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September 13, 2007


Victoria's Secret has filed a summary judgment motion to pinch 7,152,606, claiming a nipple cover. The motion accuses the USPTO of abusing its discretion in reviving the application that led to the patent after it was left abandoned for five years. It's shocking to even consider that the patent office would spark any controversy, particularly face an accusation of flaunting its authority. The only thing Miss Victoria wants the patent pushing up is daisies (but not those pictured).

The claimed '606 invention by Ms. Randi Black covers a nipple so that it is not visible through sheer clothing, and can be employed where a bra is unflattering.

The accused product line is Victoria's Secret's NuBra. Defendants include Victoria's Secret, Nordstrom, the Gap, Neiman Marcus, Dillard's, Federated Department Stores, Ce Soir Lingerie, and Bragel.

The lawsuit was filed one day after the patent issued.

From the summary judgment motion -

The '606 Patent issued from U.S. Patent Application Serial No. 09/152,992 ("the '992 Application"), which was filed on September 14, 1998. On March 16, 1999, the U.S. Patent and Trademark Office ("PTO") issued an Office action rejecting the '992 Application. Black failed to file a timely response to the Office action, and, as a result, the '992 Application went abandoned. On November 9, 1999, the PTO provided notification of the abandonment.

Over five years later, on March 28, 2005, Black filed a petition to revive the '992 Application on the basis that the entire delay in responding to the Office action of March 16, 1999, was unintentional. The PTO granted Black's petition on March 20, 2006, and the '606 Patent issued from the '992 Application on December 26, 2006.

The revival of the '992 Application was unlawful because the only basis for reviving an application that had been abandoned on the basis that the application was not timely prosecuted is a showing that the delay was "unavoidable," a showing that Plaintiff did not make. In view thereof, revival of the '992 Application by the United States Patent and Trademark Office constituted an abuse of discretion. Consequently, the '606 Patent is invalid and summary judgment that Defendants have not infringed the '606 Patent is in order because, as a matter of law, an invalid patent cannot be infringed.

Ms. Black (her surname changed from Schindler in the original filing) was left in the lurch when, according to Black, the firm she had hired to prosecute the patent neglected reply to office action. According to the motion, "Black transferred the '992 Application to several different firms and/or attorneys," finally getting an attorney to file a revival petition in March 2005.

Both declarations included the following statement: "The entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to 37 CFR § 1.137(b) was unintentional." Black did not attempt to show that the delay was unavoidable.

35 U.S.C. § 133 states that an application is regarded as abandoned unless "delay was unavoidable." The motion argues that threshold went unmet, hence the patent office exceeded its authority in giving applicant Black a break.

Black made no attempt to meet the statutory standard that the entire period of her delay in prosecuting the '922 Application was "unavoidable." Instead, she merely filed a petition to revive alleging that the "entire delay" was "unintentional."

Because Black's petition merely addressed an "unintentional" standard rather than the higher "unavoidable" standard required under 35 U.S.C. § 133, the PTO abused its discretion in reviving the '992 Application. As such, the Court should find that the PTO's revival of the '992 Application was unlawful and that the resulting '606 Patent is invalid.

The Patent Office has no authority to ignore or dilute the explicit "unavoidable" standard. See Lorenz v. Finkl, 333 F.2d 885, 891 (CCPA 1964) ("Section 133 permits revival of an abandoned application when 'it be shown to the satisfaction of the Commissioner' that delay in prosecuting was unavoidable and no such showing was made."); In re Recreative Techs. Corp., 83 F.3d 1394, 1398 (Fed. Cir. 1996) ("Although Congress may entrust the administrative agency with administration of a statute, the agency cannot depart from the statutory purpose"); Merck & Co., Inc. v. Kessler, 80 F.3d 1543, 1549-1550 (Fed. Cir. 1996), cert. denied 519 U.S. 1101 (1997) ("Because Congress has not vested the [Patent Office] Commissioner with any general substantive rulemaking power," there is no controlling deference afforded to the Patent Office's interpretation of substantive provisions of the Patent Act). Cf. Board of Governors of Federal Reserve System, 474 U.S. at 368 (holding regulation invalid because it conflicts with statute).

The foregoing issues were recently discussed in detail in Aristocrat Technologies v. Int'l Game Tech., 491 F. Supp. 2d 916 (N.D. Cal. 2007)[;...] determining that § 133 requires application of the "unavoidable" standard exclusively.

Posted by Patent Hawk at September 13, 2007 6:22 PM | Litigation


Thank you for bringing this case to my attention.

I find this very interesting because it relates to over-reaching by the PTO in its rule making. I can't recall complaints about PTO rules over-reaching its statutory authority prior to this year. But, that is all changed. These cases could become precedent to striking down the new continuation rules. Of course, that would mean judicially invalidating thousands of patent applications that were unintentionally abandoned. The specter of the continuation rules might make that price worth paying, in the minds of the Federal Circuit -- it will at least be in the back of their minds.

Posted by: lenehey at September 15, 2007 6:38 PM