Fed. Circ. Affirms Re-Exam Win For Alien Technology
law360.com
Law360, New York (November 15, 2016, 5:51 PM EST) -- The Federal Circuit on Tuesday affirmed a U.S. Patent and Trial Appeal Board ruling that claims of an Intermec Inc. transponder patent are obvious, saying the board’s findings were backed up by sufficient evidence.
In a 10-page decision, the three-judge panel said that the PTAB rightly affirmed an examiner’s rejection of certain claims of Intermec’s patent as obvious over several prior art references.
“We conclude that the board did not err in its obviousness determination and that substantial evidence supports its factual findings underpinning its conclusions,” the Federal Circuit said, referring to the first 10 claims that were found obvious in light of the combination of two prior art references referred to as Littlechild and Finkenzeller.
The Federal Circuit likewise found that the PTAB had rightly affirmed the findings of obviousness regarding the remaining claims in light of two separate prior art references.
Intermec’s U.S. Patent Number 6,812,841 was issued on Nov. 2, 2004, according to the decision. After Intermec filed an infringement action against Alien Technology Corp. in North Dakota federal court, Alien asked for and was granted an inter partes reexamination for a number of the patent’s claims. Intermec presented five newly added claims when it submitted its first response to the PTAB, the decision said.
Upon initial examination of the claims, the examiner declared all claims subject to the appeal allowable. Alien then appealed and the PTAB reversed the examiner and rejected the claims, according to the decision.
Intermec reopened prosecution to obtain a different result, but the examiner ultimately adopted the PTAB’s rejections, according to the decision.
Intermec then appealed the examiner’s rejections to the PTAB, but the board, upon rehearing, declined to modify its decision. Finally, Intermec appealed to the Federal Circuit.
Alien, based in Morgan Hill, California, lodged a declaratory judgment suit against Intermec in June 2006, asserting that it did not infringe 10 of Intermec’s radio frequency identification patents and claiming the patents should be invalidated.
That suit triggered Intermec to file its own suit weeks later in Delaware federal court, alleging infringement of the 10 patents. Intermec's suit was later transferred to the North Dakota court and then voluntarily dismissed by Intermec in February 2007.
Alien won a major victory in its declaratory judgment suit in September 2009 when a judge granted its motions for summary judgment of noninfringement of four of the patents. The following month, however, the judge ruled that issues of fact still remained on the ’841 patent and denied both Intermec and Alien’s motions for summary judgment. The claims relating to the ’841 patent must be decided by a jury, he said.
At the core of the litigation is a deep disagreement between Intermec and other players in the RFID industry over whether to support a royalty-free air interface standard.
The technology — intended to complement or replace bar codes — uses radio chips that can be placed in tags or labels to help manufacturers and retailers locate stock and automatically record the movement of inventory.
Alien's declaratory judgment suit is still currently pending, according to the federal court docket.
An attorney for Alien declined to comment. An attorney for Intermec did not respond to a request for comment on Tuesday.
The patent-in-suit is U.S. Patent Number 6,812,841.
U.S. Circuit Judges Sharon Prost, Timothy B. Dyk and Kara F. Stoll sat on the panel.
Intermec is represented by Neil C. Jones and Ashley Boland Summer of Nelson Mullins Riley & Scarborough LLP.
Alien is represented by Elizabeth Laughton and Ted Dane of Munger Tolles & Olson LLP.
The case is Intermec Inc. v. Alien Technology LLC, case number 15-1808, in the U.S. Court of Appeals for the Federal Circuit.
--Editing by Jack Karp. |
