Litigation Based Rationale Falls Flat Before USPTOAs the truism goes in patent litigation circles, “that which infringes if later, anticipates if earlier.” Yet, in the last patent reexamination decision of the Board of Patent Appeals & Interferences (BPAI) in 2010, the Board refused to adopt a proposed rejection in inter partes patent reexamination that was modeled on this very principle.In J.M. Smucker Company v. The Patent of Mac-Ray, Inc., (2010-011461 & 2010-011463) the Board affirmed the examiner’s refusal to adopt rejections proposed by the third party requester (i.e., Smucker) in requests for inter partes patent reexamination of Mack-Ray’s U.S Patents 7,314,328 and 7,325,994. The proposed rejections relied upon a prior art reference (Seaquist). Smucker argued that the embodiments of the Seaquist patent were virtually identical to the Smucker products (Nozzles for spreading jelly from squeeze bottles). In proposing the Seaquist rejections in their reexamination requests, Smucker cited a previously filed litigation complaint (Mack-Ray, Inc. v. The J.M.. Smucker Company, EDTX) that identified features of Smucker’s products in relation to the Mack-Ray patents. Smucker reasoned that since the earlier Seaquist reference covered their products, the complaint constituted an admission by Mack-Ray of anticipation.In rejecting Smucker’s rationale, the Board explained that patent reexamination does not work that way.As explained in previous posts, admission based theories are rarely of use in patent reexamination (See note 8). Yet this practice persists as requests for patent reexamination that are made concurrent with litigation are often written as much for the judge’s eyes than the PTO. Indeed, while Smucker’s inter partes requests were being considered a motion for stay was being pursued before the Texas court. However, in this case, there may have been another reason to present the Seaquist reference in a more “creative” manner.In an attempt to diffuse the Seaquist art, the Patent Owner employed a bold “first-to-file” strategy to undermine the use of this art by Smucker. Namely, knowing that ex parte patent reexamination presents the most favorable odds to a Patent Owner, a preemptive request for ex parte patent reexamination was filed by Mack-Ray based on Seaquist. In this way, any subsequent request for inter partes reexamination that was based on the Seaquist reference, like the ones eventually filed by Smucker, would need to present, a new non-cumulative SNQ. (past post on this strategy here). Interestingly, the Smucker’s requests were in fact initially denied as cumulative to the on-going ex parte reexaminations (reversed on petition, but a first action ACP refused to adopt the proposed rejections).In rejecting Smucker’s admission based theory, the Board rewarded Mack-Ray’s gamble, explaining:While the Patent Owner may have necessarily construed the asserted claims of the [Mack-Ray patents] in concluding that a particular commercialized dispenser infringes, claim construction is a matter of law. The fact that the Patent Owner may have construed the claims one way does not establish what the claims actually mean or that the advocated construction is correct as a matter of law. . . .The Appellant essentially requests us to make a factual finding that the commercialized dispenser is identical to that disclosed in [ Seaquist] with respect to the limitations at issue, based on general similarities of the dispenser and the drawings of [Seaquist], and without the Appellant specifying to the PTO and establishing through evidence, what the [Seaquist] shows with respect to the “key limitation.” We decline this request.Reexaminations are to be based on prior art patents or publications, not on devices such as the commercialized dispenser by Appellant. See §§ 301, 311. The Appellant’s request requires the PTO to examine the commercialized dispenser and conclude that the commercialized dispenser is the same as that shown in [Seaquist], that there are no additional features such as a convex curvature, and that the taper does not include some ancillary feature such as a curvature therein. It is not the PTO’s responsibility, nor does the PTO have the resources, to evaluate such factual matters.The Texas litigation related to these patents was dismissed without prejudice based upon a sealed filing. Yet, since Mack-Ray did not participate at all in the inter partes reexaminations (claims allowed in first action), those records will not provide any potentially damaging statements vis-a-vis the litigation. So, it will be interesting to see if the first litigation is re-started. While Smucker may ultimately be estopped from arguing the Seaquist reference as a basis for invalidity, physical product embodiments based on Seaquist may still be fair game. See ACCO Brands, Inc. v. PC Guardian Anti-Theft Products, Inc.3-04-cv-03526 (N.D. Cal., December 4, 2008)Finally, a second suit was filed against Smucker by Mack-Ray in July of 2010 based on another patent related to the same technology (7,645,08

As the truism goes in patent litigation circles, “that which infringes if later, anticipates if earlier.” Yet, in the last patent reexamination decision of the Board of Patent Appeals & Interferences (BPAI) in 2010, the Board refused to adopt a proposed rejection in inter partes patent reexamination that was modeled on this very principle.

