USPTO Trumps Federal Circuit on DyStar and Determines Patent Claims Valid

January 13, 2009 – Firm News


January 12, 2009

Alexandria, Va. – Oblon, Spivak is pleased to announce that on December 23, 2008, the United States Patent and Trademark Office (USPTO) issued a reexamination certificate for United States Patent 5,586,992. The ‘992 patent relates to a method of indigo dyeing previously held invalid by the Federal Circuit (DyStar Textilfarben GmbH & Co. Deutschland KG v. C. H. Patrick Co., 464 F.3d 1356, 1360, 80 USPQ2d 1641, 1645 (Fed. Cir. 2006)). The Federal Circuit’s DyStar decision is noteworthy as a timely precursor, clarifying the court’s obviousness jurisprudence while KSR v. Teleflex remained pending before the Supreme Court.

In the corresponding reexamination, the USPTO considered the Federal Circuit’s claim interpretation and analyzed the same prior art before the Federal Circuit. Nevertheless, the USPTO arrived at a different conclusion, disagreeing with key factual issues analyzed by the Federal Circuit in relation to obviousness. Specifically, the USPTO arrived at a factual determination as to the meaning of “used at once for dyeing” that was different from the interpretation previously provided by the Court. In so doing, the USPTO confirmed the patentability of three claims, allowed three amended claims, and fifteen new claims.

“We are pleased that the examiner acknowledged the patentability of the invention,” said Vincent Shier, partner and leader of Oblon, Spivak’s Chemical Post Grant Patent Practice. “The ‘992 patent revolutionized indigo dyeing with a greener, more cost-efficient dyeing method. This decision by the USPTO ensures that DyStar retains its rightful patent monopoly over its innovative dyeing process.”

According to Dick Kelly, managing partner, “This result demonstrates the cutting edge capability of Oblon, Spivak’s Post Grant Patent Practice Group.” Oblon, Spivak’s Post Grant Patent Practice Group is chaired by Stephen G. Kunin, former Deputy Commissioner for Patent Examination Policy at the USPTO.

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 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.