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Prior Art for Patent Reexamination Limited To Answering New Patentability Question

Friday, December 21, 2012
Belkin International Inc. v. Kappos, Fed. Cir., No. 2012-1090, 10/2/12

  • Case Summary: A reexamination challenge at the PTO to a wireless router patent asserted against network equipment companies fails.

  • Key Takeaway: The substantial new question of patentability hurdle must be challenged fully by the reexamination requester.


By Tony Dutra

A patent reexamination is limited to answering the substantial new question of patentability determined by the Patent and Trademark Office director, the U.S. Court of Appeals for the Federal Circuit ruled Oct. 2 (Belkin International Inc. v. Kappos, Fed. Cir., No. 2012-1090, 10/2/12).

Affirming a decision by the Board of Patent Appeals and Interferences, the court faulted the petitioner in an inter partes reexamination for failing to take advantage of a PTO procedure allowing a challenge to the agency's determination of what did not create a new patentability question.


Mistake in Appealing SNQ Decision.
WeCom Systems LLC d/b/a OptimumPath LLC is current assignee of a patent (7,035,281) directed to a wireless router.

In January 2008, OptimumPath filed a patent infringement lawsuit against seven companies, including Belkin International Inc., Cisco Linksys LLC, D-Link Systems Inc., and Netgear Inc., in the U.S. District Court for the District of South Carolina. No. 4:09-cv-01398-CW (D.S.C., complaint filed Jan. 30, 2008).

Those four defendants filed a request with the PTO for inter partes reexamination of the '281 patent in October 2008. They argued that all 32 of the claims of the patent were not patentable for anticipation or obviousness in light of four references.

The PTO determined that another U.S. patent (6,560,217) issued to Kenneth L. Peirce Jr. and assigned to 3Com Corp. raised a substantial new question (SNQ) of patentability as to six of the claims. It accordingly ordered reexamination on those six claims for anticipation by the Peirce patent, but it also rejected the argument that the other three proffered references raised a SNQ on any of the 32 claims.

Belkin requested a review of the denial of reexamination to the other 26 claims, which the PTO also denied.

The central reexamination unit examiner assigned to the case looked only at the Peirce patent and confirmed the patentability of the six claims that were subject to reexamination. Belkin appealed to the BPAI, arguing that the examiner should have looked at the other three references.

The board rejected the appeal and also affirmed the examiner's findings with respect to Peirce.

Belkin then appealed to the Federal Circuit.


Reexamination Limited to Answering SNQ
Judge Alan D. Lourie affirmed the board's decision.

One question at issue related to the actions Belkin took or could have taken after the PTO decision on whether a SNQ had been raised. Under the PTO's Rule 1.927, 37 C.F.R. §1.927, Belkin was permitted to file a petition for review of that decision, the court noted. However, its petition for review at that point did not challenge the part of the PTO's decision that concluded that the other three references did not raise a SNQ, including as to the six claims in reexamination.

Under 35 U.S.C. §312(c), the court said, the PTO's SNQ decision was not appealable to the Federal Circuit. Thus, the court determined that the only relevant question in this appeal was whether, when a SNQ is raised as to some claims, the examiner should consider all the references proffered in the inter partes request.

The court acknowledged that the scope of reexamination can conceivably encompass not only what the requester proffered but also what the PTO director raises on his own initiative. “It otherwise may not include other prior art than what constituted the basis of the Director's determination of a substantial question of patentability,” the court concluded.

In this case, the court explained, the SNQ applied only to anticipation by Peirce, so the reexamination was properly limited to answering that question.


Statute Trumps MPEP
Belkin also argued that it had no reason to challenge the SNQ because it had assumed, per Section 2648 of the Manual of Patent Examining Procedure, that reexamination would be “in view of all prior art.”

“But that provision does not discuss the preclusive effect of a determination that an issue does not raise a substantial new question of patentability,” the court said. And regardless, it added, “the MPEP does not have the force of law.”

“[W]e hold that, under the statute, available prior art may only be considered to answer the specific questions of patentability found by the Director,” the court said.

Chief Judge Randall R. Rader and Judge Evan J. Wallach joined the opinion.

David L. McCombs of Haynes and Boone, Dallas, represented Belkin. PTO Associate Solicitor Scott C. Weidenfeller represented the PTO. Tony D. Alexander of Technology Legal Counsel LLC, Augusta, Ga., represented OptimumPath.

By Tony Dutra


Opinion at /uploadedFiles/Content/News/Legal_and_Business/Bloomberg_Law/Legal_Reports/Patent-Reexamination(1).pdf

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