Barkume Wins Patent Reexam For NeoMedia

Barkume and Associates has successfully defended the ex parte reexamination of U.S. Patent No. 6,199,048, System and Method for Automatic Access of a Remote Computer Over a Network. All pending claims of the patent under reexamination have been indicated to be patentable by the U.S. Patent and Trademark Office (PTO) in its decision issued earlier this week.

Reexamination is a process in which any member of the public may request the PTO to reconsider if a patent should have been granted, in view of new information that was not considered when the PTO first examined the patent. In an ex parte reexamination the requesting party submits this "newly-discovered prior art" to the PTO, which decides if it justifies reexamining the patent. In this case the PTO decided to reexamine the '048 patent, but ultimately agreed with us that that the patent was not invalid.

In 2001, the PTO granted the '048 patent to Neomedia Technologies, Inc. The '048 patent covers the use of machine readable indicia to access a database in which a pointer to an information resource (such as a URL) is extracted and used to establish communication with the resource. For example, a bar code such as a UPC code may be imaged and decoded by a client device, and the bar code data is then transmitted over the Internet to a web server that looks up a URL associated with that UPC bar code data. The extracted URL is then returned to the client device, which then uses that URL to communicate with the associated web site via its browser. Several other embodiments are disclosed and claimed in the '048 patent such as the use of audible signals and RF identification.

In 2007, the Electronic Frontier Foundation (EFF) filed a request for the PTO to reexamine the '048 patent based on numerous prior art references it submitted that allegedly rendered the '048 patent claims invalid. The reexamination request was filed as part of EFF's "Patent Busting" project, a sensationalist effort to invalidate patents it deems to be "bogus" and a "crime against the public domain". The PTO granted the request, which is not unusual given its mandate to ensure that patents it issues are in fact valid. In July 2008, the PTO issued an Office action in which the '048 claims were rejected based on the prior art submitted.

Our office went to work immediately by reviewing the PTO's rejections and the newly-submitted prior art. We summarily concluded that the prior art simply did not bear on the inventions in the '048 patent. We then proceeded to conduct an in person interview with a three-Examiner panel at the PTO in August 2008. At the conference, we explained the inventions of the '048 patent and how the newly discovered prior art had no relevance. We then submitted a written amendment to clarify the language of the claims and consolidate them. Ultimately, the PTO agreed with our position regarding the patentability of the '048 inventions.

On February 17, 2009, the PTO publicly announced its complete agreement with our position regarding the inventions in the '048 patent by issuing a "Notice of Intent to Issue Ex-Parte Reexamination Certificate". This terminates the reexamination completely in favor of Neomedia, since it provides that all pending claims are patentable and will publish shortly in a Reexamination Certificate. This decision cannot be appealed by EFF or any other third party.

As a result, we have successfully defended the challenge brought by EFF against the'048 patent as part of its "Patent Busting" project. The '048 patent has withstood the intense scrutiny of the reexamination process, in which the Examiners reviewed not only the numerous prior art references submitted by EFF, but also those that it may have uncovered in its own follow-up searches. The claims of the '048 patent as clarified once again will enjoy the presumption of validity and have been strengthened as a result of the process.