U.S. Patent & Trademark Office Confirms Validity of Visto Corporation Patents

August 27, 2008 – Firm News

August 27, 2008

The U.S. Patent and Trademark Office has concluded the reexaminations of U.S. Patents 7,039,679 and 6,151,606 on August 21, 2008, communicating Notices to Issue a Reexamination Certificate (NIRC) to Visto Corporation of Redwood City, Calif. Notably, the ‘679 and ‘606 patents are asserted against Research in Motion (RIM) in an ongoing infringement action before the Eastern District of Texas.

Validity of the ‘679 patent was confirmed without amendment of the originally issued claims, with five new claims also being confirmed. In addition, the reexamination of the '606 patent resulted in the confirmation of over forty claims.

“The PTO has terminated these exhaustive reexaminations, reaffirming the patentability of Visto’s inventions. Such a validity confirmation, in view of significant amounts of prior art and intensive USPTO oversight, speaks volumes to the strength of Visto’s pioneering portfolio,” said Scott A. McKeown,reexamination counsel for Visto, and a partner with Oblon, Spivak, McClelland, Maier & Neustadt, P.C.

Last month, a Federal Court in Texas stayed the ongoing litigation between Visto and RIM. In exchange for the stay, however, RIM stipulated that they will not seek further reexamination of these patents at the USPTO; nor can it revisit patent validity at trial based on the art considered in these reexaminations.

Assisting clients for 40 years, Oblon, Spivak, McClelland, Maier & Neustadt, P.C., in Alexandria, Va., is one of the largest intellectual property specialty firms in the United States. The firm’s Post Grant Patent Proceedings Practice Group is a recognized leader in the area of ex parte and inter parte reexaminations. The firm provides a full range of intellectual property services, including litigation matters in all courts. The firm also continues to have a significant trademark, copyright and patent interference practice.