Here is more information on the story behind the Compton's rejection. Once again thanks to Mark Voorhees and his excellent newsletter. Greg Aharonian Internet Patent News Service *********************************************************** Information Law Alert* ||||||||| || |||| * a voorhees report * || || || ||* * || || || || * 718-369-0906 * || || ||||||||| * voice * || || || || * 718-369-3250 * || || || || * fax * ||||||||| |||||||| || || voorhees@interport.net *********************************************************** 411 First St., Brooklyn, NY 11215-2507 November 11, 1994 Cuts Both Ways COMPTON'S REJECTION GIVES PATENT OWNERS A LOT TO DIGEST BUT ALSO A SOLID TARGET James Weissman, a patent lawyer of Gray, Cary, Ware & Freidenrich, was asked to put himself in the shoes of the lawyers who must respond to the dense, 98-page rejection of the Compton's NewMedia patent. "I'd be dismayed," he says. "I'm facing a fairly monumental task, and I've got two months to do it." But then Weissman brightens slightly. The thoroughness of the tome, written by examiner Archie Williams, may ultimately be a blessing. "The more you (the examiner) is willing to expose your logic, the more you give the owner something to shoot at." That is, assuming the patent owners, Tribune Co. and Encylopaedia Britannica, want to carry on with this adventure any longer. By all accounts, Williams's final rejection of the patent is the ultimate "Dear John" letter: Just get out of my face, and stay out. The patent issued in the summer of 1993 and created such a ruckus in the multimedia and software industry that Patent Commissioner Bruce Lehman ordered a reexam late last year. Developers worried that they would have to pay royalties to Britannica and Tribune. The patent, which covers basic search and retrieval methods in a multimedia environment, has undergone a thorough reexamination by the patent office. Williams's rejection, released in late October, is likely to be the last step in the reexam. He issued a preliminary rejection in March. The patent owners must decide whether to appeal the rejection to the Board of Patent Appeals and Interferences. Robert Carr, a spokesman for Tribune Co., says a decision is expected shortly. OUT OF THE ORDINARY Williams's rejection included "an unprecedented level of detail and multiple references," says Weissman. "The level of effort is certainly out of the ordinary." The rejection also is noteworthy in another respect. Williams is playing hardball. His rejection relies on citations to seven patents, conference proceedings, and popular and technical publications that the owners never had the chance to respond to. Normally, when an examiner cites prior art for the first time, he or she will give the owners a chance to rebut the citation. In this instance, Williams wrote bluntly, "New issues were raised by Patent Owners' Response, which necessitated a new search and grounds of rejection. . . . Accordingly, this action is made final." In other words, when the patent owners responded to the first rejection, they raised new issues that required new searches, and so the owners are out of luck. "They put every nail in hell in the coffin, and when they didn't stick, they came up with a new set of nails," said one lawyer. Several lawyers confirmed that it's unusual but within Williams's discretion to do what he did. In the long run, however, they suggest that Williams's work may benefit the patent owners, if they decide to appeal his rejection. It will be much easier to poke holes in something of substance than in something porous, as is often the case with office actions emanating from the patent office. Carr, the Tribune spokesman, is close-lipped about whether his company and Britannica will go forward with an appeal. The parties have always been on the same wavelength in the past. ****************************************************** * PLEASE KEEP THIS BOX ATTACHED TO NEWSLETTER * ****************************************************** Information Law Alert (ISSN-1068-8129) is published 20 times a year by Voorhees Reports, 411 First Street, Brooklyn, NY 11215-2507. Subscription rates: E-mail subscriptions are available for $195 a year. $550 a year for print newsletter. For information, call 718-369-0906 or 800-369-4840, or fax 718-369-3250. E-mail address: voorhees@interport.net. On line: Information Law Alert is available electronically to subscribers of NewsNet (800-952-0122); Dialog (800-334-2564); and Dow Jones News Retrieval (800-522-3567). E-mail subscriptions are also available through Counsel Connect (800-952-0122) under the Resources section. Back issues and bundles of stories are available at Marketplace.Com. Gopher to Marketplace.Com or use the URL http://marketplace.com. Copyright 1994 Mark Voorhees. Unauthorized duplication prohibited by law. *********************************************************