USPTO Finds Convolve Patent Valid in Reexamination

April 21, 2009 – Firm News

For Immediate Release

April 21, 2009

Alexandria, Va. – The U.S. Patent and Trademark Office (USPTO) has concluded the reexamination of U.S. Patent 4,916,635 (’635), communicating a favorable Notice of Intent to Issue a Reexamination Certificate (NIRC) to Convolve, Inc. of Armonk, NY. At the completion of the reexamination proceedings, five of the original ’635 patent claims were confirmed as being valid without amendment. Because the ’635 patent expired during reexamination proceedings, the claims were interpreted by the USPTO in the same manner that a district court would construe claims in a patent dispute.

The ’635 patent has been asserted against Seagate Technologies and Compaq in an ongoing infringement action in the United States District Court for the Southern District of New York. Convolve is seeking damages in excess of $800 million. Issuance of the NIRC will enable Convolve to proceed to trial based on acts of infringement that occurred prior to the expiration of the ’635 patent. The Court has informed counsel for Convolve and Seagate et al. to be ready for trial in January 2010. For more information see

“Seagate requested reexamination of the ’635 patent three times over a two year period. The reexamination proceedings were merged by the USPTO. Although Seagate is free to challenge the validity of the ’635 patent in litigation, the ’635 patent has withstood intense scrutiny from the USPTO, reinforcing its presumption of validity. Consequently, the strength of the ’635 patent has been bolstered” said Todd Baker, reexamination counsel for Convolve, and a partner with Oblon, Spivak, McClelland, Maier & Neustadt, P.C.

Oblon, Spivak, McClelland, Maier & Neustadt’s Post Grant Patent Practice Group is a recognized leader in the area of post grant proceedings, particularly ex parte and inter parte reexaminations.

Assisting clients for 40 years, Oblon, Spivak, McClelland, Maier & Neustadt, P.C. is one of the largest intellectual property specialty firms in the United States. The firm provides a full range of intellectual property services, including litigation matters in all courts, as well as trademark, copyright and patent interference services.