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The court affirmed the district court’s holding that the PTO correctly found claim 1 of the patent-in-suit obvious in an ex parte reexamination.  The patentee Dome argued that the PTO erred in the reexamination by applying the preponderance of the evidence standard rather than the clear and convincing standard applied in litigation per 35 U.S.C. §282.  The court held that the PTO applied the correct standard, because the clear and convincing standard is applied where deference is due to the patent examiner.  In a reexamination proceeding, unlike a litigation, the examiner is not attacking the validity of the patent, but rather is conducting a subjective examination of claims in light of the prior art.  Thus, when examining the prior art relied on by the PTO in the reexamination proceeding, the court found that Dome could not overcome the heavy burden of overcoming the district court’s factual findings. 

Dome Patent L.P. v. Lee, Case No. 2014-1673 (September 3, 2015); Opinion by: Hughes, joined by Reyna and Schall; Appealed From: District Court for the District of Columbia. Read the full opinion here.

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