In a separate action on November 11, 2008, GEOSPAN requested the U.S Patent Office to reexamine Pictometry’s U.S. Patent Number 7,424,133, entitled “Method and Apparatus for Capturing, Geolocating and Measuring Oblique Images.” This action is a procedure used by the U.S. Patent Office to allow the claims in existing patents to be contested (Ref. No. 95/001,110)

In its request, GEOSPAN set forth substantial new questions of patentability based upon  a September 5, 2002 printed publication by David Rattigan, a reported for a Boston newspaper. The USPTO ordered inter partes reexamination of the ‘133 Patent, and subsequently issued a Non-Final Office Action on February 2, 2009 rejecting claims 17-24 on anticipation and obviousness grounds. Currently, the rejections are on appeal to the BPAI.

On May 25, 2010, the patent owner filed its brief. On the appeal, the Patent Owner is contesting  the USPTO’s conclusion that the submitted declaration evidence filed under 37 C.F.R. § 1.131 (swear behind) is insufficient as well as the conclusion that declaration evidence filed under 37 C.F.R. § 1.132 is insufficient to disqualify the Rattigan publication based upon attribution. (MPEP 716.10). Of particular interest is the dispute between the USPTO and the Patent Holder as to whether declaration evidence can be used to disqualify a prior art reference as “attributed” to the  inventors’ work where none of the inventors is an author of the printed publication used to reject the claims. 

The USPTO has taken the position that some overlap must exist between inventorship and authorship of the prior art reference to properly be “attributed.” Conversely, the patent owner in its brief relies on In re Costello, 717 F.2d 1346, 1347 (Fed. Cir. 1983), Ex parte Nykoluk, Appeal No. 2008-1778, page 21 (Bd. App. & Int. 2008) and Ex parte 5872952 et al., Appeal No. 2005-2512 (Bd. App. & Int. 2006) in arguing that co-authorship is not a requirement for disqualifying a reference using a § 1.132 declaration.

PPG Comment:  Attribution typically involves co-authorship as inventions are often described in academic papers by the inventors along with other contributors. The idea behind attribution is that a description initially identified as prior art that is “attributable” to the inventors work, should be disqualified. Here, the description is by a reporter commenting on a promising technology that formed the basis for the patent, as demonstrated by the declaration evidence of record (Patent Owner Brief here). The Office appears to be requiring co-authorship of the news report not based upon any holding of the courts, but instead, based on commonly encountered fact patterns.

An Answer to the appeal briefing was issued last week (here). I was hoping for a bit more insight into the position of the Office. Unfortunately, the Answer simply incorporates the positions of the RAN (which, was of course written prior to the briefs). Very strange.

Since In re Swanson, the standard for establishing a Substantial New Question of Patentability (SNQ) in a patent reexamination has been quite liberal. A requester need only establish that the submitted art be presented in a new light. Thus, previously considered prior art can be re-used, if applied to the claims in a slightly different manner than that of the original prosecution. Understandably, since Swanson, arguing that a rejection adopted by the Office in patent reexamination does not in fact present the previously considered art in a new light has been an uphill battle.

Yesterday, the USPTO found a rare SNQ it didn’t like….and pigs were seen flying down Dulany Street.

U.S. Patent 6,780,079 is the subject of litigation styled MuzzyProducts Corporation v. Primos Inc., U.S. District Court of Georgia 4:05cv182. This case was stayed in 2007 pending the outcome of the reexamination, 90/008,081. The ‘079 Patent relates to a devices used in hunting for attracting game (game calling).

Original Prosecution

During the original examination of the ‘868 application which eventually issued as the ‘079 patent, the claims were rejected under 35 U.S.C. § 103(a) as obvious over prior art Patent No. 5,607,091 “Musacchia”. The Examiner stated that while Musacchia does not disclose a hunting device for producing sounds that has a unitary construction, “unitary construction of the hunting device would have been obvious to one of ordinary skill in the art, since this would aid in the portability and usage of the device.”

In response, the inventor, Mr. John Musacchia Jr., (prior art invented by his father) filed a Declaration seeking to establish non-obviousness through long-felt need.

After extensive prosecution, the original Examiner maintained the rejection of the claims over Musacchia stating that “Musacchia discloses the claimed invention except for the game call device constructed as one piece” and that “[i]t would have been obvious to one having ordinary skill in the art at the time the invention was made to form the game call device as one piece, since it has been held that forming in one piece an article which has formerly been formed in two pieces and put together involves only routine skill in the art. Howard v. Detroit Stove Works, 150 U.S. 164 (1893).”

