Monthly Archives: January 2013

Federal Circuit Ruling: Any Argument Supported by the Record Should be Considered by the PTO Board

By: Joseph Carnicella, intellectual property attorney with Picadio Sneath Miller & Norton, P.C.

On January 23, 2013, the Federal Circuit in Rexnord Industries LLC v. Kappos (2011-1434) determined that the USPTO Board of Patent Appeals and Interferences (the “PTO Board”) erred when it declined to consider arguments that were made to the patent examiner but not raised on appeal to the PTO Board.

Habasit Belting, Inc. filed a patent infringement suit against Rexnord Industries LLC with respect to U.S. Patent No. 6,523,680 (the ‘680 patent), wherein Rexnord requested inter partes reexamination of the ‘680 patent.  On reexamination, the examiner held all of the claims in the ‘680 patent unpatentable for anticipation and obviousness based on four prior art references cited by Rexnord.  However, on appeal by Habasit (the appellant regarding the reexamination decision), the PTO Board held the claims patentable.  As a result of the PTO Board’s reversal, Rexnord (the appellee regarding the reexamination decision) requested rehearing and argued that the PTO Board overlooked a portion of the examiner’s analysis in rejecting the claims.  The PTO Board denied the rehearing request.

Rexnord subsequently appealed the PTO Board’s decision and its refusal to review all of the arguments raised by Rexnord regarding the unpatentability of the ‘680 patent.  On this appeal, the PTO argued that the PTO Board need not consider other grounds that had been presented during the reexamination if those arguments were not raised on the appeal to the PTO Board.  However, the Federal Circuit concluded that Rexnord presented the prior art references to the examiner and that the references did not relate to a patentability issue again until after the PTO Board reversed the examiner.  The Federal Circuit held that the correctness of the decision appealed from can be defended by the appellee on any ground that is supported by the record, whether or not the appellant raised the argument.  In this matter, the Federal Circuit determined that Rexnord requested on rehearing that the PTO Board consider the other grounds in support of the examiner’s decision, and that the PTO Board erred in declining to consider the references presented for reexamination and in declining to consider Rexnord’s arguments in support of the examiner’s decision.

Supreme Court Hears Argument on Patent Legal Malpractice Case

Supreme CourtYesterday the US Supreme Court heard oral argument  in Gunn v. Minton (No. 11-1118, U.S. Sup) where the issue is the long debated question of proper jurisdiction for patent law legal malpractice cases. For more background, please see a December 3, 2012 post by my colleague Kelly Williams in this blog and to read the Amicus brief filed by the AIPLA.  Read the transcript of yesterday’s Supreme Court oral argument here:    The central question is whether legal malpractice claims against attorneys representing the inventors, for failing to raise an “experimental use” defense to the “on-sale bar” doctrine, constituted a question of exclusive state law, or one of exclusive federal jurisdiction and law – like traditionally all Patent Law issues.  The issue turns on whether such a state court claim can create or affect Federal patent rights. Our friends at Lexis-Nexis have summarized the oral argument and issues at this link:

We will follow this case closely: For more information, please contact Henry M. Sneath, Esq. chair of the Intellectual Property Group at Picadio Sneath Miller & Norton, P.C. in Pittsburgh, Pa. 412-288-4013 or  Firm Website:  Blog at: or follow him on Twitter @picadiosneath

Is Discovery Allowed in Inter Partes Re-examination? — Abbott Labs. v. Cordis Corp.

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C. ()

Today, the Federal Circuit is hearing oral argument in Abbott Laboratories v. Cordis Corp. (12-1244) on an interesting issue of whether parties can subpoena documents or testimony in an inter partes re-examination proceeding before the USPTO under 35 U.S.C. § 24.

Federal CircuitCordis sued Abbott Labs and Boston Scientific alleging infringement of two patents. After the filing of the lawsuit, both defendants initiated separate inter partes  re-examination proceedings before the USPTO, which were merged. During this merged proceeding, Abbott Labs and Boston Scientific asserted that the patents were obvious and, therefore, invalid under 35 U.S.C. § 103(a). In support of this assertion, Abbott and Boston Scientific submitted affidavits from experts  supporting their position.

In response, Cordis attempted to serve subpoenas through the district court seeking evidence relevant to the question of obviousness. Cordis also filed a petition with the USPTO requesting that the Director of the USPTO clarify the USPTO’s rules with respect to the service of subpoenas under 35 U.S.C. § 24 in inter partes re-examinations.

Abbott Labs filed a motion to quash the subpoenas, arguing that (1) the inter partes re-examination procedures prohibit discovery, (2) 35 U.S.C. § 24 does not authorize the issuance of subpoenas because inter partes re-examinations are not “contested cases” within the meaning of the statute, (3) Cordis required USPTO permission before serving the subpoenas, and (4) the subpoenas were vexatious, untimely, and threatened to reveal confidential information.

Prior to oral argument on the motion to quash, the USPTO denied Cordis’s petition, concluding that no discovery is permitted in inter partes re-examinations. The district court then granted Abbott’s motion to quash, agreeing with the USPTO and finding that an inter partes re-examination is not a “contested case” for purposes of the statute. Cordis appealed to the Federal Circuit, which is hearing oral argument today on the issue.

It will be interesting to see how the Federal Circuit rules and whether it allows parties to inter partes re-examinations to engage in this form of limited discovery.

  • Copies of the parties’ briefs (along with the amicus brief of the United States) are available here.
  • An audio recording of the argument is generally posted within a day or so of the oral argument and can be found here when it is posted.