Thank You Veterans

There is no shortage of patriotic subject matter in the U.S. patent collection, but those relating to Veteran’s day are a sobering reminder of the sacrifice that all of our veterans were willing to make, and why they deserve our appreciation on Veteran’s Day and every day:

U.S. Patent No. 7,934,690 products a Flag Holder (for a Veteran’s grave)
U.S. Patent No. 1466112 protects a grave marker for a Veteran’s grave
U.S. Patent No. D18517 protects a Veteran’s Grave Designator

Board Erred in Finding Reference Was Not Reasonably Pertinent to the Problem Facing the Inventor

In Airbus S.A.S. v. Firepass Corp., [2019-1803](November 8, 2019), the Court of Appeals for the Federal Circuit vacated the PTAB’s reversal of the Examiner’s rejection of new claims presented by patent owner Firepass Corporation in an inter partes reexamination of U.S. Pa-tent No. 6,418,752.

The ’752 patent discloses a fire prevention and suppression system that prevents and extinguishes fires using breathable air instead of water, foam, or toxic chemicals—each of which can present risks to personnel or electronic equipment.

The invention is based on the inventor’s alleged discovery that a low-oxygen (“hypoxic”) but normal pressure (“normbaric”) atmosphere inhibits fire ignition and combustion, yet remains breathable for humans. In rejection the claims the Examiner relied upon prior art including a patent to the same inventor on a generator for creating a hypoxic environment for athletic training or therapy. The Board reversed the rejection of the claims accepting the patent owners argument, raised for the first time on appeal, that the prior patent was not analogous art to the claimed invention of the ’752 patent, and is therefore not relevant prior art for the purposes of obviousness.

The Federal Circuit reiterated that a reference qualifies as prior art for an obviousness determination only when it is analogous to the claimed invention. The Court noted two tests separate tests defining the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. The Federal Circuit held that the Board’s “field of endeavor” determination was supported by substantial evidence, but the Board erred in its “reasonably pertinent” determination because the Board declined to consider record evidence advanced by Airbus to demonstrate the knowledge and perspective of a person of ordinary skill in the art at the time of the invention.

With respect to the field of endeavor analysis, the Federal Circuit said that to determine the applicable field of endeavor, the fact finder must consider “explanations of the invention’s subject matter in the patent application, including the embodiments, function, and structure of the claimed invention. While the disclosure of the references is the primary focus, this court has also instructed that the fact finder must consider each reference’s disclosure in view of the reality of the circumstances and weigh those circumstances from the vantage point of the common sense likely to be exerted by one of ordinary skill in the art in assessing the scope of the endeavor. The Board could not say that the Board’s finding was unreasonable.

With respect to of the reasonably pertinent test, the Federal Circuit explained that outside of an inventor’s field of endeavor, it only presume knowledge from those arts reasonably pertinent to the particular problem with which the inventor was involved. This rule reflects the reality of the circumstances that an inventor could not possibly be aware of every teaching in every art. The pertinence of the reference as a source of solution to the inventor’s problem must be recognizable with the foresight of a person of ordinary skill, not with the hindsight of the inventor’s successful achievement. A reference outside an inventor’s field of endeavor is “reasonably pertinent” only if its subject matter logically would have commended itself to an inventor’s attention in considering his problem.

The Federal Circuit said that the Board accurately observed that the examiner’s rejection did not “provide or explain the requisite correlation” between the problems addressed by the reference and the patent, but expressly declined to consider multiple references in the record that Airbus asserted would establish the necessary link. The Federal Circuit held that the Board erred by refusing to consider the references in support of the reasonably pertinent test. Because a “reasonably pertinent” reference is one that an ordinarily skilled artisan would reasonably have consulted in seeking a solution to the problem that the inventor was attempting to solve, the reasonably pertinent inquiry is inextricably tied to the knowledge and perspective of a person of ordinary skill in the art at the time of the invention. In order to determine whether a reference is “reasonably pertinent,” a reasonable fact finder should consider record evidence cited by the parties to demonstrate the knowledge and perspective of a person of ordinary skill in the art at the time of the invention.

The Federal Circuit vacated the Board’s reversal of the examiner’s rejection and remanded for the Board to reconsider its analogous art determination.

Petitioner Allowed to Supplement Evidence that Reference was Available

In Telefonaktiebolaget LM Ericsson v. TCL Corp., [2017-2381, 2017-2385] (November 7, 2019) the Federal Circuit affirmed the Board’s decision that the specified publication is an available reference, and based on this publication in combination with other prior art it affirmed the Board’s decision of invalidity of the challenged claims.