After further prosecution, the Applicant appealed to the Board. The original Board panel reversed the original Examiner’s rejection stating that there is no per se rule that “forming several pieces integrally as a one-piece structure would have been obvious . . . [,]” and “in this case, one must determine if it would have been obvious to one of ordinary skill in the art at the time the invention was made to make Musacchia’s separate call and platform as a one-piece structure.” Subsequently, the application was then allowed by the examiner.

Request for Reexamination

In the request for reexamination, the Requester argued that the Declaration filed during the prosecution of the ‘079 patent was only considered as to whether it demonstrated long-felt need, and not considered by either the original Examiner or the original Board panel as including admissions.

The USPTO adopted this reasoning explaining the admissions to be statements made by the Patent Owner in his declaration and remarks that identify the long-unfelt need. Specifically, these remarks explain that a one piece design was considered desirable by those of skill in the art and would predictably result in preventing the loss of game calls, maintaining a true sound, and reducing the cost of the game call.

In this regard, the Office stated that, when considered as admissions, the statements of the Declaration

provide evidence of obviousness, which was specifically pointed out as missing in the prior examination, and therefore, cast Musacchia ‘091 in a new light. The teachings of Musacchia ‘091 considered in conjunction with the admissions are a new question of patentability not previously considered. As such, the teachings of Musacchia ‘091, in conjunction with the admissions in the record, raise a substantial new question of patentability.

Board Decision

The Board remanded (decision here) the reexamination back to the Central Reexamination Unit for termination explaining that:

While the CRU Examiner may be correct in asserting that the original Examiner and the previous Board panel considered the statements in the Declaration only in the context of long-felt need, these statements do not alter the purpose for which the CRU Examiner now relies on the Musacchia reference for finding the existence of a SNQ. In particular, the CRU Examiner does not apply the statements in the Declaration to gain any new understanding as to the teachings of the Musacchia reference, but rather, uses the statements merely to reach a different legal conclusion as to obviousness. While the CRU Examiner asserts that the statements in the Declaration casts Musacchia in a “new light,” the CRU Examiner’s position suggests that the CRU Examiner is viewing the Declaration, not the Musacchia reference, in a new light.

PPG Comment : The Requester gets an “A” for effort.

Essentially, this reexamination was pursued to leverage the perceived change in obviousness standards caused KSR International Co. v. Teleflex Inc (’079 Patent issued pre-KSR). Ths request was submitted under the guise of declaration admissions in the hopes that applying KSR to the same art would yield different results. Of course, MPEP 2216 makes it very clear that KSR does not impact the SNQ analysis.

**Fortunately for the patent owner, as of June 25, 2010, the Board may now properly review the examiner’s determination that a SNQ exists. Prior to June 25, 2010 the Patent Owner’s argument would have been rejected by the BPAI as a petitionable issue.

The articles in this patent reform issue of Medical Innovation & Business that are relevant to post-grant procedures for assessing validity fall roughly into three categories based on three different perspectives: venture capitalists’ perspective, the perspective of attorneys in private practice, and judicial perspective. Across these categories, post-grant discussions repeatedly highlight several sources of uncertainty that may apply to small companies relying on their intellectual property investments.

We provide the following review of the articles in this issue that pertain to post-grant review.

Venture Capitalist View:
Venture capitalist contributors argue that these uncertainties may cause investors to hesitate in funding important innovations, ultimately slowing developments in medicine and other technological fields.

In an article entitled “Venture Capital — The Buck Stops Where?”, venture capitalist Gary Lauder states that, while post-grant opposition nobly aims to invalidate flawed patents, any expansion of post-grant opposition opportunities increases both the uncertainties as to patent value and the costs of defending patents. Pointing out the importance of venture capital in funding medical and other technological innovation, Lauder discusses how increased uncertainty and patent defense costs could inhibit venture capitalists from funding smaller innovators.

John Neis, managing director of Venture Investors, LLC, also addresses the effect of additional post-grant review options on funding of small patent owners in his article “Post-Grant Review-Our Next Nightmare? VC Perspective.”  Neis particularly criticizes the House version of proposed post-grant review because of its negligible barrier to entry, its lack of a presumption of validity, its lower burden of proof as compared to validity challenges in court, its lack of a meaningful estoppel bar against parallel or successive challenges, and its three administrative tracks of post-grant review, two of which have mini-trial procedures open to attacks on both prior art and non-prior art grounds. Neis further criticizes both the House and Senate versions for disincentivizing early-stage innovation that he argues is critical to American economic interests.

