Federal Circuit Affirms Invalidation of AT&T Patent

The US Court of Appeals for the Federal Circuit has affirmed the invalidation of a number of claims in a patent owned by telecommunications conglomerate AT&T.

The court found that the patent, US number 7,454,071, was invalid as anticipated in a decision handed down yesterday, May 10.

In September 2012, two days before the inter partes review (IPR) procedures went into effect, LG Electronics filed a request for inter partes re-examination of the ‘071 patent.

LG alleged that several claims of the patent were anticipated by an article it asserted as prior art.

However, in November 2012, before the US Patent and Trademark Office (USPTO) decided whether to institute re-examination, LG sought to have its own request for re-examination denied.

LG didn’t withdraw from the proceedings or withdraw its request for re-examination.

Instead, the Korean electronics company filed a petition asking the USPTO to suspend its standard rule prohibiting a requester (LG) from filing any documents between the time of requesting inter partes re-examination and the USPTO’s initial office action on the merits.

The USPTO then granted LG’s initial request for the re-examination and denied its petition to suspend the rules.

AT&T filed a response seeking reconsideration of the action, and LG supported the response.

In March 2013, the examiner responded to the re-examination submissions, finding that AT&T’s and LG’s arguments were sufficient to overcome LG’s suggested prior art, but found new grounds of rejected based on different prior art.

LG then withdrew from the proceedings, while discussions between AT&T and the examiner were ongoing.

Following discussions and a number of interviews, AT&T appealed but the Patent Trial and Appeal Board affirmed the examiner’s finding of anticipation.
AT&T appealed, arguing that the board had improperly instituted the examination proceedings and erred in finding that the claims were invalid as anticipated.

The USPTO intervened, arguing that the court lacked jurisdiction o look at AT&T’s challenge to the institution decision.

“Because a request and a requester were present, the board acted within its statutory authority when it decided to institute re-examination in this case, and we lack authority to further consider the prudence or propriety of the board’s institution decision,” said Circuit Judge Jimmie Reyna, on behalf of the court.

The court disagreed with AT&T—finding that the board hadn’t exceeded its statutory authority when instituting the re-examination and that substantial evidence supported the PTAB’s finding of anticipation.