[Infowarrior] - Niro JPEG Patent Smacked Down Again

[Richard Forno]

Infamous Niro JPEG Patent Smacked Down Again
http://techdirt.com/articles/20090628/1533475384.shtml

Lawyer Raymond Niro, for whom the term "patent troll" was apparently  
first coined, has been known to use the fact that he represents a  
company called Global Patent Holdings (GPH) to his advantage. GPH owns  
patent 5,253,341, but looking at it there won't do much good. You see,  
Niro and others claimed that the patent covered pretty much anyone  
running a web server, leading to quite a few legal battles, including  
one against a guy, Greg Aharonian, who called it a "bad patent." For  
claiming that, he got sued for patent infringement. In fighting the  
patent, it was re-examined, and all 16 of its claims were rejected...  
but a 17th claim was added and allowed to stand.

Since then the patent has been asserted against a wide range of  
organizations, including some resort in Florida and the Green Bay  
Packers. Niro appears to claim that any site using a JPEG image  
violates the patent. Not only that, but in cases where the patent has  
been asserted, Niro has been known to go for something of a sympathy  
play, by noting that the inventors (or the widow of one inventor)  
named on the patent are "old and feeble" (yes, they called them  
feeble) and made almost no money in 2006 (even though the filing was  
in 2008 -- some noted that their 2007 income was conveniently left out).

With so many cases involving this patent underway, the USPTO agreed to  
re-examine the one claim (claim 17). And, with that re-exam going on,  
a judge on one of the cases put the case on hold until the re-exam is  
done. While GPH protested, claiming that the patent had already been  
re-examined (and that the re-exam process took too long), the judge  
pointed out that there's only one claim left (so it should be faster)  
and that this particular claim had never been re-examined, since it  
was added during the last re-exam.

Last summer, the USPTO gave an initial (non-final) rejection of the  
patent, in rather strong language. Not surprisingly, GPH/Niro have  
pushed back, but in early June the USPTO appears to have smacked down  
the patent all over again in this rather lengthy ruling, which you can  
see below:

90008972 The smackdown here is rather complete. On top of reaffirming  
the 19 reasons for rejecting the remaining claim, the examiner added  
more reasons to reject it for being obvious and anticipated by other  
inventions. Also, it appears that GPH/Niro tried to do something  
similar to last time, in that they also submitted some new claims to  
be added (claims 18 - 21), but the examiner smacked those down as  
well, as attempts to "broaden the scope" of the patent. On top of  
that, the rejects scolds GPH/Niro for mischaracterizing what the  
patent office has said and even using a "biased" expert witness with  
"flip-flopping declarations."

This is, still, a non-final rejections, but it doesn't look like GPH/ 
Niro has been able to make up any ground at all on this particular  
fight, and, in fact, seems to be getting pushed further and further  
back with each try. This particular patent expires in March of 2011  
anyway, so unless Niro is able to pull a proverbial rabbit out of the  
hat to convince the USPTO that this patent is vaild, it's not looking  
very good.