Thus, the venture capitalist perspective from contributors to this issue of Medical Innovation & Business disfavors several aspects of the current House and Senate bills for the uncertainty they may add to post-grant procedures. These contributors argue that more limited forms of review would help solidify the value of small companies’ intellectual property, this encouraging small firm innovation.

Private Attorney View:
Private attorney contributors focus on specific areas of post-grant opposition reform, revealing possible sources of uncertainty in proposed changes.

In “Would Derivation Proceedings Be The Same As Derivation Interferences?” (a revised and updated version of an earlier-published article of the same title) Charles Gholz of Oblon Spivak analyzes the proposed derivation proceedings. These proposed proceedings would be remnants of interference practice (see this earlier PPG Blog post). Specifically, Gholz delves into points of possible ambiguity in the proposed derivation proceedings, including whether they would determine if a party was affirmatively entitled to a patent rather than not entitled due to derivation, whether the PTAB must always act consistently with any settlement not contradicted by evidence, whether and how readily settlement agreements will be available to different types of parties, whether alleged derivees would have adequate notice to file for derivation proceedings against a patent resulting from an unpublished application, whether an alleged derivee who filed an application before an alleged deriver can initiate derivation proceedings, whether amendment or motion for judgment of invalidity on non-derivation grounds would be available, and whether the Senate bill’s language would make Director decisions on derivation institution “final and nonappealable.” Taken in context with the other articles of this issue, Gholz’s analysis shows that legal uncertainties, not just factual uncertainties, may face patent owners under new forms of post-grant opposition.

Start-up companies’ potential increased risk and fundraising difficulties receive attention in McDonnell Boehnen Hulbert & Berghoff attorney Kevin Noonan’s article “Post-Grant Review of U.S. Patents: Will Past Be Prologue?”  Noonan reviews the origins and procedures of the current ex parte and inter partes reexaminations. He points out that Congress introduced these types of review to reduce patent infringement litigation, yet that in practice, reexaminations often run in parallel with such litigations rather than instead of them, further complicating post-grant procedures and making accurate evaluation of intellectual property more difficult for patent owners. Noonan then characterizes the goals of proposed post-grant review procedures as similar to those of reexamination. He likens proposed post-grant review to European practices, which he says are more expansive than current reexaminations. He states that new post-grant review procedures would be more difficult to initiate than reexamination but would also greatly limit rebuttal opportunities, giving patentees better treatment in some ways and worse treatment in others. By Noonan’s reports, the estoppel rules for post-grant review appear to make it another procedure that could run parallel to litigation rather than replacing it.  Noonan thus proposes including stronger estoppel ruled in post-grant review. He also discusses other aspects of post-grant review, such as effects in district court, that might affect incentives and funding in innovation.

Charles E. Miller and Daniel P. Archibald of Dickstein Shapiro focus more specifically on proposed court-related changes to post-grant proceedings in their article “Attenuated Judicial Review of Patent and Trademark Office Decisions: ‘Technical Amendment,’ or Stacking The Deck Against Inventors?” Currently, patent owners subject to unfavorable ex parte reexaminations may seek Federal Circuit review or may sue the USPTO in the District Court for the District of Columbia. In the former type of action, the Federal Circuit reviews for substantial evidence, but in the latter type of action, the trial court examines the facts de novo.  However, proposed measures would eliminate the district court option for review of ex parte reexamination. Miller and Archibald argue that such measures would eliminate an important route involving de novo review in a court more skeptical of administrative action. They also argue that such measures could be a slippery slope leading to eliminating district court jurisdiction over PTO patent application rejections. However, amidst these arguments, Miller and Archibald admit that district court suits for ex parte reexaminations are less frequent than Federal Circuit appeals. Therefore, these proposed changes to jurisdiction over PTO decisions may or may not have significant impact. While reduced possibilities for litigation venues might serve to make patent values more certain, Miller and Archibald argue that patents would also be less valuable as a result.

While private practitioners may examine different parts of post-grant opposition, they seem to agree that the proposed reforms create some ambiguity as well as some cause for concern among patent owners.

