Reexamination Control No. 90/005,742
Patent 5,253,341
1 First Action, with dependent claims 9-11 and 14 being (a) rewritten in independent form to
2 include all of the limitations of canceled claim 7 and (b) also being amended by changing
3 “compressed or non-compressed” to “compressed.” Response to February 23, 2001, Office
4 Action in Reexamination, at 1-4 and 44. The remaining claims rejected for obviousness (i.e.,
5 claims 93-104) were added in appellant's supplemental response to the first Office action.
6 “Supplemental Response to February 23, 2001 Office Action and May 22, 2[0]01 Interview in
7 Reexamination” at 4-8. Even assuming, as Brown asserts, that fifty-four of the licensing
8 agreements apply to all of patent claims 1-16, including the dependent claims, we are not
9 prepared to assume that those licenses are specifically based on features recited in dependent
10 claims 9-11 and 14. This deficiency also applies to the licenses obtained subsequent to
11 commencement of this reexamination proceeding, because the declaration neither asserts that the
12 licensing agreements are directed to the new and amended claims nor specifically identifies the
13 claims which are covered by those agreements.
14 Moreover, appellant has failed to provide sufficient facts to establish that the "licenses
15 arose out of recognition and acceptance of the patent," GPAC, 57 F.3d at 1580, 35 USPQ2d at
16 1122, rather than simply from a desire to avoid the expense of infringement litigation. Iron Grip
17 Barbell, 392 F.3d at 1324, 73 USPQ2d at 1230; EWP, 755 F.2d at 908, 225 USPQ at 26.
18 Finally, even assuming for the sake of argument that the Brown declaration establishes
19 some degree of commercial success of the claimed subject matter, that success is clearly
20 outweighed by the strong prima facie case for obviousness, discussed below. SIBIA
21 Neurosciences, 225 F.3d at 1358, 55 USPQ2d at 1933.
- 27 -
Page: Previous 20 21 22 23 24 25 26 27 28 29 30 31 32 33 34 Next
Last modified: November 3, 2007