Womble Bond Dickinson attorneys Brent Babcock and Eric Hyman successfully represented Komori Corporation in an appeal to the USPTO’s Patent Trial and Appeal Board (PTAB). Komori, a Japanese-based company, is a global manufacturer of high-end printing presses. The ex parte appeal reversed the patent Examiner’s final rejection of the client’s claimed invention.

In Komori’s patent application, inventor Hitoshi Funada described and claimed a novel printing and inspection process, typically used in offset printing of secure documents. The process ensures that “the printed paper sheets have a high print quality and a high anticounterfeit means quality,” according to the patent application.

During the application’s prosecution, the patent Examiner finally rejected Funada’s claims, concluding that they were obvious in view of existing printing technology. But at oral argument before the PTAB, Babcock was able to show substantive differences between Funada’s invention and the prior art cited by the Examiner. For example, Funada’s invention employs an anticounterfeit means inspection unit before printing a ground tint pattern, unlike the prior art printing processes of record. With the key technical differences explained, the PTAB reversed all of the Examiner’s rejections of the application’s claims, and Funada’s application will now issue as a U.S. patent in the near future. The decision was announced Jan. 21. Click here to read the PTAB’s decision. 

Brent Babcock represents high-technology clients in every aspect of intellectual property disputes, focusing on federal district court litigation throughout the country, trials and post-grant patent proceedings before the USPTO's Patent Trial and Appeal Board and alternative dispute resolution (ADR) proceedings, including domestic and international arbitrations. His practice also includes pre-litigation counseling, pre-interference and post-grant proceeding consulting, and appellate briefing and oral argument before the United States Court of Appeals for the Federal Circuit.

Eric Hyman guides software, hardware, and electronics clients in all stages of securing US patent, trademark and copyright protection and coordinates the filing and prosecution of foreign patent and trademark applications. He provides a broad range of intellectual property related services including review and evaluation of patent portfolios, writing and negotiating patent, trademark and copyright licenses, due diligence investigations, and preparing trademark availability for use and registration opinions and opinions regarding patent validity and infringement.