Conversant Wireless Licensing S.a.r.l.

Patent Trials and Appeals Board

May 15, 2020

13762594 - (D) (P.T.A.B. May. 15, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/762,594 02/08/2013 Jussi KUISMA 29771-US-REI 1126
100809 7590 05/15/2020
Conversant Wireless Licensing Ltd.
5830 Granite Parkway #100-247
Suite 247
Plano, TX 75024
EXAMINER
CRAVER, CHARLES R
ART UNIT PAPER NUMBER
3992
NOTIFICATION DATE DELIVERY MODE
05/15/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ipadmin-core@conversant-wireless.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUSSI KUISMA and SISKO PIHLAJAMAKI
Appeal 2020-001874
Application 13/762,594
Patent 7,886,007 B2
Technology Center 3900
Before ALLEN R. MacDONALD, JOHN A. JEFFERY, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting reissue claims 1–20, which are all of the claims pending in
this reissue application. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Conversant Wireless Licensing S.a r.l.
as the real party in interest. Appeal Br. 3.
Appeal 2020-001874
Application 13/762,594
U.S. Patent No. 7,886,007 B2

2
TECHNOLOGY
The application relates to transmitting multimedia messages between
a multimedia messaging center and a terminal, including notification
messages. Spec. Abstract.
ILLUSTRATIVE CLAIMS
Issued claim 1 of U.S. Patent No. 7,886,007 B2 (“the ’007 Patent”) is
reproduced below with emphasis added to show the differences from reissue
claim 1 as initially filed:
1. A method comprising:
transmitting a first message wirelessly to a multimedia
messaging centre, the first message requesting the multimedia
messaging centre to transmit a notification message to a terminal
only for multimedia messages addressed to the terminal that have
arrived at the multimedia messaging centre and for which the
terminal has not received a notification message yet, and only for
multimedia messages for which a notification message has been
sent and an acknowledgement message from the terminal has not
yet been received by the multimedia messaging center, wherein
said first message comprises an option to define a selection
criterion so as to limit information to be sent in response to said
first message; and
sending the notification message to the terminal, wherein
the notification message is a message to which a response is sent
from the terminal for receiving the actual multimedia message.

In this reissue application, Appellant sought to change “sending . . .
to” to be “receiving . . . at.” Reissue claim 1 as initially filed is reproduced
below emphasizing this as the only difference from issued claim 1:
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U.S. Patent No. 7,886,007 B2

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1. A method comprising:
transmitting a first message wirelessly to a multimedia
messaging centre, the first message requesting the multimedia
messaging centre to transmit a notification message to a terminal
only for multimedia messages addressed to the terminal that have
arrived at the multimedia messaging centre and for which the
terminal has not received a notification message yet, and only for
multimedia messages for which a notification message has been
sent and an acknowledgement message from the terminal has not
yet been received by the multimedia messaging center, wherein
said first message comprises an option to define a selection
criterion so as to limit information to be sent in response to said
first message; and
receiving the notification message at the terminal, wherein
the notification message is a message to which a response is sent
from the terminal for receiving the actual multimedia message.
REJECTION
Reissue claims 1–20 stand rejected under 35 U.S.C. § 251 as being
broadened in a reissue application filed outside the two year statutory period.
Final Act. 4.
ANALYSIS
The issues before us are (1) whether reissue claim 1 as initially filed
was broader than the issued patent, in particular issued claims 1 and 16 and
(2) if so, whether presenting a broadened reissue claim with no further
express statement about broadening constitutes an unequivocal indication of
intent to broaden.
Appeal 2020-001874
Application 13/762,594
U.S. Patent No. 7,886,007 B2