Judicial View:
Unlike many of the contributors to this issue, Chief Judge Rader discussed European post-grant opposition favorably. While he agreed with several of the contributors that lengthy post-grant opposition can “cast a perpetual cloud over the value of the patent,” he expressed confidence in Congress’s intent to address that worry. He also characterized interferences as frequently expensive and unsuccessful, preferring first-to-file systems over the current U.S. first-to-invent system because the former would eliminate the need for interference proceedings. Thus, regarding proposed post-grant opposition, Chief Judge Rader takes a more hopeful view than that of several of the more venture capital-minded contributors to this issue. As the Chief Judge for the appeals court with exclusive jurisdiction over patent matters, Chief Judge Rader will interpret and influence the interpretation of any patent bills that Congress passes. Chief Judge Rader notes the conflicting concerns on either side of the post-grant review scale: quality of presumably valid patents on one hand, and certainty as to patent value on the other. Thus, his tone regarding proposed post-grant review reform will likely neither scare nor excite any extremely pro- or anti-patent parties.

While former Chief Judge Michel did not directly address post-grant opposition procedures, he generally expressed enthusiasm regarding current U.S. patent law, aside from some procedural aspects in Article III courts that he felt to be problematic. Former Chief Judge Michel’s silence on post-grant matters throughout his interview with Medical Innovation & Business, if it can be taken to mean anything, may indicate a satisfaction with post-grant procedures as the Federal Circuit has applied them under his recently-concluded Chief Judgeship.

The insights from former Chief Judge Michel and Chief Judge Rader provide perhaps some of the most significant lead into the future of these bills should they become law.

Note: Special thanks to Eric Myers for his assistance in the research for this posting.

On July 29, 2010 H.R. 5980 was introduced by Congressman Frank Wolf (R-VA) as the “Bring Jobs Back to America: Strategic Manufacturing & Job Repatriation Act.” How can anyone vote against that noble cause!?

Unfortunately, once past the flowery title, the substance of the bill, at least with respect to the proposed patent law changes is simply a collection of oddball provisions that would neither achieve any meaningful reform nor job repatriation.

The bill proposes three changes to the patent law: abolishing the 18-month publication of patent applications, to be replaced with 18-month publication of abstracts; prioritization of applications by, or affiliated with (affiliated patent holding companies, whatever that means), U.S. universities; and virtual elimination of 102(e) prior art.

The thought process seems to be that by reducing available prior art, and keeping pending applications secret, the U.S economy will improve..somehow; not quite sure how the University angle fits in to job repatriation or manufacturing. Evidently prospering patent holding companies affiliated with universities hire a lot.

I can see large patent holders like Microsoft, Intel and others signing on to support this in droves…less prior art, more power to patent holding companies. Right

Congress….you’re not helping.

On Tuesday, the BPAI seemingly ended the 10 year saga of Ex Parte Gary E. Rhine affirming the examiner’s rejection of expired U.S. Patent 4,910,652.[1] The reexamination was  initiated in April 2000 on behalf of Casio Computer by the now long defunct law firm of Penny & Edmonds. At issue in the appeal was the patentability of a combination wristwatch/flashlight. In 2002, the Patent Owner amended claim 1 to require a fixed time delay, arguing that the prior art demonstrated an adjustable time delay. However, the reexamination lagged on for years, and prior to appeal, in 2007, the patent expired. On appeal, the USPTO explained that the amendment was effectively withdrawn upon patent expiration in 2007.

In a scathing supplemental brief (here) the Patent Owner pointed out that the reexamination had been pending some 10 years, including some unexplained year long gaps in prosecution, bounced appeal briefs, etc. The Patent Owner argued that in light of this delay, it was “outrageous” that the USPTO would withdraw the amendment.

While a 10 year pendency is extreme to say the least, this reexamination was filed in a time before the creation of the Central Reexamination Unit (CRU). This case is one of the few remaining with the general examining corps. Likewise, ex parte reexamination appeal rules have been changed to avoid the rejection of appeal briefs late in the game. While not much comfort to Mr. Rhine, fortunately, the patent reexamination landscape has changed significantly over the years.

Nevertheless, of perhaps greater interest is why the Patent Owner would amend the claims in the first place since the winning argument was right under his nose.

At issue in the appeal was a single independent claim, claim 1 below (as amended): 

1. (As Amended) A time keeping and displaying wrist mountable watch having a flashlight mounted in the case thereof, said flashlight comprising:

a power supply for supplying electrical power to said flashlight, said power supply electrically connected to at least one light source, and

time delay means for automatically extinguishing said light source after a fixed time delay following the energization of said light source by the electrical deenergization of said light source.  

