Another Patent Challenged for "Unintentional" Abandonment

Defendants Victoria's Secret Stores LLC, Nordstrom Inc., Gap Inc. and The Neiman Marcus Group Inc. were recently sued over a patent related to a prosthesis for women's bras. During the course of prosecution, the patent was abandoned for failure to timely file a response. Almost 5 years after abandonment, the patent was revived, issued, and asserted against the defendants.

In light of the delay and surrounding circumstances, the defendants cried "j'accuse!" and have asked for summary judgment, claiming that the patent is invalid and that the U.S. Patent and Trademark Office abused its discretion by unlawfully reviving the patent's application.

Black made no attempt to meet the statutory standard that the entire period of her delay in prosecuting the '922 Application was "unavoidable." Instead, she merely filed a petition to revive alleging that the "entire delay" was "unintentional." That is the wrong standard and is not a "showing" of "unavoidable" delay. Accordingly, the '606 Patent that issued from the unlawfully revived '992 Application is invalid.

Black did not file the petition to revive the '992 Application until March 28, 2005 -- over five years after the respective mailing dates of both the final office action and the notice of abandonment. Furthermore, both Black and Hoffman stated in their respective declarations that "[t]he entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to 37 CFR § 1.137(b) was unintentional." (Emphasis added.) Neither Black nor Hoffman attempted to explain that the delay was unavoidable.

Read the motion for SJ here (link)