Silversea_Golf_Ball_Cup_squareAs pointed out in our post on shielding declarants from litigation discovery in patent reexamination, the submission of declaration evidence is quite commonplace in patent reexamination as compared to application prosecution. Last week the Board of Patent Appeals & Interferences (BPAI) issued two decisions affirming rejections of patents under reexamination in which declaration evidence, or the lack thereof was outcome determinative. In this post we will discuss the first case, ex parte Rehrig Pacific Company

In ex parte Rehrig Pacific Company, had declaration evidence been submitted, the outcome may have been very different.

In this appeal, the final rejection in ex parte patent reexamination 90/006,283 of claims 25-35 and 53-56 was considered by the BPAI. A key consideration in applying the art to the claims was whether or not the claim term “top frame” or “top frame assembly” was different from the pallet structure of the prior art (from the perspective of one of ordinary skill in the art). No declaration evidence from one of skilled in the art was presented on this key issue. Claim 25 is provided below.

25. A top frame assembly adapted for use with a pallet, wherein the top frame assembly and the pallet have at least one layer of objects positioned therebetween, the top frame assembly comprising:

first and second top frame members each having an outer rail defining at least one opening through the top frame member, the first top frame member having a first plurality of cross-ribs extending downwardly therefrom, the second top frame member having a second plurality of cross-ribs extending upwardly therefrom for mating with the first plurality of ribs, the first and second plurality of ribs fastened to each other to form a plurality of complete box beam sections between the first top frame member and the second top frame member. (emphasis added)

Despite the fact that the reexamination requester distinguished between top frames and pallets, the prior art distinguished between the same, and it was recognized that top frame was a term of art, the BPAI did not give the term “top frame” a different meaning from pallet, instead reasoning that:

The evidence does not support Appellant’s narrow interpretation. Appellant’s correctly recognized that the ‘044 patent does not show top frames with columns or openings to received forklift (“jack”) tines as shown for Konig’s pallet (F6-10). But the ‘044 patent does not limit its top frame to the specifically described embodiments nor disclaim top frames with such features. To the contrary, the only requirement of a top frame that is enunciated in the ‘044 patent is that it have a structure which can stabilize a shipment of objects when used in combination with a pallet (F5 & F6) (emphasis added)

As highlighted above, evidence of the Patent Holder’s meaning was lacking as declaration evidence directed to the meaning of “top frame” was never submitted. Moreover, the Patent Holder failed to request an oral hearing before the BPAI. While the oral hearing may have helped, certainly the lack of evidence was dispositive. Rather than taking my word for it, one need only look at the increasingly rare dissenting opinion provided with this BPAI decision, which noted:

. . . I do not consider a “top frame” as recited in the claim to be a “pallet” also recited in the claim and described in the ‘044 patent. The record indicates that top frame devices are well known and understood in the relevant art, including by the third party requester who requested examination of the ‘044 patent, as being specific devices which are distinct from a “pallet,” and used with a pallet (App. Br. 7; Request for Reexamination 73; Patent No. 5,160,029). While it is asserted that the pallets described in Konig are capable of being used in a stacked configuration so that the pallet placed on top becomes the “top frame,” there is no evidence in the record that pallets are used in such a manner. Indeed, the limited evidence of record appears to indicate the contrary, that is, nonpallet devices (i.e., top frames) are used instead. (emphasis added)

So, the Patent Holder was able to convince one APJ of the BPAI panel based on the limited evidence of record (i.e., without declaration evidence). At the very least, declaration evidence directed to the key issue would have further developed the evidentiary record, likely making the difference in this “close call.”