad to see the USPTO has come to its senses somewhat. I’m no lawyer, but I would think having your patent overturned due to â€œobviousnessâ€ would sort of put a damper on all those IP lawsuits you’ve been filing:
Following a reexamination, the U.S. Patent and Trademark Office has issued an initial rejection of claims in a patent it had earlier granted to technology developer Pangea Intellectual Property on payment processing technology used at e-commerce sites. It is one of two patents held by PanIP whose validity is being challenged by a group of 15 e-retailers PanIP had in a separate action sued, claiming it was due licensing fees. PanIP has since settled with those retailers. A second patent on which the retailer group, the PanIP Group Defense Fund, also is challenging PanIP still is under review by the Patent Office.
PanIP has two months to respond to the Patent Officeâ€™s Action document, says Jonathan Hangartner of Sheppard Mullin Richter & Hampton LLP, the retailer groupâ€™s attorney, who terms the preliminary findings â€œa critical first step.â€ However, overcoming the initial findings will be â€œvery difficult for PanIP. The Office Action is very well reasoned and strong,â€ he says.
Hangartner notes that nine of the 10 individual claims in the patent were rejected on the basis of â€œanticipationâ€ in â€œprior art.â€ That essentially means that the Patent Office examiner determined that every element that the patent holder claimed to originate actually predated the patent and could be found in a single reference, such as an article, according to Hangartner. The remaining claim in the patent was rejected on the basis of â€œobviousness,â€ meaning that most elements of the claim existed in prior art and that the remaining elements would have been obvious to someone skilled in the art.
â€œThe Patent Office has rejected the 10 claims that we challenged. That means that if that rejection holds throughout the process, the result will be the patent itself is invalid,â€ Hangartner says. The attorney representing PanIP, Kathleen Walker, said that while the action is ongoing, PanIP would have no comment. â€œWe have 60 days to respond and weâ€™ll make the appropriate responses,â€ she said.
The group of e-retailers formed a defense fund at http://www.youmaybenext.com .
Update 2005-08-19: YouMayBeNect.com has not been active for a while, apparently, and the retail group has disbanded after their victory. No peep from PanIP yet.