CAFC: Prior Art Recycling Permitted For Reexamination

In Re Swanson, September 4, 2008 (07-1534)

In 1997, the CAFC decided In re Portola Packaging, holding that “prior art previously considered by the PTO in relation to the same or broader claims" would preclude reexamination requests on the same art.

In 2002 Congress amended § 303(a) to include an additional sentence, explaining that the amendment “overturns the holding of In re Portola Packaging" and that "[t]he existence of a substantial new question of patentability is not precluded by the fact that a patent or printed publication was previously cited by or to the Office or considered by the Office."

Swanson's (aka Abbott's) Case: Abbott Laboratories (“Abbott”) licensed Swanson's patent, and sued Syntron Bioresearch, Inc. for infringement. Syntron countered that Swanson's patent was invalid, and cited prior art that included a reference ("Deutsch") that was considered by the PTO during the original prosecution.

The district court held the patent was not invalid based on the prior art. Syntron appealed. The CAFC agreed with the district court and held that Swanson's patent was not invalid. Syntron then went to the PTO with the same art seeking reexamination. Despite the fact that (1) the prior art was previously considered in the PTO, (2) the district court considered the same art, and (3) the CAFC agreed with the district court, the PTO nevertheless found a "substantial new question of patentability" under § 303, and subsequently invalidated the patent.

On appeal, the CAFC agreed that, despite the court proceedings dealing with the same issues, the PTO had the right to institute reexamination proceedings anyways:

The the statutory language, legislative history, and different purposes underlying reexamination and federal court proceedings suggest that the determination of a substantial new question is unaffected by these court decisions . . . the legislative history for both the original and amended reexamination statute suggest that Congress was concerned only with the consideration of issues in prior PTO examinations, not prior civil litigation . . . Not once in the legislative history did Congress refer to references or issues addressed in prior civil litigation.

* * *

Section 303’s language and legislative history, as well as the differences between the two proceedings, lead us to conclude that Congress did not intend a prior court judgment upholding the validity of a claim to prevent the PTO from finding a substantial new question of validity regarding an issue that has never been considered by the PTO. To hold otherwise would allow a civil litigant’s failure to overcome the statutory presumption of validity to thwart Congress’ purpose of allowing for a reexamination procedure to correct examiner errors, without which the presumption of validity never would have arisen.

With regard to art before the PTO:

Section 303(a) now mandates that “the existence of a substantial new question of patentability is not precluded by the fact that a patent or printed publication was previously cited by or to the Office or considered by the Office.” Thus, under § 303(a) as amended, a reference may present a substantial new question even if the examiner considered or cited a reference for one purpose in earlier proceedings. Nothing in the statute creates an exception to this rule for references considered in the context of a rejection of prior claims. Indeed, such an exception would overwhelm the rule and thwart a central purpose of the amendment, to overrule In re Portola Packaging.

[T]he 2002 amendment removes the focus of the new question inquiry from whether the reference was previously considered, and returns it to whether the particular question of patentability presented by the reference in reexamination was previously evaluated by the PTO. As was true before the amendment, an “argument already decided by the Office, whether during the original examination or an earlier reexamination” cannot raise a new question of patentability.

* * *

Determining the scope of an examiner’s previous consideration of a reference will generally require an analysis of the record of the prior proceedings to determine if and how the examiner used the reference in making his initial decisions. As we believe that this inquiry is most accurately viewed as a question of fact, we will review the Board’s findings regarding the scope of consideration of a reference during prior examinations for substantial evidence.

AFFIRMED

USPTO: Reexaminations May Not Be "Specially Expedited"

Reexamination Control No. 90/008,972: After a Reexamination Request was granted on US Patent 5,253,341, the patentee filed a petition to suspend the rules under 37 C.F.R. 1.183 so that the reexamination proceedings would be handled on a "specially expedited basis" in light of concurrent litigation, and in light of the fact that an earlier reexamination on the same patent took seven years. While recognizing that 35 U.S.C. section 305 authorizes all reexamination proceedings to be conducted "with special dispatch," the Office noted that "The Office does not treat ex parte reexamination proceedings on a 'specially expedited basis.'"

