Monday, July 20, 2015

CAFC in Airbus v. Firepass

The background:

Firepass Corporation (“Firepass”) owns U.S. Patent 6,418,752
(the “’752 patent”) , which is directed to using hypoxic compositions
for preventing and extinguishing fires.
In October 2009, Firepass brought suit against
Airbus in the District Court for the Eastern District of
New York alleging infringement of,
inter alia , several claims of
the ’752 patent.
In February 2011, Airbus filed a request for
inter partes
reexamination of the ’752 pa-
In its request, Airbus proposed that each of original
claims 1, 2, 4, 7, and 8 was
anticipated under 35 U.S.C. §
102 by U.S. Patent 5,799,652 (“Kotliar”).

From Airbus v. Firepass:

However, the provision requiring a determination of a
substantial new question of patentability was not appli-
cable to the case once the Director already had ordered
reexamination on the ground that other prior art raised a
substantial new question of patentability.

We therefore agree with Airbus that the Board erred in dismissing the
cross-appeal for lack of jurisdiction because the Examiner
incorrectly refused to consider proposed rejections to
newly-added claims after reexamination had been insti-

As to the MPEP:

The MPEP [is] commonly relied upon as a guide to
patent attorneys and patent examiners on procedural
matters. . ..”
Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1439
(Fed. Cir. 1984). Although the MPEP does not have the force of law,
it is entitled to judicial notice “
so far as it is an official interpretation of statutes
or regulations with which it is not in conflict.” Id.
Here, the MPEP is consistent with
the statutory scheme and § 1.948(a)(2).
MPEP § 2666.05, titled “Third Party Com-
ments After Patent Owner Response,” pertains to
§ 1.948(a)(2) and the limitations on submission of
prior art by the third-party requester after the order
for inter partes reexamination. According to
§2666.05, “ any such new proposed rejection stands on the same
footing as a proposed rejection presented with the request for reexam-
ina tion.” MPEP § 2666.05 (2008)



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