Ericsson argued that the Jentschel article is not prior art because it was not publicly available more than one year before Ericsson’s earliest asserted filing date, and thus is subject to antedating by Ericsson’s invention date. During the trial TCL sought to provide evidence of the date of availability of this journal issue in university libraries in Germany.

TCL first submitted to the PTAB a letter from a librarian from the “Periodicals Team” at the Technische Informationsbibliothek and Universitätsbibliothek in Hannover, Germany. Ericsson objected to the letter as inadmissible hearsay, and the statement was withdrawn when the librarian declined to provide a sworn statement and declined to testify in the United States. TCL then moved to submit the sworn Declaration of Doris Michel, a librarian at the Technische Universität Darmstadt in Germany. Ericsson again objected, stating that the submission was not in compliance with the Board’s Rules, which required a petitioner to present sufficient evidence, at the petition stage, and requires that a party who seeks to submit new or supplemental information more than one month after the date an IPR is instituted must show why the supplemental information rea-sonably could not have been obtained earlier, and that consideration of the supplemental information would be in the interests-of-justice.

TCL responds that Regulation § 42.123(b) gives the Board discretion to accept a tardy submission and to consider the interest of justice. TCL argues that the Jentschel article is very close prior art and that Ericsson was allowed to file supplemental briefing and to depose Ms. Michel.

The Federal Circuit concluded that the Board did not abuse its discretion in admitting the Michel Declaration, for when the challenged evidence is reasonably viewed as material, and the opponent has adequate opportunity to respond and to produce contrary evidence, the interest of justice weighs on the side of admitting the evidence.

Ericsson argues that the date of availability to the public of the Jentschel reference was not established by the Michel Declaration, even if that Declaration were deemed admissible. The Federal Circuit explained that a reference is deemed publicly available if it has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it. The Federal Circuit noted that Ericsson provided no evidence to counter the Michel Declaration, the date on the face of the journal, and the Library’s records showing receipt of the journal and its shelving. The Federal Circuit found that substantial evidence supports the Board’s ruling that Jentschel was accessible to the public in the May/June 1996 period, and that the Board did not abuse its discretion in receiving the Jentschel article as a reference.

The Federal Circuit further concluded that substantial evidence supports the Board’s finding that Jentschel renders obvious the claims.

OK, Campers, Here’s How to Make Your Claim Preamble a Limitation

In In re Fought and Clanton, [2019-1127](November 4, 2019) the Federal Circuit reversed the PTAB decision that the claims 1 and 2 in U.S. Application Serial No. 13/507,528 were anticipated.

The claims were directed to travel trailer with a movable garage wall. Claim 1 read:

Claim 1 form U.S. Application 13/507528
Figs. 1 and 2 of Application 13/507528

The Examiner rejected both claims 1 and 2 as anticipated. The Board affirmed the examiner’s rejection, concluding the preamble term “travel trailer” is a mere statement of intended use that does not limit the claim.

The Federal Circuit rejected appellants first argument that “A travel trailer having” was not a preamble, noting though this claim does not use the typical claim language (comprising) which denotes the transition be-tween the preamble and the body, the word “having” performs the same role.

Appellants next argument was that even if “travel trailer” is part of the preamble, it is limiting because limitations in the body of the claims rely on “travel trailer” for antecedent basis and for structural limitations. On this point, the Federal Circuit agreed, noting that it has repeatedly held a preamble limiting when it serves as antecedent basis for a term appearing in the body of a claim. Appellants provided extrinsic evidence to support their assertion that “travel trailer” is a specific type of recreational vehicle that includes a living quarters. The Federal Circuit said:

Based on the extrinsic evidence, we conclude that a “travel trailer” is a specific type of recreational vehicle and that this term is a structural limitation of the claims. There is no dispute that if “travel trailer” is a limitation, Dietrich and McDougal, which disclose cargo trailers and shipping compartments, do not anticipate. Just as one would not confuse a house with a warehouse, no one would confuse a travel trailer with a truck trailer.

The Federal Circuit rejected appellant’s argument that the Patent Office had an obligation to identify the level of ordinary skill in the art — at least where the applicant had not put it in issue.

Whether a preamble is a limitation is a two-edged sword for applicants, one the one hand if the preamble is a limitation, it can make the claim patentable, but on the other hand it can also make the claims harder to infringe, Where the applicant wants the preamble to be a limitation, purposely using the words in the body of the claim will achieve that goal, however idly parroting the words of the preamble in the body can unintentionally limit the claims for purposes of infringement.