Temple Lighting, Inc. v. Tivoli, LLC: Fleshing out Third Party Requester Cross-Appeals in an Inter Partes Reexamination

Category: Post-Grant Proceedings
By: Jesus Hernandez, Blog Editor/Contributor  
TitleTemple Lighting, Inc. v. Tivoli, LLC, No. 2013-1140 (Fed. Cir. Feb. 10, 2014).
[1] Tempo argues that the Board erred in construing “inert to light” differently from the examiner.
Temple Lighting, Inc. at *3.
[2] Tempo argues that it did not waive its arguments concerning alternative grounds for affirming the examiner’s rejections under Tivoli’s proposed construction of “inert to light.”
Id. at *3.
[1] The language of the claims in this case does not contextually define “inert to light.” Nor does the specification expressly reference that term. Nonetheless, the intrinsic evidence supports the Board’s construction. […] In claim construction, this court gives primacy to the language of the claims, followed by the specification. Additionally, the prosecution history, while not literally within the patent document, serves as intrinsic evidence for purposes of claim construction. This remains true in construing patent claims before the PTO.
Temple Lighting, Inc. at *6.
[2] [O]ne 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 [such that the alternative grounds of affirming the rejection were not waived].
Id. at *9 (text added).
Procedural History[In an inter partes reexamination,] t]he United States Patent and Trademark Office’s (PTO) Patent Trial and Appeal 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.
Temple Lighting, Inc. at *2 (text added).
Legal Reasoning (Rader, CJ, Moore, Wallach):
[1] Construing "inert to light"
Representative Claim 11. A lighting apparatus comprising:
a first extruded portion shaped to mount on the nose of a stair step; and,
a second extruded portion coextruded with said first portion and mounted on top of the first portion so as to be above the nose of the stair step, said second portion comprising a material inert to light and selected to have a reflectance factor greater than or equal to light gray polyvinyl chloride.
Temple Lighting, Inc. at *2
Examiner Relied on Extrinsic EvidenceThe examiner also construed the “inert to light” limitation present in the disputed claims. Citing a dictionary, the examiner defined the term as “a material that either does not react, e.g. by degrading, when exposed to light or a material that does not react because it has been treated with or includes some additive, which inhibits degradation of the material when exposed to light.” J.A. 500.
Id. at *3.
Board Relied on Prosecution History (Instrinsic Evidence)During original prosecution, Tivoli initially amended the pending claims to include a “non-photoluminescent material.” J.A. 1193–1201. The examiner objected to that amendment because the claims “should recite positive limitations to particularly claim and distinctly point out features of the invention.” J.A. 1204. In response, Tivoli amended the claims a second time, stating: The office action objects to claims 1, 7, 10 and 14 because each claim has the limitation “non- photoluminescent.” In response, Claims 1, 7 and 10 have been amended to disclose “a material that is inert to light” as a positive limitation indicating that the material for the second portion is non-photoluminescent and not activated to glow by ab- sorbing ambient light.
Id. at *4.
Board Interpretation ControlsHere, the prosecution history shows that Tivoli meant for material that is “inert to light” to be “non-photoluminescent and not activated to glow by absorbing ambient light.” This intrinsic evidence sup- ports the Board’s decision. In contrast, the examiner’s proposed construction adds multiple limitations that lack support in any form of intrinsic evidence. The intrinsic evidence, for example, contains no reference to the material degrading or not degrading in response to a reaction with light. Similarly the intrinsic evidence makes no reference to additives that would inhibit such a reaction.
Id. at *7.
[2] Right of Alternative Arguments on Appeal from Inter Partes Reexamination
BackgroundThe examiner closed prosecution on May 15, 2009, maintaining the rejections and the construction of “inert to light.” In June 2010, the examiner issued a Right of Appeal Notice. Tivoli appealed the examiner’s rejections, and the parties fully briefed the Board by October 6, 2010. Tempo’s brief included arguments supporting the examiner’s rejections, and also included alternative grounds for upholding the examiner’s determination using Tivoli’s proposed claim construction for “inert to light.” J.A. 905. Specifically, Tempo asserted that various primary references in the examiner’s obviousness rejections anticipated the claims under Tivoli’s proposed construction. […] [T]he Board concluded that Tempo waived its alternative arguments that certain references anticipate the claims because Tempo did not file a cross-appeal raising those arguments. J.A. 16 n.4.
Temple Lighting, Inc. at *3-4.
Third Party Requester Cross-Appeals: Require Final Decision in Favor of Patentability
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.
Id. at *9.
Contrary to the Board’s assertion, each of the examiner’s determinations against Tempo’s proposed rejections is not a distinct decision favorable to patentability necessitating an appeal. The regulation uses the word “including” to clarify that any final determination not to make a proposed rejection is subordinate to, and contained within, the final decision favorable to patentability. The Right of Appeal Notice in this case provided a single final decision concerning the patentability of the disputed claims. J.A. 813–14. The decision was that all the claims are unpatentable, a decision decidedly unfavorable to patentability.
Id. at *9.
No Administrative Requirement treating Alternative Arguments as Compulsory Cross-AppealsFurther, nothing in the regulation or procedure requires Tempo to raise its arguments on cross-appeal. That is, even if the regulation gave Tempo the right to raise these arguments in a cross-appeal, and thus obtain the benefit of additional briefing, the regulation simply says that Tempo “may” do so, not that it must.
Id. at *10.
No Equitable Requirement treating Alternative Arguments as Compulsory Cross-AppealsFinally, where a prevailing party seeks to enlarge its own rights under the judgment or to lessen the rights of its adversary, a cross-appeal generally is needed.[…] But where claims have already been adjudicated invalid, a cross-appeal regarding additional invalidity arguments is generally improper. […] In this case, Tempo has the right to defend the examiner’s final decision on any ground supported by the record.[…]
Id. at *10 (internal citations omitted).
In sum, this court affirms the Board’s construction of “inert to light.” However, the Board’s decision reversing the examiner’s rejections is vacated. Similarly, the Board’s conclusion that Tempo waived certain arguments is also vacated. This court remands to the Board for proceedings consistent with this opinion. 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).
Temple Lighting, Inc. at *11.
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