Ex Parte 7,483,856 et al

Patent Trial and Appeal Board

May 9, 2018

95001594 (P.T.A.B. May. 9, 2018)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,594 04/01/2011 7,483,856 9027.136.IP856 8630
7590 05/09/2018
GEORGE LIKOUREZOS, ESQ.
261 WASHINGTON AVE.
ST. JAMES, NY 11780
EXAMINER
KE, PENG
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
05/09/2018 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

EBAY, INC.,
Requester and Respondent,

v.

XPRT VENTURES, LLC.,
Patent Owner and Appellant.
____________

Appeal 2015-004981
Reexamination Control No. 95/001,594
United States Patent 7,483,856 B1
Technology Center 3900
____________

Before KEVIN F. TURNER, WILLIAM V. SAINDON, and
JENNIFER L. McKEOWN, Administrative Patent Judges.

McKEOWN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

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Patent Owner requests rehearing of our Decision (“Dec.”), where we
affirmed the Examiner’s decision to reject claims 1–7 in the above-identified
inter partes reexamination. Request for Rehearing (“Req. Reh’g”). For the
reasons noted below, we deny the request.

ANALYSIS
In the Rehearing Request, Patent Owner contends
the PTAB erred for stating that the PO cannot change the scope
of the claim terms through affirmative claim scope disavowals in
the underlying inter partes reexamination. According to case
law and prosecution practice, a patentee is permitted to disavow
or limit the claim scope during original prosecution and
reexamination proceedings. That is, claim scope disavowals are
arguments that can be presented by a PO in original prosecution
and reexamination proceedings.
Req. Reh’g 4. Patent Owner particularly points to cases, such as Grober v.
Mako Products, Inc., 686 F.3d 1335 (Fed. Cir. 2012) and Krippelz v. Ford
Motor Company, 667 F.3d 1261 (Fed. Cir. 2012), to assert that affirmatively
disavowing claim scope should be permitted during this ongoing
examination proceeding. See Req. Reh’g 4–5.
We disagree that a patent owner can make a statement in an
examination proceeding and invoke prosecution history disclaimer based on
that statement in the same proceeding. Patent Owner misapprehends the
case law in its attempt to use the doctrine of prosecution history disclaimer.
The Federal Circuit in Grober and Krippelz, as well as in the additionally
cited cases Omega Engineering, Inc. v. Raytek Corp., 334 F.3d 1314 (Fed.
Cir. 2003), Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir.
2015), and Golden Bridge Technology v. Apple, Inc., 758 F.3d 1362 (Fed.
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Cir. 2014), applied the doctrine of prosecution history disclaimer during its
claim construction analyses when considering statements an applicant or
patent owner made in a previous examination record. In other words, the
Federal Circuit, in each case, considered statements made in an earlier
separate examination proceeding, not statements disavowing claim scope
made during the course of that same appeal. See Grober, 686 F.3d at 1341–
3 (considering, in an appeal from the Central District of California,
statements made in a prior reexamination); Krippelz, 667 F.3d at 1266
(noting, in an appeal from the Northern District of Illinois, that statements
made during reexamination can be considered during claim construction
under the doctrine of prosecution disclaimer); Omega Eng’g, Inc., 334 F.3d
at 1323 (stating, in an appeal from the District of Connecticut, that the
doctrine of prosecution disclaimer precludes patentees from recapturing
through claim interpretation specific meanings disclaimed during earlier
prosecution); Microsoft Corp., 789 F.3d at 1298 (explaining, in an appeal
from an inter partes review, that “the PTO should also consult the patent’s
prosecution history in proceedings in which the patent has been brought
back to the agency for a second review”); Golden Bridge Tech., 758 F.3d at
1366 (concluding, in an appeal from the District of Delaware, that
submission of a stipulated construction from a separate litigation during
reexamination constituted waiver). These Federal Circuit cases, thus, do not
support Patent Owner’s assertion that a patent owner (or applicant) may use
affirmative disavowals during examination to limit or modify the scope of
the claims within the same ongoing proceeding.
Rather, the appropriate method to modify the scope of the claims
during examination is by amending the claims. This process ensures that the
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public is properly notified of the scope of the claims. See In re Packard, 751
F.3d 1307, 1313 (Fed. Cir. 2014) (citations omitted) (explaining that “[i]t is
the claims that notify the public of what is within the protections of the
patent, and what is not,” and further discussing the heightened duty of the
agency to issue clear and precise claims in the face of potential ambiguity in
claim scope).
Patent Owner here, as discussed in the Decision, attempts to use claim
disavowals to circumvent the requirement to amend the claims.1 The
Federal Circuit addressed this issue in Marine Polymer Technologies, Inc. v.
HemCon, Inc., 672 F.3d 1350 (Fed. Cir. 2012). In particular, the Federal
Circuit stated:
HemCon [] expresses concern that excluding its concept of
amendment by argument from the ambit of § 307(b) would
“create a significant loophole” in the intervening rights
defense—shrewd patentees would simply opt to rely on
arguments rather than amendments to effectively change, and
thereby preserve, otherwise invalid claims during reexamination
without engendering intervening rights against those claims.

