Board of Patent Appeals & Interferences Reverses All Rejections of QPSX Patent Reexamination

October 22, 2010 – Firm News

On October 20, 2010, the Board of Patent Appeals and Interferences handed a win to QPSX Developments 5 Pty Ltd, reversing all pending rejections in the reexamination of U.S. Patent No. 5,689,499. Reexam Control No. 90/008,233, Appeal No. 2010-003021. The Board found that the Examiner had failed to make a prima facie showing of anticipation for all four references it issue. The Board emphasized that while claims receive their broadest reasonable construction during examination, the construction must still be reasonable in view of the patent specification. It also gave particular weight to declarations evidence submitted by QPSX’s expert, Dr. Edward Knightly.

The ‘499 Patent has been subject to two litigations. In the first case, 2:05-cv-268-TJW in the Eastern District of Texas, QPSX asserted the ‘499 Patent against several companies including Juniper Networks, Inc., Nortel Networks, Inc., Lucent Technologies, Inc., Cisco Systems, Inc., and Alcatel USA, Inc. All parties except Nortel settled before trial. In April 2007, a jury found that Nortel willfully infringed the ‘499 Patent and Nortel had not proven invalidity. The parties settled prior to entry of final judgment. A second action, 2:07-cv-118-TJW, is still pending and has been stayed pending the results of the reexamination proceedings. All parties in the second action except Ericsson have settled.

Scott McKeown is reexamination counsel to QPSX and argued the appeal on July 14, 2010.