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Microsoft Petition Tests Newest Provisions of U.S. Patent Law
If the U.S. Patent and Trademark Office was looking for a high-profile test case for the latest provisions of the America Invents Act, it couldnt have asked for a much bigger fish than the Microsoft Corporation. The Redmond, Washington-based tech giant has asked the USPTO to invalidate a patent that Proxyconn Inc., a back-end Internet technology company, has accused Microsoft, Hewlett-Packard Company, Acer America Corporation, and Dell Inc. of infringing.
On Tuesday, Microsoft filed an inter partes review petition [PDF]under a new provision of the AIA that took effect Sunday that allows third parties to use prior art consisting of patents or printed publications to challenge the validity of patent claims they are accused of infringing.
Proxyconn, based in Santa Ana, California, sued Microsoft, HP, Acer, and Dell in the Central District of California last year, alleging they infringed on its patent for a technology that makes networks run faster. Proxyconn claims its technology and method are used by hundreds of ISPs and hundreds of thousands of users worldwide. The cases were consolidated in January [PDF] and are being heard before Judge David Carter.
As part of its petition for an inter partes review, Microsoft, represented by John Vandenberg of Klarquist Sparkman, submitted a declaration from Darrell Long, a professor at the John Baxter School of Engineering at the University of California at Santa Cruz. Long said in his declaration that nine of the claims in Proxyconns patent should be invalidated because they contain nothing innovative when compared to prior art.
Under the new patent reform rules, the USPTOs newly formed Patent Trial and Appeal Board agrees to institute an inter partes review if it is convinced there is a reasonable likelihood that the petitioner would prevail with respect to at least one claim challenged. The challenges may only address issues of novelty and obviousness. A mini-trial is then held before the board, which must issue its final determination within one year. The district court litigation can be stayed pending the outcome of the USPTO review.
Klarquist Sparkmans Vandenberg would not comment on the filing. Proxyconns attorneys, represented by Russ, August & Kabat, also did not respond to requests for comment.