waiveBPAI Affirms Claims of Expired Patent in Ex Parte Reexamination

The rejection of all claims (save 25, which was confirmed) of expired Patent 4,925,294, (hereinafter, “‘294 Patent”) owned by Three-Dimensional Media Group LTD., was affirmed by the BPAI on Monday. In affirming the rejection, at issue in the appeal was the meaning of “3-D” as recited in the claims of the ‘294 Patent.

The Patent Holder took the position that the term “3-D” was to be accorded a special meaning. In this regard, the Patent Holder claimed that at the time of filing the Applicant was being their own lexicographer MPEP 2111.01 (IV). In support of this assertion, the Patent Holder presented declaration evidence from persons skilled in the art that identified the meaning of “3-D,” in the context of the ‘294 Patent, as defining stereoscopic 3-D.

The BPAI rejected the Patent Holder definition and declaration evidence as inconsistent with the specification.

Since the Board found that “3-D” was not limited to only stereoscopic 3-D as advanced by the Patent Holder, the majority refused to provide an explicit plain meaning construction of 3-D. Instead the majority explained that by advancing the special (i.e., Applicant being their own lexicographer) definition, the Patent Holder did not dispute the plain meaning of “3-D”, and had therefore waived any right to dispute plain meaning. (citing Ex Parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)). As a result, the claim term “3-D” was defined inferentially, that is to say the term was identified as being broader than the Patent Holder’s asserted definition, thus met by the art of record.

Yet, can such a fundamental exercise as a plain meaning claim construction be waived, especially for an expired patent that must follow the Papst-Motoren claim interpretation standard to preserve validity? 

Interestingly, the dissenting APJ posed the exact questions, arguing:


Without such a “plain meaning,” it is not clear how a claim can be pronounced to be unpatentable; i.e., a claim scope must be proffered in order to determine whether the prior art falls within. By determining that [the art] teach or suggest “three dimensional images,” the majority has defined the term by proxy, but not explicitly. Even if the majority is correct, and Appellant would not be satisfied with our definition of “three dimensional,” I do not believe that absolves us of the responsibility.

If the term “3D image[s]” is interpreted as any 2D image that contains elements that indicate depth, then almost all photographs would have to be 3D, even though they are planar.  . . . .Such a definition of “3D images” would have that claim term read upon almost every 2D image, thus rendering the claims as providing almost no utility, i.e. converting 2D image frames into 2D image frames.      .           .           .           .           .

While 3D images may be hard to define, that does not relieve us of the burden of determining the proper scope for such a claim term. Interpreted by one of ordinary skill in the art, I do not find that “3D” would have the scope being proffered by the majority. [Decision at page 85]

The majority opinion attempts to dismiss the concerns of the dissent, explaining:


The dissenting opinion reasons that the implied definition of “three dimensional” espoused by the majority opinion embraces all types of two dimensional objects such as paintings in museums. The implied definition, carefully circumscribed based on claim construction precedent and the arguments and evidence of record, is not so broad. The implied definition limits three-dimensional images to those produced by known two dimensional to three-dimensional frame conversion techniques. . . .

There may be any number of reasons why Appellant does not propose the definition advanced by the dissenting opinion. In any event, the Federal Circuit has indicated that the PTO does not have the duty espoused by the dissenting opinion; i.e., the duty to define terms in a precise fashion so as to avoid the unintended consequences of capturing certain prior art: “We decline the attempt to harmonize the applicant’s interpretation with the application and prior art. Such an approach puts the burden in the wrong place. It is the applicant’s burden to precisely define the invention, not the PTO’s.” In re Morris, 127 F.3d at 1056 (emphasis added).

While there is no doubt that the Morris rationale partially relies on policy advanced by pre-issuance claim construction rules, see In re Morris, 127 F.3d at 1054, portions of the rationale also apply to the more restrictive situation involved here, the reexamination of an expired patent. That is, underlying Morris is the notion that a definition that survives examination scrutiny and which was advanced after careful consideration by an applicant, whether it be during the initial examination or reexamination, produces a distinctly claimed invention which serves the public notice function. See id. at 127 F.3d at 1056. Under the dissenting opinion approach of creating unrequested and un-examined definitions, the public notice function would be ill-served as the approach would cast a cloud over the meaning of claim terms in patents yet to be reexamined. (emphasis added) [Decision at pages 80-82]

It is unclear to me how an implied definition can be arrived at based on purported claim construction precedent, evidence of record or arguments. Expired patents are interpreted in accordance with Phillips v. AWH, justification for an implied definition appears nowhere in the case law, appeal record or MPEP. Instead, this indirect explanation appears to be a new claim construction creature based upon waiver. To be sure, the Board’s waiver theory makes perfect sense with respect to a failure of an Appellant to pursue separately appealable issues. On the other hand, waiver of a fundamental predicate of any appeal (i.e., claim construction), makes much less sense.

The majority emphasizes public notice in their reasoning for not providing a favorable construction to preserve validity, yet, fails to recognize that an implied definition clearly undermines public notice. Claim 25 stands confirmed, depending from rejected claim 1, now of unknown scope. In this regard, the implied definition significantly clouds the record. (as would also be the case if all claims fell, but claims existed in related applications/patents using the same term).

Further, whether or not an expired patent in reexamination is interpreted to preserve validity or not (Papst-Motoren) was not the focus of the dissent. Instead, the dissent simply pointed out that an explicit construction was required to reject a claim.

This will be an interesting one for the CAFC. One would not expect a reviewing court to take kindly to a policy tending to obfuscate the appeal record; likewise, the CAFC has yet to comment on Papst-Motoren.