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Background of the Law & Facts
By statute, “[n]o reissued patent shall be granted enlarging the scope
of the claims of the original patent unless applied for within two years from
the grant of the original patent.” 35 U.S.C. § 251(d) (emphasis added).
According to the Manual of Patent Examining Procedure (9th ed. Rev.
08.2017, Jan. 2018) (“MPEP”), “[a] reissue application filed on the 2-year
anniversary date from the patent grant is considered to be filed within 2
years of the patent grant.” MPEP § 1412.03(IV) (citing Switzer v. Sockman,
333 F.2d 935, 937–38 (CCPA 1964) for a similar rule in interferences).
Here, Appellant filed the reissue application on February 8, 2013, exactly
two years after the grant of the patent on February 8, 2011. Thus, the MPEP
treats Appellant’s reissue application as “within two years from the grant of
the original patent.”
In addition to filing a reissue application within the two-year period,
the Federal Circuit has held that the applicant must provide some kind of
notice within that same time period that the reissue is broadening. In re
Graff, 111 F.3d 874, 877 (Fed. Cir. 1997) (“the reissue statute requires that
proposals to broaden a patented invention must be brought to public notice
within two years of patent issuance”). In Graff, the Federal Circuit rejected
an applicant’s argument that § 251 “requires only that a reissue application
was on file before the two years had elapsed” and that it therefore was
“irrelevant” that his “broadened claims were first filed more than two years
after patent grant.” Id. Instead, the Federal Circuit held that “[t]he
interested public is entitled to rely on the absence of a broadening reissue
application within two years of grant of the original patent.” Id.
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The MPEP expands on this notice: “Where any intent to broaden is
unequivocally indicated in the reissue application within the two years from
the patent grant, a broadened claim can subsequently be presented in the
reissue after the two year period.” MPEP § 1412.03(IV); see also In re
Staats, 671 F.3d 1350, 1356–57 (Fed. Cir. 2012) (O’Malley, J., concurring)
(“Consistent with § 251’s language and legislative history, all PTO
governing rules and regulations have—for decades—made clear that any
timely intent to broaden via reissue permits subsequent attempts to broaden
via continuation practice authorized under Title 35.”). Often, this intent is
indicated in an inventor’s oath or declaration. See 37 C.F.R. § 1.175(b) (“If
the reissue application seeks to enlarge the scope of the claims of the patent
(a basis for the reissue is the patentee claiming less than the patentee had the
right to claim in the patent), the inventor’s oath or declaration for a reissue
application must identify a claim that the application seeks to broaden.”).
Here, there is no dispute that the reissue claims were broadened by
later amendments (i.e., more than two years after the patent issued). See
Ans. 3–4, 6. The only dispute is whether Appellant provided sufficient
notice of intent to broaden within two years of the patent’s issuance.
Appellant’s substitute statements in lieu of an oath or declaration from
the inventors do unequivocally express an intent for broadening, but those
statements were not submitted until August 7, 2013, which was more than
two years after the patent issued. Unlike those statements, Appellant’s
initial filing on February 8, 2013, did not expressly say the reissue
application was broadening. The Examiner therefore rejected all claims for
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broadening in a reissue application outside the two-year statutory period.
Final Act. 4.
Appellant argues that reissue claim 1 (as initially filed) was broader
than issued claim 1. Appeal Br. 8–11. Appellant further contends that if the
change to claim 1 “is considered a broadening amendment, this amendment
indicates an unequivocal intent to broaden.” Reply Br. 3.
Whether Reissue Claim 1 (As Initially Filed)
Is Broader Than Issued Claim 1
The Examiner determines that reissue claim 1 (as initially filed) is
actually narrower than issued claim 1, not broader. Ans. 6. In particular,
reissue claim 1 (as initially filed) is exactly the same as issued claim 1
except for replacing “sending the notification message to the terminal” with
“receiving the notification message at the terminal.” See Amendment 3
(Feb. 8, 2013). The Examiner explains that “sending a message does not
require that the message actually be properly received,” whereas “receiving”
requires that the message was both sent and received, and therefore
“receiving” is narrower than “sending.” Ans. 6.
From a purely scientific perspective, the Examiner may well be right
that if every step in reissue claim 1 (as initially filed) is performed, then
every step in issued claim 1 also would be performed by someone