From the PTO:

Although the petitioner patent owner points out that this is a reexamination proceeding having concurrent litigation, the Office does not take a reexamination proceeding out of tum based solely on the existence of concurrent litigation. Current statistics (through December 31, 2007) show that 26% of the ex parte reexamination requests filed and 52% of the inter partes reexamination requests filed involved patents that were also subject to litigation. Thus, it does not appear that the existence of concurrent litigation involving a patent for which reexamination has been requested presents an extraordinary situation. In addition, although the petitioner patent owner states that the first reexamination proceeding took more than seven years to conclude, the '972 reexamination stands on its own merits and will be conducted with special dispatch within the Office.

It is to be noted that to treat a given ex parte reexamination proceeding on a "specially expedited basis," e.g., ahead of other ex parte reexamination proceedings filed earlier than that given ex parte reexamination, (and potentially ahead of other prior filed inter partes reexamination proceedings as well) , would be to relegate some of the prior filed reexamination proceedings to an inferior status in derogation of the statutory mandate that such proceedings be conducted with special dispatch within the Office. It is further to be noted that the '972 reexamination proceeding is not the only reexamination proceeding pending in the Office that is the subject of one or more litigation proceedings.

Nevertheless, the PTO provided the patentee with an alternative, in case the reexamination proceeding took too long:

If, during subsequent prosecution of the '972 reexamination proceeding, petitioner patent owner feels that prosecution is being inordinately delayed, a petition under 37 CFR 1.181 directed to the Director of the Central Reexamination Unit requesting the exercise of supervisory authority would be the appropriate vehicle to address the situation on an as-needed basis in each individual instance. Waiver of the rules would not be necessary.

Download a copy of the PTO decision here (link).

CAFC: Notice Must Be Provided For JMOL When Factual Disputes Exist

Southwestern Bell Telephone Co. v. Arthus A. Collins, Inc. (2007-1577), May 27, 2008 (nonprecedential)

After a pretrial hearing, both parties briefed the district court on issues of prosecution history estoppel. The next day, in a telephone conference, the district court granted Southwestern Bell's motion in limine on prosecution history estoppel and also granted JMOL that one of the claim limitations ("randomly receive") was not literally present in the accused device. On appeal, Collins argued that the district court improperly ruled on noninfringement when it resolved the motion in limine on the limited issue of prosecution history estoppel.

The CAFC agreed with Collins:

The district court’s ruling cannot properly be considered one for judgment as a matter of law under Rule 50. Rule 50 only applies when a "party has been fully heard on an issue and there is no legally sufficient evidentiary basis for a reasonable jury to find for that party on that issue." . . . When the district court granted judgment "as a matter of law," trial had not even begun in this case. Collins had not been fully heard on the issue of the literal presence of the "randomly receive" limitation in the accused combination.

[I]n the Fifth Circuit, Rule 56(c) requires ten days notice to a non-moving party, even when summary judgment is granted sua sponte . . . This ten-day requirement is intended to allow the non-moving party "to make every possible factual and legal argument." . . . Collins did not receive ten days to make every possible factual and legal argument with respect to whether the accused combination literally satisfies the "randomly receive" limitation in claims 1-3 of the ’589 patent.

Prosecution History Estoppel - during prosecution, Collins stated in the record that amendments were made "to more particularly define the present invention and distinguish over the '621 reference." The CAFC noted that "[a]n amendment is directly, and not tangentially, related to patentability when an applicant’s narrowing additions to a claim along with an applicant’s own statements in the prosecution history indicate that the amendment was made to distinguish over a reference."

Reexamination for Improper Purpose - during reexamination of one of the patents-in-suit, Collins stated that additional amendments were made "to preclude any interpretation of the claims in accordance with the district court’s opinions . . . in the litigation with Nortel."

Under 35 U.S.C. § 305, a patent owner may propose an amendment to its patent to distinguish the claimed invention from the prior art or to respond to an adverse decision as to the patentability of one of the claims. Claim amendments during reexamination are limited to amendment in light of prior art raising a substantial new question of patentability. In this case, "Collins cannot use reexamination for the purpose of amending its claims to address an adverse claim construction . . . We therefore affirm the grant of summary judgment that claims 4-14 of the ’589 patent are invalid."