In re Suitco Surface, Inc. (Fed. Cir. 2010)

Yesterday, the CAFC issued a decision in ex parte reexamination 90/007,015 appeal (U.S. Patent 4,944,514). The decision (In re Suitco Surface Inc) is interesting in that the broadest reasonable interpretation of the USPTO was reversed as clearly unreasonable, yet that is the least interesting aspect of the case. In deciding the case, both the BPAI and CAFC applied the wrong standard altogether.

As background, the patent relates to a flooring surface for use on athletic courts, namely bowling alleys and shuffleboard. The key term in dispute being “material for finishing the top surface.” The Patent Holder insisted that the material for finishing the top surface must be defined as the uppermost surface. The USPTO countered that the broadest reasonable interpretation did not require an uppermost surface, but simply the finishing of a general floor surface (such as the lower layer of a laminate type floor). The USPTO reasoned that the term “comprising” is open ended and additional floor layers were possible.

In reversing the BPAI, the CAFC noted that:

“[t]he PTO’s construction here, though certainly broad, is unreasonably broad. The broadest-construction rubric coupled with the term “comprising” does not give the PTO an unfettered license to interpret claims to embrace anything remotely related to the claimed invention. Rather, claims should always be read in light of the specification and teachings in the underlying patent. See Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 217 (1940) (“The claims of a patent are always to be read or interpreted in light of its specifications.”). In that vein, the express language of the claim and the specification require the finishing material to be the top and final layer . . .”

The CAFC determined that claim 1 was unreasonably interpreted based on the USPTO claim construction of “material for finishing a top surface.” However, the CAFC affirmed the rejection of claims 4 and 6 based on a broadest reasonable claim construction of the terminology “uniform flexible film.”

While the CAFC’s emphasis on specification context for reexamination is certainly noteworthy, lost in the appeal to both the BPAI and CAFC is that the broadest reasonable interpretation standard is not applicable to the Suitco Patent. This is because the claims of  the Suitco Patent expired in 2007. As we pointed out a few weeks back, and as recently decided by an expanded panel of the BPAI, expired patents are interpreted based upon the standard established by Ex parte Papst-Motoren, 1 USPQ2d 1655 (BPAI 1986). Papst-Motoren requires that expired claims should be construed, if possible, to sustain their validity” and that the broadest reasonable interpretation was not to be used.

In the case of the Suitco Patent, it appears that while on appeal to the BPAI, the patent expired (2007). It does not appear that the Patent Holder ever briefed the issue at the BPAI or CAFC level. This oversight did not impact the reversal of claim 1, however, the more patent friendly Papst-Motoren standard may have made a difference for claims 4 and 6. It is unclear whether or not a rehearing would be permitted by the CAFC based upon the Patent Holder’s failure to raise the issue.

Going forward, the USPTO will now take up the case again, some 3 years after expiration. Assuming a 103 rejection of the reversed claims is plausible with the previously applied 102 art, the reexamination may continue.

Continued reexamination, and another BPAI appeal will certainly span another 3+ years. The result of another 3 years of reexamination and BPAI/CAFC appeal processing will ensure that the Suitco Patent is subject to reexamination proceedings 6 years beyond expiration. Thus, the USPTO will be expending resources for the next three years on a patent that, at the 6 year mark, is no longer enforceable (35 USC 286). At the 6 year mark, USPTO reexamination jurisdiction ends.

Interestingly, Suitco has an infringement action against 3M in an Iowa district court. The case is stayed pending reexamination. With the case stayed, and any continuing reexamination doomed to be cut off prematurely it seems to me that the infringement will escape review by the court if the stay is continued (see our earlier post on appealing stays pending reexamination) One is left to wonder when Suitco might get around to pointing all this out to the judge, or appeal the stay to the CAFC. Likewise, Suitco may seek rehearing in an attempt to revive claims 4 and 6 based on the mistake in claim interpretation standards.

Stay tuned.