The Office identified the time delay means as being satisfied by the Mallory reference (Fig. 1 below)

PPG Comment: Rather than arguing that the “time delay means” of the claim was required to be interpreted under 35 USC § 112 6th paragraph (i.e., means plus function) and that the circuit structure of the specification was nowhere near an equivalent structure to the mechanical spring/bellows arrangement of Mallory, the Patent Holder instead argued the reference was non-analogous art, and could not be bodily incorporated into a watch. Giving the Patent Holder the benefit of the doubt, perhaps the aversion to 112 6^th was litigation inspired. For example, the solenoid/capacitive based circuitry of the patent specification, although described as exemplary, could limit infringement options.

While the BPAI cannot be blamed for not making the Patent Holder’ s argument for him, I am left wondering whether a statutorily mandated claim construction can be ignored regardless of the implied “waiver” of such arguments in the brief? As pointed out repeatedly on this blog, the USPTO could save Patent Holders a lot of grief, and conserve Office resources by requiring third party requesters to properly address means-plus-function claims, upfront, in their requests for reexamination.

The court denied the motion to stay the litigation citing familiar factors, noting that (1) the stay would prejudice the plaintiff, (2) the stay would not likely simplify the issues in litigation and facilitate trial, and (3) discovery will soon be complete. Yet, clearly, of more interest to the court was why Envisionware chose to ignore the ‘870 Patent altogether.

In explaining his decision, the magistrate judge expressed concern that Envisionware was seeking a stay for purely tactical reasons. The Court explained that, with respect to the ‘870 Patent, there would still need to be an infringement analysis, claim construction, expert discovery and fact discovery despite the fact that the ’870 Patent shares a common specification with the ’780 Patent. At the hearing counsel for Envisionware explained that inter partes reexamination of the ‘870 Patent was not possible. Envisionware offered no clear answer as to why ex parte reexamination of the ‘870 Patent was not pursued.

PPG Comment: Third parties are reluctant to pursue ex parte reexamination believing that the lack of third party participation will lead to an unfavorable result. Yet, as pointed out by the court in this case, if the USPTO were to conclude that the claims in the reexamination were patentable, this would not bind the Court from reaching a contrary determination. Indeed, as we noted last week, courts do not even give deference to the decisions of the USPTO. By deliberately choosing to avoid the risk of a favorable ex parte patent reexamination result, Envisionware seemingly failed to see the forest for the trees.

With most patent reexaminations now being conducted concurrent to a district court or ITC proceeding, a common question of such plaintiffs is “what becomes of the patent reexamination once the litigation settles?”

In the case of ex parte patent reexamination, the answer is simple, the reexamination continues unaffected. On the other hand, if the pending reexamination is an inter partes patent reexamination, the answer will depend on the nature of the settlement.

In other words, inter partes patent reexamination is subject to statutory estoppel provisions not applicable to ex parte patent reexamination. Depending upon the manner in which the case settles, and whether or not the case is before the ITC, a carefully worded consent judgment can be used to trigger 35 USC § 317 (b), effectively forcing the USPTO to vacate the proceeding by operation of estoppel.

35 USC § 317 (b) provides:

(b) FINAL DECISION.- Once a final decision has been entered against a party in a civil action arising in whole or in part under section 1338 of title 28, that the party has not sustained its burden of proving the invalidity of any patent claim in suit or if a final decision in an inter partes reexamination proceeding instituted by a third-party requester is favorable to the patentability of any original or proposed amended or new claim of the patent, then neither that party nor its privies may thereafter request an inter partes reexamination of any such patent claim on the basis of issues which that party or its privies raised or could have raised in such civil action or inter partes reexamination proceeding, and an inter partes reexamination requested by that party or its privies on the basis of such issues may not thereafter be maintained by the Office, notwithstanding any other provision of this chapter. This subsection does not prevent the assertion of invalidity based on newly discovered prior art unavailable to the third-party requester and the Patent and Trademark Office at the time of the inter partes reexamination proceedings. (emphasis added)

It is important to note that the estoppel provisions of inter partes patent reexamination do not apply to ITC proceedings, see our earlier discussion of this issue.

