By Dennis Crouch
Tempo Lighting, Inc., v. Tivoli LLC (Fed. Cir. 2013)
The rules of patent trial proceedings continue to develop. One issue that is continually shocking for parties are the short and hard deadlines in the various post-issuance review proceedings and the strong pushback against parties who look to shift their position during the proceedings. Folks are learning that the first-punch in the post grant review proceedings should be at full power and fully thought through. Here, the Federal Circuit pulls the PTAB back somewhat from that approach and finds that the Board improperly found that Tempo had waived certain arguments during the proceedings.
The case itself stems from an inter partes reexamination but is relevant to the new post-issuance review proceedings. The case may also be relevant and important for patent applicants involved in ex parte appeals because of what appears to be an increase Board decisions that implicitly turn on new grounds of rejection offered by the Board.
Tivoli first sued Tempo for patent infringement in 2004 and Tempo responded with the inter partes reexamination request. The district court was then stayed (and has been stayed up to now). Tivoli’s patent at issue here covers a reflective strip that is configured to mount on the “nose” of a stair-step. U.S. Patent No. 6,554,446. Both parties compete in the industry selling lighting products.
As the reexamination plodded along, the Examiner received input from each party and closed prosecution in 2009. The Board then heard the appeal in 2010 and finally issued a decision in 2012. In that final decision, the Board rejected the Examiner’s construction of the claim term “inert to light” but then relied upon the Examiner’s determination that the primary prior art reference lacks the “inert to light” limitation. In the rehearing, Tempo argued that, under the new construction, that the primary references now teach the inert to light limitation. However, the Board procedurally rejected that argument – finding that it was an attempt to argue for an alternative ground for unpatentability being brought in the rehearing.
On appeal, the Federal Circuit found it improper for the Board to directly rely upon the examiner’s factual finding regarding whether the prior art taught the inert to light limitation after it had modified the claim construction. “On remand, the PTO will have the opportunity to make new factual findings under the proper construction.”
A major difference here from traditional ex parte examination is that the reexamination examiner here expressly determined the claim construction. In the ordinary patent application situation, examiners do not spell-out their construction. At times, it may be advantageous to push for an explicit claim construction in the process of setting-up appeal.