Ex Parte 7,483,856 et alDownload PDFPatent Trial and Appeal BoardMay 29, 201595001594 (P.T.A.B. May. 29, 2015) Copy Citation 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 Appeal 2015-004981 Reexamination Control No. 95/001,594 Patent US 7,483,856 B2 2 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. Appeal 2015-004981 Reexamination Control No. 95/001,594 Patent US 7,483,856 B2 3 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 Appeal 2015-004981 Reexamination Control No. 95/001,594 Patent US 7,483,856 B2 4 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. Appeal 2015-004981 Reexamination Control No. 95/001,594 Patent US 7,483,856 B2 5 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 Appeal 2015-004981 Reexamination Control No. 95/001,594 Patent US 7,483,856 B2 6 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 Copy with citationCopy as parenthetical citation