Prosecution History of Original Examination as Intrinsic Evidence in Post-Grant Proceedings - Tempo Lighting, Inc. v. Tivoli, LLC

by McDermott Will & Emery
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In a case arising from an inter partes reexamination while pending district court litigation was stayed for more than eight years, the U.S. Court of Appeals for the Federal Circuit affirmed-in-part, vacated-in-part and remanded a decision of the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (Board) that had reversed the examiner’s rejection of certain patent claims, finding that the Board erred by relying on factual findings resting on the examiner’s incorrect claim construction.  Tempo Lighting, Inc. v. Tivoli, LLC, Case No. 13-1140 (Fed. Cir., Feb. 10, 2014) (Rader, C.J.).

Tivoli sued Tempo Lighting for patent infringement. The district court stayed the litigation when the PTO granted Tempo’s request for inter partes reexamination of the patent at issue.  During reexamination, the examiner rejected all of the patent’s claims, adopting some of Tempo’s proposed rejections and declining to adopt others.  Tivoli appealed the rejections to the Board.  The Board rejected the examiner’s definition of a disputed claim term and reversed the examiner’s rejection of certain claims, concluding that Tempo waived its alternative arguments that certain references anticipate those claims.  Tempo (the requestor) appealed.

The Federal Circuit agreed with the Board that the examiner’s definition of “inert to light,” which relied on a dictionary definition, was erroneous.  Finding the claims and specification unhelpful, the Federal Circuit turned to the original prosecution history. During original examination, the examiner objected to the recitation of “non-photoluminescent” as being a negative limitation. In response, Tivoli amended the claims to recite “inert to light” and explained the meaning of “inert to light.” The Court found this intrinsic evidence provided an explicit definition of the disputed claim term. In contrast, the examiner’s dictionary definition “adds multiple limitations that lack support in any form of intrinsic evidence.” The Federal Circuit concluded that “the examiner erred by resorting to extrinsic evidence that was inconsistent with the more reliable intrinsic evidence.”

The Federal Circuit noted that “the PTO is under no obligation to accept a claim construction proffered as a prosecution history disclaimer, which generally only binds the patent owner.” However, in this instance, since the PTO requested Tivoli rewrite the [negative] limitation in positive terms and Tivoli complied, together with clarification about the meaning of the ‘inert to light’ limitation, the prosecution history provided the proper claim term construction.

Although it agreed with the Board’s claim construction, the Federal Circuit found that “the Board erred by relying on factual findings resting on [the examiner’s] incorrect claim construction.” In reversing the rejection of certain claims, the Court found that the Board relied on “the examiner’s findings under the reversed—and substantially different—claim construction” to support its conclusion that the prior art references do not disclose the “inert to light” limitation as properly construed. Accordingly, the Federal Circuit vacated the Board’s reversal of claim rejections and remanded for new factual findings.

The Federal Circuit also vacated the Board’s conclusion that Tempo waived its alternative arguments because Tempo did not file a cross-appeal raising those arguments. The Federal Circuit clarified that the relevant regulation 37 C.F.R. § 41.61(b), which provides that “a requester who has not filed a notice of appeal may file a notice of cross appeal with respect to any final decision favorable to the patentability, including any final determination not to make a proposed rejection, of any original, proposed amended, or new claim of the patent,” should be understood to mean that each of the examiner’s determinations against Tempo’s proposed rejections is not a distinct decision favorable to patentability necessitates an appeal. Rather, as the Court explained, the regulation uses the permissive “may” and does not require filing of a cross-appeal in order to raise issues pertaining to proposed rejections on the appeal.  To the contrary, Court explained where claims have already been adjudicated invalid, a cross-appeal regarding additional invalidity arguments is generally improper.

Practice Note:  Although this case arises from an inter partes reexamination, the same principles of claim construction should apply to inter partes review.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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