We believe that is highly unlikely. If, in reexamination, an
examiner determines that particular claims are invalid and need
amendment to be allowable, one would expect an examiner to
require amendment rather than accept argument alone. Indeed,
Congress may well have expected that changes in claim scope
during reexamination would ordinarily be made by amendment,
which would avoid the risk of creating a loophole in the
intervening rights defense.

1 Patent Owner admits to taking “a calculated risk [in] not amend[ing] its
independent claims following the non-final action.” Req. Reh’g 9.
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Marine Polymer, 672 F.3d at 1364 (emphases added). As such, the Federal
Circuit highlighted that amending the claims, not presenting affirmative
claim disavowals, is the proper method for changing the scope of the claims
during ongoing examination before the Patent Office.
Patent Owner also asserts, incorrectly, that the Marine Polymer
decision rested on arguments made during examination to narrow the scope
of the claims. Req. Reh’g 7–8. To the contrary, the Federal Circuit, in
affirming the district court’s claim construction, did not consider any alleged
narrowing arguments or claim scope disavowals presented during
reexamination and, instead, focused on claim differentiation. Id. at 1359.
Further, the Federal Circuit discussed the distinction between amendments
versus arguments to modify claim scope in the context of intervening rights,
not claim construction. Therefore, Patent Owner’s assertions that Marine
Polymer somehow supports claim disavowals as the appropriate method for
modifying claim scope during ongoing examination are unavailing.
Patent Owner’s reliance on Saffran v. Johnson & Johnson, 712 F.3d
549 (Fed. Cir. 2013), is similarly misplaced. Specifically, Patent Owner
states:
To be sure, a prosecution disclaimer requires 'clear and
unambiguous disavowal of claim scope.' Storage Tech. Corp. v.
Cisco Sys., Inc., 329 F.3d 823, 833 (Fed. Circ. 2003), but
applicants rarely submit affirmative disclaimers along the lines
of 'I hereby disclaim the following ... " [sic] during prosecution
and need not do so to meet the applicable standard. (Emphasis
added)[.]
Req. Reh’g 5 (quoting Saffran, 712 F.3d at 559). The Federal Circuit’s
opinion, however, addressed the level of clarity required for prosecution
disclaimer or, in other words, whether the disavowal statements make it
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clear that the patent owner desired to disavow some scope of the claim. This
has no bearing on the issue in the present case: whether a patent owner may
use affirmative claim scope disavowal, instead of amendment, to modify the
claim during an ongoing examination proceeding before the Patent Office.
As such, we find Patent Owner’s argument unpersuasive.
For the reasons discussed above and in the Decision, we are not
persuaded that the Decision erred in rejecting Patent Owner’s arguments.
We deny Patent Owner’s request for rehearing.

DENIED