Kiosk Patent Revisited
(Opportunity to protest patent)
A kiosk patent filed in January 1995 is being re-evaluated in light of prior art to the time of its supposed "invention." At this crucial time, while it is before the original Examiner in an attempt to seek a "re-issuance," anyone with knowledge which would prove its lack of originality should speak now, or face possible litigation later.
The Existing Patent
U.S. Patent # 5,602,905, owned by Richard P. Mettke, describes as the alleged "invention" a "pay-as-you-use communication terminal (kiosk) capable of interfacing with commercial on-line communication services with a video display, keyboard, and a credit card swipe system, together with appropriate computers and software."
Within the past year, Richard Mettke filed suit to enforce this patent against Hewlett-Packard, North Communications, and TouchNet.
In the TouchNet litigation, it became clear that TouchNet had deployed "pay-as-you-use communication terminals capable of interfacing with commercial on-line communication services" well before Mettke’s patent filing. Mettke dismissed his case against TouchNet.,
Shortly after dismissing his case against TouchNet, Mettke filed a "Re-issue Application" with the Patent Office which would broaden his claims from "interfacing with commercial on-line services" (i.e. CompuServe, AOL, Prodigy, etc.) to include interface with the Internet.
If Mettke is successful, any kiosk which utilizes the Internet, either as a means of transport or as an end destination via the Web, could be subject to a lawsuit -- or a royalty payment to Richard Mettke.
Time to Act
Anyone can file a Protest to the Re-issuance, but time is of the essence.
The more that a Protest can rely on pre-existing art in 1994 or earlier, the stronger the case against the re-issuance. The pre-existing art can either be exactly what Mettke is claiming (i.e., prior art) or something that clearly renders Mettke’s claims obvious (and not patentable).
Subjective vs. Objective
The above is partly subjective and, as a defendant in a lawsuit filed by Mettke, North Communications has a vested interest in the outcome of this matter. However, the information below, How to File a Protest to the Patent Office, is objective.
We leave it to you to act as you see fit. But remember, time is of the essence.
Protests to the Patent Office
Protests to the Patent Office are easy to generate and must be reviewed by the Examiner. Any member of the public, including corporate entities, may file a Protest. A Protest may even be filed by an attorney or other representative on behalf of an unnamed principal. The below is a basic roadmap to the Protest:
• PROTEST BODY:
1. List the pre-existing patents, publications, or other information relied upon for the Protest.
a. Any information which would make the grant of a patent improper can be relied on in a Protest. While ‘prior art’ documents, such as patents and publications dated prior to the invention by the applicant are most often used, Protests may be based on any facts or information adverse to the patentability.
b. The following are examples of the kinds of information, in addition to prior art documents, which can be relied upon in a Protest:
• Information demonstrating that the subject matter of the Protest was either (I) publicly known or used by others before the invention by the applicant; or (ii) in public use or on sale more than 1 year prior to the date of the patent application.
• Litigation-related materials such as complaints, depositions, court orders, stipulations, etc. -- these can be submitted either in their entirety or reduced to the relevant portions.
• Information indicating fraud on the Patent Office
2. Provide a concise explanation of the relevance of each listed item.
3. Provide a written copy of each listed item in the Protest (or at least the pertinent portions).
• PROTEST SUBMISSION PACKAGE CONTENTS:
1. Transmittal Page - Identify the application being Protested as described below:
a. Title – PROTEST UNDER 37 C.F.R. 1.291(A)
b. Name of Applicant - Richard P. Mettke
c. Application number - Reissue Application 09/134,831
d. Filing date of re-issue application - 8/17/98
e. Title of invention - On-Line Communications Terminal/Apparatus
f. Group art unit number - 2743
g. Name of examiner to whom the application is assigned - Stella Woo
h. The words "ATTENTION - Director of Group 2700"
2. Self-addressed, Stamped Postcard - for acknowledgment that the Protest has been received (including this item is not required by the Patent Office)
3. Proof of Service (required)
a. Proof of service may appear on or be affixed to the Protest papers filed.
b. Proof of service must include the date and manner of service (see "SERVICE" below)
c. In the case of personal service, proof of service shall also include the name of any person served, certified by the person who made service.
d. Proof of service may be made by: (i) an acknowledgment of service by or on behalf of the person served or (ii) a statement signed by the applicant’s attorney or agent.
4. Protest Body - documents and narrative describing the Protest (see "PROTEST BODY" above)
a. The Protest itself, as well as the envelope containing the Protest, should be clearly identified on the top right-hand portion as "REISSUE LITIGATION". If possible, attachments should also contain identifying information on them.
5. Mailing Address - Assistant Commissioner for Patents; Box 7; Washington, D.C. 20231
ATTN: Director of Group 2700.
• SERVICE -- delivery of Protest Body to the applicant’s attorney or agent is required
1. Proper Service must be performed to legitimatize the Protest, and can be accomplished by:
a. Hand delivery to (i) the person served or (ii) an employee of the person delivered at their usual place of business; or
b. First Class Mail
In this case, service is most easily accomplished by mailing via First Class Mail a copy of the Protest to Mr. Mettke’s attorney, Edward Goldstein, and by filing a certificate of service with the Protest which states:
Certificate of Service
I hereby certify that on [Date], I caused the foregoing [Protest] to be served on counsel for Mr. Mettke by sending a true copy thereof via First Class Mail, postage prepaid, to:
Tobor & Goldstein
1360 Post Oak Blvd. - #2300
Houston, TX 77056
Although Protests are easy to generate and file with the Patent Office, they are essentially a one-way communication. You will not likely receive any communications from the Patent Office relating to the Protest, other than the return of your self-addressed postcard (acknowledging that the Protest has been received). In rare circumstances, you will hear from the Examiner for follow-up.
A protest raising issues of ‘fraud,’ ‘inequitable conduct,’ or ‘violation of duty of disclosure’ will be entered in the application file generally without comments on those issues since those issues are generally not commented on by the Patent Office (they are left to the courts to decide).
A Protest involving a Reissue Application should be filed within the 2-month period following announcement of the filing in the Official Gazette. That announcement was published on February 9, 1999, meaning that the two month period ends on April 9, 1999.
If you are aware of prior art or other information which would make the grant of Mr. Mettke’s patent improper, but do not wish to file a Protest, please bring any such information to the attention of Rick Rommel at: 310-577-7700, #7326, [email protected], or North Communications, 13274 Fiji Way, Marina del Rey, CA 90292.