When the Patent Board affirmed a patent examiner’s rejection based on new facts that change the thrust of the rejection, the decision was based on new grounds for the rejection, thus requiring that the applicant be given an opportunity to reopen prosecution or request a rehearing.

In re Leithem, No. 2011-1030 (Fed. Cir. Sept. 19, 2011).

Inventors filed a patent application related to an improved absorbency material for personal hygiene devices, such as diapers.  Diapers are comprised, in part, of an absorbent core of fluffed wood fiber pulp, known as fluff pulp.  Fluff pulp is often chemically treated to increase absorbency.  The inventors discovered a method of producing high absorbency fluff pulp without chemical treatment.  The patent examiner rejected a claim in the application as obvious over the combined teachings of two U.S. patents.  Specifically, the examiner found that one of the patents (the ‘575 patent) taught a similar method of making fluff pulp.  The inventors appealed to the Board of Patent Appeals and Interferences (“Board”), arguing that the ‘575 patent did not teach fluffing.  The Board agreed.  However, it affirmed the rejection after finding that the pulp of the ‘575 patent could be fluffed. 

On appeal to the Federal Circuit, the inventors argued that the Board’s decision should be vacated because it relied on [a] new grounds of rejection in affirming the examiner’s finding of obviousness.  The Federal Circuit agreed.  When the Board affirms an examiner’s rejection on new grounds, the applicant is entitled to reopen prosecution or to request a rehearing.  The applicant must “have had a fair opportunity to respond to the thrust of the rejection.”  “The thrust of the Board’s rejection changes when, as here, it finds facts not found by the examiner regarding the differences between the prior art and the claimed invention, and these facts are the principal evidence upon which the Board’s rejection was based.”  The Federal Circuit remanded the case to the Board to afford the inventors an opportunity to respond to the new grounds for [of] rejection.

A copy of the opinion can be found here.

When an accused infringer asserts alternative theories of invalidity and a general jury verdict of invalidity is returned without stating the theory or theories upon which it is based, the verdict should be upheld if there was sufficient evidence to support any of the alternative theories of invalidity.

Cordance Corp. v. Amazon.com, Inc., No. 2010-1502, -1545 (Fed. Cir. Sept. 23, 2011).

The patent at issue covered an online purchasing system.  The patentee alleged that the accused infringer’s “1-Click” ordering system infringed the patent at issue.  The accused infringer argued that the asserted claims of the patent were invalid for derivation and for failure to satisfy the written description requirement, and that all but two of the claims were invalid as anticipated.

The jury returned a verdict in favor of the accused infringer, finding that the infringed claims were invalid.  The court granted the patentee’s post-verdict JMOL that insufficient evidence supported a finding that the claims were invalid on various grounds.  The accused infringer appealed the district court’s grant of the patentee’s JMOL and the patentee cross-appealed.

The accused infringer argued that substantial evidence supported the jury verdict that all but two of the claims at issue were anticipated by its own 1995 shopping-cart system.  The patentee argued that the accused infringer’s 1995 system did not anticipate the claims at issue and that this was an improper “practicing the prior art defense.”  The court held that the accused infringer was not making an improper “practicing the prior art defense,” because here it “adequately satisfied its burden to show by clear and convincing evidence that each limitation of [the claims at issue were] found in its 1995 system and thus, these claims were invalid as anticipated.” 

At trial, the accused infringer presented two theories of invalidity as to the two remaining claims at issue.  On a general verdict form, the jury found both claims to be invalid but did not specify the grounds for their decision.  The court held that “a general jury verdict of invalidity should be upheld if there was sufficient evidence to support any of the alternative theories of invalidity.”  Here, the patentee waived its challenge to the sufficiency of evidence as to derivation and the court ruled that the two remaining claims were invalid.

A copy of the opinion can be found here.