somewhere. However, we agree with Appellant that the Examiner is not
applying the proper test for broadening. The Federal Circuit has set forth the
test for broadening as follows:
A claim of a reissue application is broader in scope than the
original claims if it contains within its scope any conceivable
apparatus or process which would not have infringed the original
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patent. A reissue claim that is broader in any respect is
considered to be broader than the original claims even though it
may be narrower in other respects.
Medtronic, Inc. v. Guidant Corp., 465 F.3d 1360, 1374 (Fed. Cir. 2006)
(quotation omitted). Thus, we must look to whether there is any process
which would not have infringed issued claim 1 that would infringe reissue
claim 1 (as initially filed).
Applying this infringement test, we agree with Appellant that the
change from “sending” to “receiving” can substantively change the
infringement analysis. Appeal Br. 9–11; Reply Br. 4–6. For example, direct
infringement requires acts “within the United States.” 35 U.S.C. § 271(a).
More specifically, “a process cannot be used ‘within’ the United States as
required by section 271(a) unless each of the steps is performed within this
country.” NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1318 (Fed.
Cir. 2005). Applying this to the claims here, if the recipient was in the
United States but the sender was not, then issued claim 1 would not be
directly infringed because the “sending” step was not performed “within the
United States.” However, reissue claim 1 (as initially filed) would be
directly infringed because the “receiving” step was “within the United
States.” Thus, even though the two claims likely would involve the same
underlying acts (i.e., sending and receiving), the reissue claim, by changing
the perspective of the actor, can change not only who directly infringes, but
also whether direct infringement occurs. See also MPEP § 1412.03(I) (“A
claim would be considered a broadening claim if the patent owner would be
able to sue any party for infringement who previously could not have been
sued for infringement.”).
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Because reissue claim 1 (as initially filed) contains within its scope a
conceivable process which would not have directly infringed issued claim 1,
reissue claim 1 (as initially filed) is broader than issued claim 1.
Whether Reissue Claim 1 (As Initially Filed)
Is Broader Than Issued Claim 16
The Examiner determines that even if reissue claim 1 (as initially
filed) was broader in scope than issued claim 1, it still was not “broader in
scope than the broadest issued claim, e.g. claim 16.” Ans. 8. We agree with
the Examiner that “a claim is not a broadened reissue claim if it is narrower
than, or equal in scope to, any other claim which appears in the patent.” Id.
As the MPEP states, “[a] broadened reissue claim is a claim which enlarges
the scope of the claims of the patent, i.e., a claim which is greater in scope
than each and every claim of the original patent.” MPEP § 1412.03(I)
(emphasis added). Nevertheless, we agree with Appellant that reissue claim
1 (as initially filed) is broader than issued claim 16. See Appeal Br. 10.
Issued claim 16 is reproduced below with emphasis added:
16. A system comprising:
means for transmitting a first message, wirelessly from a
terminal to a multimedia messaging centre, the first message
requesting the multimedia messaging centre to transmit a
notification message to the terminal only for multimedia
messages addressed to the terminal that have arrived at the
multimedia messaging centre, and for which the terminal has not
received a notification message yet and only for multimedia
messages for which a notification message has been sent but for
which an acknowledgement has not yet been received in the
multimedia messaging centre, wherein said first message
comprises an option to define a selection criterion so as to limit
information to be sent in response to said first message and the
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notification message is a message to which a response is sent
from the terminal for receiving the actual multimedia message.
As can be seen, issued claim 16 is a system claim whereas reissue
claim 1 (as initially filed) was a method claim. Although exceptions do
exist, such as certain situations involving a claimed process to make a
claimed system, generally a process and a system are both “broader” than
each other in that each contains within its scope at least one conceivable
apparatus or process which would not be within the scope of the other. The
MPEP recognizes this in stating, “where the original patent claims only the
process, and the reissue application newly adds product claims, the scope of
the claims has been broadened because a party could not necessarily be sued
