Samsung Electronics Co., Ltd

Patent Trials and Appeals Board

May 4, 2021

2020005019 (P.T.A.B. May. 4, 2021)

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. 15/823,272 11/27/2017 Kyung Eun Kim 736068 5668 23460 7590 05/04/2021 LEYDIG VOIT & MAYER, LTD TWO PRUDENTIAL PLAZA, SUITE 4900 180 NORTH STETSON AVENUE CHICAGO, IL 60601-6731 EXAMINER HADDAD, MAHER M ART UNIT PAPER NUMBER 1644 NOTIFICATION DATE DELIVERY MODE 05/04/2021 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): Chgpatent@leydig.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KYUNG EUN KIM, SEUNG JA OH, HYO SEON LEE, and SANG YEUL HAN Appeal 2020-005019 Application 15/823,2721 Technology Center 1600 ____________ Before ERIC B. GRIMES, RICHARD M. LEBOVITZ, and FRANCISCO C. PRATS, Administrative Patent Judges. LEBOVITZ, Administrative Patent Judge. DECISION ON APPEAL The Examiner rejected the claims under non-statutory obviousness- type double-patenting. Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject the claims. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “The ’272 application.” 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Samsung Electronics Co., Ltd. (“Samsung”). Appeal Br. 2. Appeal 2020-005019 Application 15/823,272 2 STATEMENT OF THE CASE The Examiner rejected claims 25-29 of the ’272 application in the Final Office Action (“Final Act.”) as follows: 1. Claims 25-29 on the ground of nonstatutory obviousness-type double-patenting as obvious in view of claims 1-12 of U.S. Patent No. 9,505,841 B2 (issued Nov. 29, 2016) (“the ’841 patent”). Final Act. 2. 2. Claims 25-29 on the ground of nonstatutory obviousness-type double-patenting as obvious in view of claims 5-10, 23-32 of co-pending Application No. 16/004,622 (“the ’622 application”). Final Act. 4. The Examiner indicated that the rejection is provisional because the claims of the application had not been patented at the time of the Final Office Action and Examiner’s Answer (dated Apr. 21, 2020); however, the application has since issued on Mar. 2, 2021 as US 10,934,350. Appellant did not challenge the Examiner’s decision that the claims of the appealed ’272 application are obvious in view of the claims of the ’841 patent or the ’622 application. With respect to the rejection based on the ’622 application, Appellant states the rejection is “provisional” and should be withdrawn. Appeal Br. 3. We do not agree. The rejection stands because the claims of the ’272 application were determined by the Examiner to be obvious based on the ’622 application. The ’622 application has not issued as a patent. Because Appellant did not address the rejection, we summarily affirm it. With respect to the nonstatutory obviousness-type double-patenting based on the ’841 patent, Appellant challenges the rejection only on the issue of whether the terminal disclaimers filed in the ’272 application and in Appeal 2020-005019 Application 15/823,272 3 the ’841 patent obviate the rejection. Consequently, these are the only issues addressed in this Decision. An oral hearing in this appeal was held March 2, 2021. The transcript of the hearing has been entered into the record. FINDINGS OF FACT (FF) FF1. The ’272 application is a continuation of U.S. Patent Application 14/446,228 filed on July 29, 2014, which claims the benefit of Korean Patent Application Nos. 10-2013-0089281 and 10-2013-0106749 filed in the Korean Intellectual Property Office on July 29, 2013 and September 5, 2013, respectively. Amendment to Spec. 1 (entered Nov. 27, 2017); Bibliographic Data Sheet. FF2. The inventors listed for the ’272 application are (1) Kyung Eun Kim, (2) Seung Ja Oh, (3) Hyo Seon Lee, and (4) Sang Yeul Han. Bibliographic Data Sheet. FF3. The ’272 application is owned by Samsung Electronics Co., Ltd. (“Samsung”). Appeal Br. 2. FF4. The ’841 patent is based on U.S. Patent Application, 14/446,199, filed Jul. 29, 2014, which claims benefit to Korean Patent Application No. 10-2013-0112089, filed in the Korean Intellectual Property Office on September 17, 2013. FF5. The inventors listed for the ’841 patent are: (1) Kyung Eun Kim, (2) Sang Yeul Han, (3) Gou Young Koh, (4) Hyo Seon Lee, and (4) Chan Kim. Appeal 2020-005019 Application 15/823,272 4 FF6. The ’841 patent is owned by Samsung and Korea Advanced Institute of Science and Technology (“KAIST”). Terminal Disclaimer under 37 C.F.R. §1.321(d) entered in