Monday, February 10, 2014

CAFC finds fault with PTAB in Tempo v. Tivoli

In the case Tempo v. Tivoli, defendant-Tempo had requested inter partes reexamination with the PTO of plaintiff-Tivoli's patent. In the appeal before the Board of the re-exam, the Board (Board) reversed the examiner’s rejection of claims 1–3 and 6–13 of U.S. Patent No. 6,554,446 (’446 patent). Tempo Lighting, Inc. (Tempo) appeals that decision. Because the Board’s decision lacks the support of substantial evidence in the record and because the Board erred in concluding that Tempo waived certain arguments, this court vacates the decision in-part and remands.

At issue on appeal to the CAFC, Tempo advances three arguments. Tempo argues that the Board erred in construing “inert to light” differently from the examiner. Even assuming the Board’s construction was correct, Tempo also argues that the Board erred by relying on the examiner’s factual findings under a different claim construction. Finally, Tempo argues that it did not waive its arguments con- cerning alternative grounds for affirming the examiner’s rejections under Tivoli’s proposed construction of “inert to light.”

The CAFC alluded to In re Lovin. Finally, this court accepts the Board’s interpretation of PTO regulations unless that interpretation is “plainly erroneous or inconsistent with the regulation.” In re Lovin, 652 F.3d 1349, 1356 (Fed. Cir. 2011).

Of interest: Moreover, the Board properly avoided the circularity inherent in any attempt to construe claims with an eye to preserving their validity, a doctrine of “limited utility.” See Phillips v. AWH Corp., 415 F.3d 1303, 1328 (Fed. Cir. 2005). Thus, even in the unlikely event that it adopted a construction for “inert to light” that might render the claims invalid under § 112, the Board did not err in reaching that meaning based on the intrinsic evidence. In any event, if the stayed litigation proceeds anew before the District Court, Tempo will have an opportunity to challenge the claims under § 112 at that time.

The problem for the Board: Having corrected the examiner’s claim construction, however, the Board erred by relying on factual findings resting on that incorrect claim construction. In its opin- ion, the Board states “we agree with Patent Owner that the combination of prior art does not result in a lighting apparatus that is ‘inert to light’ when the term is properly construed. In this regard, the Examiner expressly found that each of the primary references . . . lacks this claimed feature.” J.A. 15–16. The Board’s reasoning is deficient. The Board states that the prior art references do not disclose the “inert to light” limitation as properly con- strued, but only cites to the examiner’s findings under the reversed—and substantially different—claim construc- tion. On remand, the PTO will have the opportunity to make new factual findings under the proper construction.


Third-party requester cross-appeals are governed by 37 C.F.R. § 41.61(b). That regulation states, in relevant part, 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.” 37 C.F.R. § 41.61(b) (emphasis added). Thus, one of the threshold conditions for a cross-appeal is a final decision favorable to patentability. In this case, the examiner rejected all the claims. Thus, the record presented no decision favorable to patentability for Tempo to appeal.
Contrary to the Board’s assertion, each of the examin- er’s determinations against Tempo’s proposed rejections is not a distinct decision favorable to patentability necessi- tating an appeal.

In this case, Tempo has the right to defend the examiner’s final decision on any ground supported by the record. Rexnord Indus., LLC v. Kappos, 705 F.3d 1347, 1356 (Fed. Cir. 2013). Through- out the reexamination, Tempo argued that the primary references anticipate the claims under Tivoli’s construction. J.A. 440–47. While Tempo argued in favor of the examiner’s construction and rejections, this did not fore- close Tempo from also advancing arguments under the construction proposed by Tivoli. Contrary to the Board’s decision, and Tivoli’s arguments, Tempo’s conduct does not rise to the level of waiver or invoke judicial estoppel. Accordingly, the Board erred by not considering Tempo’s additional arguments.

Also of interest: As this reexam- ination has lasted nearly a decade, this court urges the PTO to provide a speedy resolution to this dispute as envisioned under 35 U.S.C. § 314(c).

From business wire in the year 2004:

Tivoli, LLC filed a complaint for patent infringement on February 27, 2004 in Santa Ana Federal Court against Tempo Lighting, Inc., doing business as Tempo Industries. Plaintiff alleges that Defendant deliberately knocked off and copied Tivoli's '446 Step Illumination patent and has been advertising it on the Internet and via its catalog under the name Sentinal System. Tivoli, LLC also charges Tempo Industries with false advertising and unfair competition. Plaintiff seeks damages and a permanent injunction against Tempo Industries, as well as punitive damages. Judge David O. Carter will preside over the matter. Tivoli, LLC is represented by William E. Levin and Edward O'Connor with Levin & O'Connor in Laguna Beach, CA. Tivoli, LLC vs. Tempo Lighting, Inc., Case No. SACV 04-00223 DOC (VBKx).


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