With respect to district court proceedings, where parties agree to settle, and the defendant is also willing to accede to a consent judgment stating that they have failed to prove invalidity, such may serve as a final judgment. (once the 30 day time to appeal the consent order has passed). In considering the language of the consent order, the USPTO will look to whether or not the claims of the ongoing inter partes reexamination are the same as that at issue in the litigation. For claims of the ongoing reexamination that are not subject to the consent judgment, the reexamination would continue as estoppel would not attach for these claims. (likewise for any newly added claims) Attached is a 2009 petition decision detailing a vacatur of an inter partes patent reexamination. (here)

In practice, defendants rarely agree to such a consent order since such a public humliation is not all desirable. (e.g., especially if the defendant is frequently the target of patent trolls). Likewise, as noted in the petition decision linked above, although the reexamination is vacated by the estoppel as to the particular setttling defendant, the unfinished business of the reexamination may be easily “re-started” by another competitor. Still, in settling patent disputes concurrent with inter partes patent reexamination, plaintiffs may be amenable to such a consent judgement ….for the right price.

One of the risks often associated with ex parte patent reexamination is that an outcome favorable to a patent holder is considered to “gold plate” a patent that is later asserted against the requester in district court, especially with respect to the same or similar art. This notion was tested recently in Crestron Electronics Inc. v. RGB Systems Inc., CV 09-8402 (CDCA).

Crestron’s U.S. Design Patent D569,863 is asserted against RGB in the California District Court. RGB had earlier sought ex parte reexamination of the same patent based upon the same prior art now applied in the district court proceeding. Not surprisingly, Crestron noted that the reexamination attempt based on the same art now before the district court had failed to invalidate the patent. In other words, without any presumption of validity, and the ability to invalidate the patent by a mere preponderance of the evidence, RGB failed. Thus, Crestron argued that the reexamination results should preclude an invalidity defense on the same art. The court decided that not only can RGB argue the same invalidity positions over again, but that the court need not even show deference to the reexamination results.More specifically, the court sided with RGB’s argument that:

…a district court must make its own validity determination and may not rubberstamp the PTO’s reexamination decision. E.g. Quad Environmental Tech. Corp. v. Union Sanitary Dist., 946 F.2d 870, 876 (Fed. Cir. 1991) (“The courts are the final arbiter of patent validity and, although courts may take cognizance of, and benefit from, the proceedings before the patent examiner, the question is ultimately for the courts to decide, without deference to the rulings of the patent examiner.”).

PPG Comment: Part of the problem with reading Quad Environmental so extensively is that the facts are quite distinguishable. While Quad also dealt with the issue of an earlier concluded reexamination on some of the same art, the key invalidity issue before the Quad Court related to public use evidence not considered in the concluded reexamination. Thus, it is quite clear why the Quad Court concluded that the earlier reexamination was not to be accorded deference, and why the Court must do their own validity analysis in most cases. However, here where the art and issues are identical, and RGB failed to prove invalidity under much more liberal USPTO standards, some deference seems appropriate. To be sure, courts often cite to the potential results of patent reexamination to justify staying a case, yet when given the opportunity to actually conserve judicial resources based on such results………

Of course, inter partes reexamination remedies this dilemma by operation of statutory estoppel (317 (b)).

Silence in Original Prosecution History Used Against Patent Owner

As discussed previously, prosecution history is applied inconsistently in patent reexamination claim interpretation analysis. In applying a plain meaning analysis to claim language, prosecution history is considered as a necessary component in accordance with Phillips v. AWH Corp., 415 F.3d 1303; 75 USPQ2d 1321 (Fed. Cir. 2005) (en banc). Conversely, in analyzing the broadest reasonable interpretation consistent with the specification as it would be interpreted by one of skill in the art, there is no consideration of prosecution history. This is because the BRI standard is rooted in patent application prosecution (where no previous history exists). As such, it is no surprise that the case law and MPEP are silent on the use of prosecution history as an aspect of a BRI in patent reexamination.

Yesterday, the BPAI analyzed a prosecution history for evidence that a Patent Owner disclaimed an argument now before the Board in an ex parte reexamination appeal. In doing so, the Board appears to be attempting to expand the waiver policy of Hyatt v. Dudas, 551 F.3d 1307, 1313-14 (Fed. Cir. 2008) (the Board may treat arguments appellant failed to make for a given ground of rejection as waived)

The decision affirmed the examiner’s rejection in ex parte patent reexamination based upon the prosecution history. (Ex Parte A. James Smith, Jr) In the decision claim interpretation was not at issue, instead, the written description support of the issued continuation-in-part (CIP) was analyzed relative to the parent application relative to the claim term “graphical image.” (for determing the applicability of intervening art). The Board deemed that the written description issue was fully considered in the application prosecution and noted that the Patent Holder failed to dispute the 112 priority issue. This inaction was considered a clear disavowal of the argument by the Board effectively estopping the Patent Owner from pursuing the issue in the subsequent patent reexamination.