the ’841 patent. See Exhibit A. FF7. There are three common inventors between the ’272 application and ’841 patent: Kyung Eun Kim, Hyo Seon Lee, and Sang Yeul Han. FF8. Appellant states: The ’272 application “claims certain methods of using anti-Ang-2 antibodies invented by Applicant’s employees, and is solely owned by Applicant.” Appeal Br. 3. The applicant is Samsung Electronics Co. Ltd. Id. at 2. FF9. Appellant states: “After developing these antibodies and methods, Applicant entered into a joint research agreement with the Korea Advanced Institute of Science and Technology (KAIST) (Exhibits C and D) resulting in the technology claimed in U.S. Patent No. 9,505,841 (hereinafter ‘the ’841 patent’), which is jointly owned by Applicant and KAIST.” Appeal Br. 3-4. FF10. Benefit claims under 35 U.S.C. § 119 are not taken into account when determining the earliest filed application. M.P.E.P. 804.I.B.(1)(a) (8- 27). The effective date of both the ’272 application and the ’841 patent is therefore Jul. 29, 2014, because both applications were filed at the USPTO on this same day. FF1, FF4. REJECTION The Examiner argues that to overcome the obviousness-type double- patenting rejection over the claims of the ’841 patent, a terminal disclaimer must be filed in the ’272 application under examination and “must disclaim over the [’841] patent that forms the basis of the rejection.” Final Act. 3. Appeal 2020-005019 Application 15/823,272 5 The Examiner acknowledges that a terminal disclaimer was filed in the ’841 patent, but insists that one must be filed in the ’272 application, as well. Id. We begin with addressing the basis in the rules for filing a terminal disclaimer. A terminal disclaimer to obviate an obviousness-type double- patenting rejection is filed under 37 C.F.R. § 1.321(c) and (d). Under § 1.321(c), the application and patent must be commonly owned. This requirement is not satisfied here because the ’272 application and ’841 patent have different owners (FF1, FF4), a fact which has not been challenged by Appellant. Specifically, the ’841 patent is owned by Samsung and KAIST and the ’272 application is owned by Samsung, alone. The Examiner determined that a terminal disclaimer could not be filed in the ’272 application under 37 C.F.R. § 1.321(d) because that section of the rule3 is only applicable to situations where the patent is prior art to the application, but here the effective filing dates of the ’272 application and ’841 patent are both the same and neither are prior art to each other (FF10), precluding Appellant from filing a terminal disclaimer in the ’272 application under the rule.4 Final Act. 3; Ans. 6. However, a terminal disclaimer under 37 C.F.R. § 1.321(d) was filed in the ’841 patent during its prosecution and approved by the USPTO. See Electronic Acknowledgement Receipts entered Jun. 3, 2019 and Jul. 5, 2016. The Examiner found that this terminal disclaimer filed in the ’841 patent is 3 “A terminal disclaimer, when filed in a patent application or in a reexamination proceeding to obviate double patenting based upon a patent or application that is not commonly owned but was disqualified as prior art as set forth in either § 1.104(c)(4)(ii) or (c)(5)(ii) as the result of activities undertaken within the scope of a joint research agreement.” 4 Appellant should be aware that there are proposed changes to 37 C.F.R. § 1.321. See 85 Fed. Reg. 86518-86525 (Dec. 30, 2020) (attached). Appeal 2020-005019 Application 15/823,272 6 not binding on a purchaser of the ’272 application because “the agreement runs with the ’841 patent,” but not with the ’272 application. Ans. 6. The Examiner explained that the ’841 patent owner “is making an agreement about enforcement, but there is nothing that keeps a purchaser of a patent that issues on the ’272 application from trying to enforce it” because the owners are not the same. Id. Appellant argues that a terminal disclaimer, in addition to the one already filed in the ’841 patent, is not necessary in the ’272 application because the ’272 application and ’841 patent were filed on the same date. Appeal Br. 4. For this reason, Appellant contends that “a patent issuing from the present application will normally expire on the same day as the ’841 patent, and a terminal disclaimer filed in either case should be sufficient to address any obviousness-type double patenting concerns.” Id. To