In J.M. Smucker Company v. The Patent of Mac-Ray, Inc., (2010-011461 & 2010-011463) the Board affirmed the examiner’s refusal to adopt rejections proposed by the third party requester (i.e., Smucker) in requests for inter partes patent reexamination of Mack-Ray’s U.S Patents 7,314,328 and 7,325,994. The proposed rejections relied upon a prior art reference (Seaquist). Smucker argued that the embodiments of the Seaquist patent were virtually identical to the Smucker products (Nozzles for spreading jelly from squeeze bottles). In proposing the Seaquist rejections in their reexamination requests, Smucker cited a previously filed litigation complaint (Mack-Ray, Inc. v. The J.M.. Smucker Company, EDTX) that identified features of Smucker’s products in relation to the Mack-Ray patents. Smucker reasoned that since the earlier Seaquist reference covered their products, the complaint constituted an admission by Mack-Ray of anticipation.

In rejecting Smucker’s rationale, the Board explained that patent reexamination does not work that way.

As explained in previous posts, admission based theories are rarely of use in patent reexamination (See note 8). Yet this practice persists as requests for patent reexamination that are made concurrent with litigation are often written as much for the judge’s eyes than the PTO. Indeed, while Smucker’s inter partes requests were being considered a motion for stay was being pursued before the Texas court. However, in this case, there may have been another reason to present the Seaquist reference in a more “creative” manner.

In an attempt to diffuse the Seaquist art, the Patent Owner employed a bold “first-to-file” strategy to undermine the use of this art by Smucker. Namely, knowing that ex parte patent reexamination presents the most favorable odds to a Patent Owner, a preemptive request for ex parte patent reexamination was filed by Mack-Ray based on Seaquist. In this way, any subsequent request for inter partes reexamination that was based on the Seaquist reference, like the ones eventually filed by Smucker, would need to present, a new non-cumulative SNQ. (past post on this strategy here). Interestingly, the Smucker’s requests were in fact initially denied as cumulative to the on-going ex parte reexaminations (reversed on petition, but a first action ACP refused to adopt the proposed rejections).

In rejecting Smucker’s admission based theory, the Board rewarded Mack-Ray’s gamble, explaining:

While the Patent Owner may have necessarily construed the asserted claims of the [Mack-Ray patents] in concluding that a particular commercialized dispenser infringes, claim construction is a matter of law. The fact that the Patent Owner may have construed the claims one way does not establish what the claims actually mean or that the advocated construction is correct as a matter of law. . . .

The Appellant essentially requests us to make a factual finding that the commercialized dispenser is identical to that disclosed in [ Seaquist] with respect to the limitations at issue, based on general similarities of the dispenser and the drawings of [Seaquist], and without the Appellant specifying to the PTO and establishing through evidence, what the [Seaquist] shows with respect to the “key limitation.” We decline this request.

Reexaminations are to be based on prior art patents or publications, not on devices such as the commercialized dispenser by Appellant. See §§ 301, 311. The Appellant’s request requires the PTO to examine the commercialized dispenser and conclude that the commercialized dispenser is the same as that shown in [Seaquist], that there are no additional features such as a convex curvature, and that the taper does not include some ancillary feature such as a curvature therein. It is not the PTO’s responsibility, nor does the PTO have the resources, to evaluate such factual matters.

The Texas litigation related to these patents was dismissed without prejudice based upon a sealed filing. Yet, since Mack-Ray did not participate at all in the inter partes reexaminations (claims allowed in first action), those records will not provide any potentially damaging statements vis-a-vis the litigation. So, it will be interesting to see if the first litigation is re-started. While Smucker may ultimately be estopped from arguing the Seaquist reference as a basis for invalidity, physical product embodiments based on Seaquist may still be fair game. See ACCO Brands, Inc. v. PC Guardian Anti-Theft Products, Inc.3-04-cv-03526 (N.D. Cal., December 4, 2008)

Finally, a second suit was filed against Smucker by Mack-Ray in July of 2010 based on another patent related to the same technology (7,645,085).