The USPTO ‘774 patent re-exam analysis document is available at their website so I uploaded it to box.net in the “Miscellaneous Documents” folder. This is simply the written analysis of the USPTO examiner who reviewed the re-exam request. Remember, Patterson & Sheridan, LLP (representing a defendant in our CO 19 case) submitted the re-exam request citing 11 Substantial New Questions of Patentability (SNQP) regarding claims 1-5, and 18-19 of our ‘774 patent.

At the heart of their SNQP’s is that the USPTO did not consider some prior art/publications when deciding the patentability of our ‘774 patent claims. The prior art Patterson & Sheridan cited was:

* Kimura et al., “Development of an IC-Card Sound Recorder” found in a Sharp technical journal, Vol 55, March 1993

* EP Pat. Application Publication No. 0536792 A2 to Sharp Kabushiki Kaisha, published 04/14/1993 (EP stands for European Publication)

* UK Pat. Application Publication No. GB 2253078A to Radamec, published 08/26/1992 (UK stands for United Kingdom)

* U.S. Pat No. 5,442,768 to Sudoh et al., filed 11/05/1992

* U.S. Pat No. 5, 267, 218 to Elbert, issued 11/30/1993 (This patent was considered by the USPTO during our patent application and ultimately decided it was moot.)

The examiner agreed that a reasonable examiner would consider this prior art/ publications important in deciding whether our ‘774 claims are patentable. From my research, the language written by the examiner is routine and this seems a garden variety re-exam analysis. Remember, Patterson & Sheridan simply needs to convince the USPTO that there is enough new evidence to get them to grant the re-exam. They did and the re-exam was granted. In fact, 62% of 3rd party re-exams are granted so this is no surprise at all. The analysis does not mean the USPTO agrees that our claims are invalid or need to be changed, that’s what the re-exam will determine.

Not being a lawyer, I don’t know how much weight is given to publications, European patents or British patents as prior art when deciding U.S. patent re-exams.

Even though the above prior art/publications were not considered by the USPTO during the initial patent application, I am certain that DM did their own re-exam using a lot of smart patent lawyers and decided our claims would hold up. DM has 2 months from 1/11/11 to submit a reply but this is optional. If they do submit a reply, Patterson & Sheridan has 2 months to submit a reply. If DM chooses not to submit a reply, then no further communication from Patterson & Sheridan to the USPTO regarding the re-exam is permitted. It’ll be interesting to see which reply decision DM makes.