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Director Orders Reopening Of Certain Patent Examinations

|Includes: AAPL, CSCO, VirnetX Holding Corporation (VHC)

Background

VirnetX's '211 and '504 patents were fully and finally rejected by the Patent Office Examiner. However, VirnetX petitioned the Office to reopen the reexaminations of these patents.

The examiner initially entered a non-final rejection of certain claims of these patents several months ago. VirnetX addressed these rejections. But the examiner then changed his rationale for rejecting the claims while simultaneously closing the prosecution and entering a final rejection. VirnetX cried foul on this practice; they were not given an opportunity to respond to his moving target of rejection rationales. VirnetX then appealed to the Director. The Director agreed with VirnetX, at least in the Cisco-initiated exams, that the Examiner errored in closing the reexamination.

According to the Director:

"Accordingly, based upon the particular facts in this proceeding, the examiner's response is deemed to constitute a new rationale, to which the patent owner must be afforded an opportunity to respond. For these reasons, prosecution is hereby reopened..."

What does it mean?

In other words, the Director is ordering the Examiner to withdraw his final rejection of these 2 patents and re-respond to VirnetX's arguments. VirnetX will then be given an opportunity to respond.

In addition, when the Examiner entered the final rejection of the patents, he only "briefly reviewed" VirnetX's expert's declaration, found it unpersuasive, and refused to enter it into the record. This recent action by the Director also forces the Examiner to enter and address VirnetX's expert.

Other related thoughts

It is interesting that in light of the Directors orders, he is still ordering the Apple initiated examinations for these patents to continue on towards the appeal stage to the Board.

Separately, I also speculate whether the Director's willingness to acknowledge his Examiner's error (and eagerness?) in rejecting certain claims here indicate the inevitable reopening of the '181 patent reexam, in which I believe the Examiner repeatedly errored in unfairly rejecting claims, far worse than in the case discussed above.

drive.google.com/file/d/0Bx9AmmTGprCsWW5...?usp=sharing