A U.S. Patent Office board has rejected a patent owned by Stan's founder Stanley F. Koziatek, siding with Specialized and reversing a previous decision by a Patent Office examiner (see patent).
Stan's sued Specialized in a New York federal court in 2008, claiming the company infringed on its patent for tubeless tire rims by making and selling some Roval wheel models. In 2009 the court granted a stay in the case while the Patent Office re-examined the validity of Stan's patent at Specialized' request.
While a first examiner upheld the patent, the Board of Patent Appeals and Interferences last month overturned that decision, while also noting that its decision can be appealed yet again.
Neither Specialized nor Stan's representatives were available Monday to comment on the decision.
Specialized apparently stopped selling the rims in question in 2008 or 2009.
Specialized's lawyers had argued in part that two rim patents owned by Shimano, granted in 2003 and 2006, invalidated Stan's patent, which was granted in February 2008.
The original examiner, who upheld Stan's patent, noted that the drawings in Shimano's patents did not specify exact measurements of a rim's sidewall height, a key part of Stan's patent.
But the appeals board, while agreeing that Shimano's patent did not specify the sidewall height, found that a height close to Stan's specification was an obvious conclusion to be drawn from the two Shimano patents. (The board's decision (.pdf))
The board cited prior case law and the U.S. Patent and Trademark Office's Manual of Patent Examining Procedure, which says an invention is not patentable if a "person having ordinary skill in the art" would find it obvious from reviewing prior art.