further alleviate concerns, Appellant filed a terminal disclaimer in the ’272 application under 37 C.F.R. § 1.321(b) (Exhibit B), which Appellant asserts “disclaimed the terminal portion of any patent granted on the present application that extends beyond the term of the ’841 patent, thereby ensuring that the term of any patenting issuing from the present application will end on the same day as that of the ’841 patent.” Appeal Br. 5. Appellant also argues that the terminal disclaimer filed and approved in the ‘841 patent (Exhibit A) contains a waiver of the right to separately enforce the ’841 patent and a patent issuing from the ’272 application in accordance with the language prescribed in 37 C.F.R. § 1.321(d), addressing the potential for harassment of an infringer by multiple assignees. Id. at 6. Appellant also disputes the Examiner’s finding that the ’272 application is not prior art to the ’841 patent because its foreign priority date Appeal 2020-005019 Application 15/823,272 7 was before the foreign priority date of the ’841 patent. Appeal Br. 8. Thus, Appellant concludes that 37 C.F.R. § 1.321(d) is applicable. Id. Appellant further argues there is no rule that requires a terminal disclaimer to be filed in the ’272 application. Appeal Br. 8. Appellant explains that the effect of the terminal disclaimer under 37 C.F.R. § 1.321(d) is the same whether filed in the present application or in the ’841 patent: to equalize patent term and avoid a timewise extension of rights, and to tie enforcement of one patent to the other so as to avoid the potential for lawsuits by multiple patent owners against a single infringer. Id. DISCUSSION “The doctrine of double patenting is intended to prevent a patentee from obtaining a time-wise extension of [a] patent for the same invention or an obvious modification thereof.” In re Lonardo, 119 F.3d 960, 965 (Fed. Cir. 1997). As explained In re Basell Poliolefine Italia S.P.A., 547 F.3d 1371, 1375 (Fed. Cir. 2008), “[t]he judicially created doctrine of obviousness-type double patenting ‘prohibit[s] a party from obtaining an extension of the right to exclude through claims in a later patent that are not patentably distinct from claims in a commonly owned earlier patent. Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 967 (Fed. Cir. 2001).” An obviousness-type double patenting rejection is typically applied when an earlier filed and later filed patent applications or patents are commonly- owned because in these circumstances the owner would get the benefit of the extension of the right to exclude in the later filed patent having claims obvious over the claims of the earlier filed patent. Appeal 2020-005019 Application 15/823,272 8 Despite different ownership and inventorship between the ’272 application and ’841 patent, Appellant does not dispute the propriety of the obviousness-type double-patenting rejection. We agree that it is well-settled that an obviousness-type double-patenting rejection is proper when there is overlapping inventors, as here, but different ownership, of an application and a patent. See In re Van Ornum, 686 F.2d 937 (CCPA 1982); In re Hubbell, 709 F.3d 1140 (Fed. Cir. 2013). The reason for the obviousness-type double- patenting rejection in these circumstances is at least that the overlapping inventors (FF7) and owners of the ’272 application and ’841 patent can benefit from a time-wise extension of the patent term of the ’272 application, should a patent issue based on it. We first look at the effect of the disclaimer filed in the ’272 application under 37 C.F.R. § 1.321(b). The question is whether the obviousness-type double patenting rejection over the ’841 patent can be obviated by the § 1.321(b) disclaimer filed in the ’272 application. We begin by examining § 1.321. Only provisions § 1.321(c) and § 1.321(d) of the rule contain an express reference to obviating “judicially created double patenting” by filing a terminal disclaimer. There is no similar statement in § 1.321(b). Rather, § 1.321(b) states that “[a]n applicant may disclaim or dedicate to the public the entire term, or any terminal part of the term, of a patent to be granted.” Thus, while the part (b) of the rule may be used to disclaim patent term, it may not be used to obviate an obviousness-type double-patenting rejection. This conclusion is consistent with Hubbell which only discussed § 1.321(c) and (d) as a basis to obviate a double-patenting rejection. Appeal 2020-005019 Application 15/823,272 9 The next question concerns the terminal disclaimer under 37 C.F.R. § 1.321(d) filed and accepted in the ’841 patent. The issue is whether this terminal disclaimer is sufficient to overcome the obviousness-type double- patenting rejection in the ’272 application. We have not been guided, by either the Examiner or Appellant, to a rule or legal authority which directly addresses the principal question of whether the terminal disclaimer in the ’841 patent is sufficient to over obviate the obviousness-type double-patenting rejection in the ’272 application. The purpose of a terminal disclaimer is to eliminate any possibility of the unjustified or improper time-wise extension of the right to exclude granted by a patent issuing from the present application, and to eliminate any possibility of multiple suits against an accused infringer by different assignees of the patents by tying together the enforcement of any patents issued based on the application. Hubbell, 709 F.3d at 1145 (citing Van Ornum, 686 F.2d at 943-44 and In re Fallaux, 564 F.3d 1313, 1310 (Fed. Cir. 2009)). The terminal disclaimer in the ’841 patent states that the “patentee,” who is Samsung and KAIST, “disclaims . . . the terminal part of the statutory term of the instant [’841] patent referenced above which would extend beyond the expiration date of the full statutory term of any patent granted on” the ’272 application. See Exhibit A. The terminal disclaimer also states that the patentee waives the right to separately enforce the ’272 application and ’841 patent. Id. The patentee also “agrees” that ’841 patent and any patent granted on the ’272 application “shall be enforceable only for and during such period that the instant patent and any patent granted on the reference application are not separately enforced.” Id. Finally, the terminal Appeal 2020-005019 Application 15/823,272 10 disclaimer in the ’841 patent states: “This agreement runs with the instant [’841] patent and is binding upon the patentee, its successors or assigns.” Id. The patentee, whose representative signed the terminal disclaimer, is both Samsung and KAIST. There is no evidence from this record that the entity owning the ’841 patent is a separate entity from the individual corporations who have an ownership interest in the patent. In other words, the terminal disclaimer is binding on both Samsung and KAIST individually as if each signed the disclaimer in their individual capacity. Because of this fact, the statements in the terminal disclaimer that indicate that the ’841 patent and any patent arising from the ’272 application cannot be separately enforced is binding on Samsung, alone. There is no reason on this record as to why the terminal disclaimer filed in the ’841 patent under 37 C.F.R. § 1.321(d) - the rule specifically designed to obviate a judicially created double patent rejection - does not obviate the double-patenting concerns described in Hubbell for the ’272 application. The Examiner’s reasoning that the ownership is different between the ’841 patent and ’272 application is correct, but it failed to recognize that Samsung is an ownership entity agreed to be bound by the terminal disclaimer. Specifically, the terminal disclaimer expressly states that it “runs” with the patent, which we understand to mean it is binding on the owners of the ’841 patent who are each of Samsung and KAIST, and their successors and assigns. There is no other ownership entity of the ’841 patent described on this record, but Samsung and KAIST in their individual capacities. Therefore, even were Samsung to sell or otherwise transfer its ownership in the ’841 patent, the subsequent owner would still be precluded Appeal 2020-005019 Application 15/823,272 11 from separately enforcing the ’841 patent and ’272 application by the terms of the terminal disclaimer. For the foregoing reasons, we reverse the non-statutory obviousness- type double-patenting rejection over the claims of the ’841 patent. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 25-29 Non-statutory obviousness-type double patenting over the ’841 patent 25-29 25-29 Non-statutory obviousness-type double patenting over the ’622 application 25-29 Overall Outcome 25-29 TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED