Reference with Missing Pages May Be Used in Reexamination - In re Enhanced Security Research, LLC

by McDermott Will & Emery
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Addressing the issue of whether, in a patent reexamination, a reference with missing pages may be submitted and relied upon by the patent examiner in rejecting patent claims, the U.S. Court of Appeals for the Federal Circuit agreed with the Patent and Trademark Office (PTO) that “the consideration of selected portions of prior art references” is permissible “so long as the missing portions are not necessary to fully understand the submitted portions.”  Presumably, the same rule will apply in current post issuance proceedings such as inter partes review.  In re Enhanced Security Research, LLC, Case No. 13-1114 (Fed. Cir., Jan. 13, 2014) (Dyk, J.) (O’Malley, J., dissenting).

Enhanced Security Research (ESR) owned a patent related to network security and sued several defendants, including Cisco, Juniper Networks and Fortinet, alleging infringement of its patent.   Fortinet requested ex parte reexamination, and the district court stayed the litigation pending the outcome of the reexamination proceeding.  The patent examiner concluded that the claims of ESR’s patent were obvious over the combination of two references—a software manual describing a product called NetStalker and a scholarly article.  The manual was provided by Fortinet’s expert witness, who claimed that it was available to members of the public who requested information about the NetStalker product prior to the filing date of ESR’s patent.

A central issue in the case is whether the patent examiner’s reliance on the manual as prior art was proper.  In order for the manual to be properly relied upon as prior art, the manual must qualify as a “printed publication” and must be “available to the public” prior to the filing date of the patent application.  ESR argued that the version of the manual submitted to the Patent Office may have been a draft rather than a final version available to the public, as there were missing pages and several places marked with question marks, and there is no proof of the date when the manual was available other than the date written on the cover of the manual.  Furthermore, ESR argued that the patent office could not consider a document with missing pages, as the missing pages may provide an interpretation of the teachings of the manual different from that of the examiner or may teach away from the claimed technique of the patent. After the PTO found the claims to have been obvious, relying on the manual, ESR appealed.

The Federal Circuit Court affirmed the PTO, concluding the expert witness’ declaration coupled with advertisements for the NetStalker product and the date on the cover of the manual was sufficient evidence that the manual was available to the public before the filing date of the application for the ESR patent.  The Court also concluded that submission of a partial prior art document for consideration in a reexamination procedure was proper under the Manual of Patent Examining Procedures (MPEP) and upon 37 C.F.R. § 1.510(b)(3) which states that, in submitting a foreign language document, a reexamination requester is only required to submit the “pertinent parts” of any non-English translation.  In this case, while the manual was completely in English, by analogy to the translation situation, the pertinent parts of the manual on which the patent examiner relied in making the rejection were submitted.

In a vigorous dissent, Circuit Judge O’Malley cited the constitutional requirement of due process to disagree with the majority’s holding.  O’Malley noted that a patent right is a property right to which due process is applicable.  In her view, since the manual was proffered by an interested party who had control over all information related to the manual, due process required the interested party to have the burden of providing the missing information in the manual or proving that the missing information does not support the patentability of the claims.  Furthermore, O’Malley doubted that the manual qualified as publicly available as the declaration of the sponsoring expert witness only stated that the manual would have been provided to a member of the public requesting information, but did not state that the manual was ever actually provided to any customers who purchased the NetStalker system or that an interested member of the public would have known to request the manual.

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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