NeoMedia Presents Case Study On Patent Win

Case Study by Barkume and Associates

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.

NeoMedia Wins Patent Reexamination

NeoMedia Technologies, the global leader in camera-initiated barcode transactions for mobile devices, announced today that the United States Patent and Trademark Office (USPTO) has ruled in favor of NeoMedia in the reexamination of its U.S. Patent No. 6,199,048, System And Method For Automatic Access Of A Remote Computer Over A Network. All ninety-five claims of this Barcode Look up Patent have been confirmed as being patentable by the PTO.

The PTO’s re-validation of this patent provides tremendous opportunities for companies in the mobile advertising space, allowing them to unify and quickly move forward to implement new applications and services.

“This is excellent news for NeoMedia as it allows us to move forward with our vision to create strong partnerships and synergies to align all companies for the next growth phase,” said Iain McCready, chief executive officer of NeoMedia Technologies, Inc. “We are committed to building a fully involved and collaborative ecosystem of agencies, mobile operators, and vendors who recognize the potential of mobile barcode advertising.”

"We are pleased that this patent has withstood the intense scrutiny of the PTO's re-examination process, in which numerous additional prior art references were considered in detail by the PTO Examiners before confirming all ninety-five claims as being patentable", said Tony Barkume of Barkume & Associates, P.C., patent counsel for NeoMedia. "The approval indicated by the PTO in its Notice of Intent to Issue a Re-examination Certificate has confirmed the strength and validity of the '048 patent in the face of such a heightened challenge."

In keeping with its vision and commitment to developing an interoperable global ecosystem, NeoMedia is licensing its technology to foster innovation in the creation of exciting new mobile barcode applications and services for the advertising industry.

NeoMedia embraces the development of open standards for 1D and 2D barcode technologies, and provides a global infrastructure to resolve these barcodes across multiple carriers. The company’s ecosystem ensures that all parties involved in the transaction are accurately compensated by pre-defined business rules. Through NeoMedia’s complete solution, media & advertising companies, consumers, businesses, mobile operators and OEMs can harness wireless networks to perform commerce more easily and securely, and ensure monetization can occur reliably and accurately.

NeoMedia's Patent Review Moves To Next Phase

NeoMedia Technologies, the global leader in mobile barcode scanning, announced today that it will respond to the Office Action recently issued by The United States Patent and Trademark Office (USPTO) by vigorously defending a patent that has been undergoing re-examination since July 26, 2007. NeoMedia believes the patent to be valid and will provide the USPTO with the necessary documentation to substantiate that validity.

The USPTO recently issued an Office Action regarding the re-examination of NeoMedia's U.S. Patent number 6,199,048. The re-examination procedure is a standard legal process that occurs in the natural course of business -- this is not an "out of the ordinary" event. It is not unusual for the USPTO to preliminarily reject claims during the re-examination process. This initial action is non-final and will be subject to a review process. The '048 patent is presumed to be valid, intact and enforceable during the re-examination process.

While NeoMedia respects the USPTO's finding, it will leverage the due process opportunity to respond to the ruling and defend the patent that it believes valid under patent law. The company has been requested to respond to the Office Action by providing clarification and comment on the cited prior art references by September 3, 2008. Based on prior successful patent defenses, NeoMedia is optimistic that the single patent in question will be confirmed and the re-examination effort will have served to verify the strength of the patent.

"This is a standard patent process and we simply have to let it run its course. We have successfully defended this type of allegation in the past; it's the challenge NeoMedia faces for being an innovator. Our focus is on enabling interoperability and a viable ecosystem of players needed to support a vibrant and growing mobile barcode scanning business," states Iain McCready, CEO of NeoMedia. "Our willingness to share our expertise and license our IP are important factors in helping the industry gain momentum right now. We have developed flexible and creative IP licensing models that respond to the varying needs in the marketplace. The opportunity is huge...we just need to get the ecosystem running."

NeoMedia has a strong and valuable patent portfolio in the arena of connecting barcodes to content over networks that has been successfully defended in the past. This re-examination was limited to only one of NeoMedia's many patents, and none of its other patents are affected by the re-examination.

NeoMedia Confident About Patent Reexamination

NeoMedia Technologies, the global leader in camera-initiated transactions for mobile devices, today announced that the United States Patent and Trademark Office (USPTO) granted the Ex-Parte Re-examination of U.S. Patent No. 6,199,048.

NeoMedia has a large portfolio consisting of U.S. and foreign patents and pending applications relating to various inventions surrounding the processing of "machine readable codes over wireless networks." NeoMedia expects the '048 patent will be confirmed by the USPTO in course of the re-examination. According to publicly available statistics, only about 10% of patents that are re-examined have all their claims declared invalid.

NeoMedia's CEO, William J. Hoffman, states, "Regardless of the outcome of the re-examination, NeoMedia's inventions and the patent portfolio that protects them will continue to effectively serve the creation of a global and interoperable infrastructure that enables large scale adoption of mobile codes as triggers of optically initiated transactions." He added, "NeoMedia's main motivation is to use its inventions to make this wireless ecosystem a reality and create advantages for the global value chain."

Additionally, in an effort to focus its energy on building a profitable ecosystem, and not to be distracted by time-consuming and costly patent litigation, NeoMedia has agreed to stay the current patent litigation against Scanbuy pending the re-examination's outcome.

NeoMedia's CEO affirms, "NeoMedia will use the 'stay period' to develop and to deploy our turn-key solutions for reading and processing a multitude of barcode formats that are ISO certified. Our patents have been reviewed and granted by appropriate government agencies, subsequently challenged, then licensed by numerous multinational companies deeply versed in Intellectual Property Rights. At the appropriate time, NeoMedia will move forward vigorously with the litigation and protect the rights we have been granted by patent offices worldwide."