for infringement of the product based on the claims of the original patent (if
it were made by a different process).” MPEP § 1412.03(I). For example, a
system claim can infringe even if the system is never used (i.e., the process
is never performed). Conversely, a process claim often does not recite or
require all the components of the claimed system (e.g., the claimed “means
for” in issued claim 16 is not in reissue claim 1).
Here, the differences between the process claim (reissue claim 1 as
initially filed) and the system claim (issued claim 16) are even more stark
because issued claim 16 is written in a means-plus-function format. By
statute, a means-plus-function limitation is limited to the corresponding
structure described in the specification. See 35 U.S.C. § 112, para. 6. Yet
the Examiner here has provided no analysis how reissue claim 1 (as initially
filed) was narrower than the structure disclosed for the means-plus-function
limitation in issued claim 16. To the contrary, during prosecution of the
reissue application, the Examiner determined that the Specification did not
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disclose sufficient structure, Final Act. 4–5 (Dec. 4, 2014), and if that is true,
then nothing could infringe issued claim 16 and the reissue claim certainly is
broader than nothing. Moreover, we note that issued claim 16 appears to be
written as a “single means claim,” which is impermissible by statute. In re
Hyatt, 708 F.2d 712, 714 (Fed. Cir. 1983) (discussing “[t]he proper statutory
basis for the rejection of a single means claim”); 35 U.S.C. § 112, para. 6
(“An element in a claim for a combination may be expressed as a means
. . . .” (emphasis added)). Thus, in addition to the usual fundamental
differences in infringement of process claims as opposed to system claims,
issued claim 16 presents further concerns confirming that reissue claim 1 (as
initially filed) was broader.
Therefore, reissue claim 1 (as initially filed) was broader than the
claims in the issued patent, including issued claims 1 and 16.
Whether a Broadened Claim Provides Sufficient Notice of Broadening
The next question we must address is whether a broadened claim in a
reissue application, without more, is sufficient to unequivocally indicate
intent to broaden. The MPEP notes that a “statement that ‘the patent is
wholly or partly inoperative by reason of claiming more or less than
applicant had a right to claim’ is NOT an unequivocal statement of an intent
to broaden.” MPEP § 1412.03(IV). This may be because the phrase “more
or less” lacks clarity as to whether the claims are broader or narrower. In
contrast, the Federal Circuit has held that clear changes to the claim in
addition to an inventor’s declaration that the applicant claimed “less than we
had a right to” were sufficient notice of broadening. MBO Labs., Inc. v.
Becton, Dickinson & Co., 474 F.3d 1323, 1332 (Fed. Cir. 2007).
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The Federal Circuit, precedential PTAB panels, and the MPEP do not
appear to have addressed whether submitting a broadened claim alone is
itself an indication of intent to broaden. However, in line with MBO
Laboratories, we hold that it is. When (1) a reissue claim is submitted
within two years of the patent’s issuance, (2) the reissue claim is broader
than the issued patent, and (3) the subsequent prosecution history confirms
the applicant’s intent to broaden, even if such prosecution history occurs
more than two years after the patent’s issuance, an applicant has provided
sufficient and timely notice of intent to broaden. See also 37 C.F.R. § 1.175
(stating that “the inventor’s oath or declaration . . . must identify a claim that
the application seeks to broaden” but not putting any time limit to do so).
The public has access to reissue claims just as much as it has access to
inventor’s oaths or declarations, and therefore the same public notice
function is served in the same way. That said, to avoid lengthy disputes
such as this one over whether reissue claims as initially filed were broader
than the issued claims, obviously it may still be in applicants’ and the
public’s best interest to make a clear and unambiguous statement of intent to
broaden within the two-year time period, such as in a timely-filed inventor’s
oath.
Here, reissue claim 1 was initially filed within two years of the
patent’s issuance and is broader than the issued claims, and the subsequent
substitute statement in lieu of the inventors’ oaths or declarations confirmed
Appellant’s intent to broaden. Therefore, reissue claim 1 (as initially filed)
provided sufficient notice of broadening.
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Accordingly, we do not sustain the Examiner’s rejection of reissue
claims 1–20.
DECISION
The following table summarizes the outcome of each rejection:
Claims
Rejected
35
U.S.C. Basis Affirmed Reversed
1–20 § 251 Broadening reissue 1–20
REVERSED