In arriving at their decision, the Board noted that the original prosecution included a rejection of the same claims (i.e., 6-12 and 27-32) as lacking written description support in the parent application for graphical image. In responding to this rejection, the Patent Owner merely pointed out that claim 12 was supported by the claims of the parent. For this reason, the written description rejection of claim 12 was withdrawn during the original prosecution. However, no argument was made relative to the 112 rejection of the other rejected claims, and the Examiner reiterated the written description issue in the Notice of Allowance.

In finding that the Patent Holder had in fact disavowed arguing priority for the remaining rejected claims, the Board explained:

In making this determination, we find that during the original prosecution of the ‘336 patent, the Examiner made specific unambiguous priority findings during a First Office Action (FF 2, 3, 4), a Final Office Action (FF 6, 7, 8), and again in the Examiners Reasons for Allowance (FF 10). In response to these priority findings, Appellant did not contest the findings other than to correct the Examiner’s apparent clerical error. (FF 5). Thus, in overcoming the prior art during the prosecution of the ‘336 patent without attempting to traverse the Examiner’s priority findings, the Appellant forwent opportunities to persuade the Examiner that there may be support for the contested subject-matter in an ambiguous disclosure that otherwise might have sufficed to obtain an earlier priority date. Determination of a priority date is purely a question of law if the facts underlying that determination are undisputed. See E.I. du Pont de Nemours, 525 F.3d at 1359. . . . . . . . .

Therefore, based upon the Examiner’s unambiguous priority findings (FF 2, 3, 4, 6, 7, 8), the Appellant’s full and fair opportunity to contest these findings during original prosecution (FF 5), and their opportunity to appeal to the Board (FF 9), we find that these circumstances have created an estoppel for the Appellant to deny that there was new matter present in the CIP. As such, Appellant’s silence during the original prosecution creates an estoppel for the Appellant to deny the Examiner’s repeated priority findings, thereby impliedly conceding their correctness, and therefore Appellant’s lack of entitlement to the original filing date of the ‘328 patent for the term “graphical image,” as recited in claims 6, 7, 28, 33, 3-9, and 41-45 of the ‘336 patent.

By refusing to award priority to the parent for the rejected claims, the intervening art was found to invalidate the claims at issue.

PPG Comment: In essence the Board has inferred a disclaimer/waiver by inaction, and has estopped the Patent Holder from now disputing the issue. While the decision notes the unambiguous rejection of the examiner, it is the Patent Holder that must be clear and unambiguous with respect to a disavowal of the argument. Here, the claims were actually allowed on independent grounds in the original prosecution despite the priority question (112 support). While the Patent Holder could have argued the written description rejection rather than the alternate path they chose that led to the ultimate allowance of the claims, this inaction may be more of an illustration of economics rather than true disclaimer/waiver. For example, the further argument of the 112 issue may have required submission of declaration evidence under 37 CFR § 1.132. Selection of a less costly option, that ultimately was successful, would not seem to rise to the level of an unambiguous and clear disavowal of other options.

Moreover, clear disavowal in an district court setting would not be found based on silence alone. An applicant’s silence in response to an examiner’s characterization of a claim does not reflect the applicant’s clear and unmistakable acquiescence to that characterization if the claim is eventually allowed on grounds unrelated to the examiner’s unrebutted characterization, as was the case here. After all, the applicant has disavowed nothing.

In this case the Patent Holder’s decision to argue the 112 support to the exclusion of other rejected claims would have to be enough to tilt the scales.

Yet another interesting BPAI case that appears destined for the CAFC.

Back on May 26, 2010, the same mechanism was noticed in the Federal Register for ex parte patent reexamination appeals. Yesterday a notice was provided in the Federal Register adding inter partes reexamination to the BPAI review mechanism. These improvements should help avoid some of the more aggravating delays experienced in reexamination appeals to the BPAI. Of course, with a significant, and growing appeal backlog, any impact of this change may be offset by sheer numbers.