Acacia '702 patent may be unenforceable
 

DOES THE ACACIA '702 PATENT HAVE FILE HISTORY PROBLEMS?

A PATNEWS reader sent me the following bit of gossip about the Acacia '702 patent. You will have to get a copy of the filewrapper to analyze this for yourself. ----

Greg,

If you want an excellent example of poor patent quality, the Acacia '702 patent (6,144,702) stands very tall. In the course of the file history, the examiner issued an office action rejecting all of the claims based on a DeBey patent (5,701,582). In the corresponding reply, the applicant swore behind DeBey '582 because the reference was a CIP, which was not entitled to the earlier priority date of its parent application because of the new matter. The examiner subsequently allowed the claims.

What the examiner did not do was look to the DeBey parent application (5,421,031) which of course contains the verbatim disclosure relied upon by the examiner in the earlier rejection of the claims under DeBey '582. So when the applicant argued that under 102(e) the examiner couldn't use the earliest priority date of the DeBey '582 CIP application to reject the claims, the examiner didn't go back to the parent case to see if the rejection could be maintained based on DeBey '031. Instead, the examiner allowed the claims. And if you look on the face of the '702 patent, only the later DeBey '582 patent is a cited reference. DeBey '031 is not even cited.

As a side note, the Acacia '702 patent is very likely unenforceable because the DeBey '031 patent was not submitted to the PTO in an IDS, since the applicant must have known about the parent case in order to make the argument that the DeBey '582 CIP was not entitled to the earlier priority date.

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Does anyone know how important 6,144,702 is to the Acacia claims against webmasters?

they dont care man and by the way.. next time offer an xbox.. you may get their attention.

Acacia should have offered an X-Box to the 1000th person to sign their licensing agreement.

Webmasters would be lining up to sign.

:1orglaugh

:1orglaugh :1orglaugh :1orglaugh

Bwahahha I think I just peed myself laughing.

I don't see how this helps us. The '702' patent is one of their "continuation" thingies that was filed in 1998. Even if '702' was tossed out, it still leaves their original patent intact, yes?
:eek7

:1orglaugh

LOL! You'll see licensee's signing multiple times too :)
WG

I believe you're correct on that since 6,144,702 is a division of 6,002,720. If '702 was found to be invalid, it would affect only itself. However, if the original, parent patent, No. 5,132,992, filed Jan. 7, 1991, was found faulty, then the other four dependent patents would fall with it as well.