Issue Preclusion for Patent Applicants

by Dennis Crouch

Blaise Mouttet is seeking a patent on his “Crossbar Arithmetic and Summation Processor.”  The invention is interesting because it is actually processor design. [17-2077.Opinion.12-6-2017]

Back in 2012, the Federal Circuit affirmed the PTO obviousness rejection of his pending claims in a parent application.  Following that negative outcome, Mouttet amended the pending CIP application to include the identical rejected claim.  The examiner and PTAB rejected that claim – finding that it “need not readdress the patentability of claim 25” since the identical claim had already been conclusively found obvious based upon the same references.  Mouttet then appealed to the Federal Circuit, and the court has affirmed – holding that Mouttet is not entitled to a reevaluation based upon his “new arguments” with respect to the prior art teaching.

Notably, the court includes important caveats — Mouttet could potentially get the claim reevaluated he had shown how the claim scope was different or if new secondary indicia of patentability were shown.

We have before us no new claim construction, or argument for a new claim construction, that would change the substance of the claimed invention at issue. Mr. Mouttet points to nothing in the specification of the [present] application that differs from the specification of the [adjudged parent] application and is material to the obviousness question. He has not presented any new evidence, whether concerning unexpected results, objective indicia, or anything else.

Here, the Federal Circuit applied issue preclusion:

  • Here, Mouttet is arguing about the combinability of Falk, Das, and Terpin. Those were “essential elements of the earlier determination of obviousness by the Board and this court.”
  • Mr. Mouttet had a “a full and fair opportunity to make his current contentions about obviousness when contesting obviousness of the identical claim in the earlier case.”
  • In these circumstances, it is proper to give the earlier determination of obviousness of claim 1 of the ’232 application preclusive effect to require rejection of claim 25 of the ’174 application.

The court here does not decide whether preclusion would also apply if the original obviousness rejection was based upon a PTAB decision that had not been appealed to the Federal Circuit.

Although losing on Claim 25, the Mouttet’s appeal was important because it forced the USPTO to drop its PTAB indefiniteness holding. The PTAB held that his claims 35-40 were indefinite because they merged statutory classes. On appeal, though, the solicitor conceded that the PTAB judgment was incorrect. The court agreed. The formerly problematic claim is written as a “35. A method of … using the processor of claim 1 … [to perform a series of steps].”

Note here that the PTAB had also substantially sided with Mouttet – reversing all of the examiner’s obviousness rejections.

= = = = =

Allowed Claim 1:

A processor comprising:

a crossbar array including row wires and column wires wherein bit patterns representative of numerical values are stored in a plurality of columns of the crossbar array and wherein the bit patterns store data in the form of high or low resistance states; and 

an output unit electrically connected to the rows of the crossbar array configured to sum the numerical values stored in the columns of the crossbar array. 

I´ll note that I am fairly confident that this allowed claim 1 is actually broader than claim 25 discussed above.  Wouldn’t issue preclusion also bar Mouttet’s case here (even if Mouttet is correct that both should be allowed)?

4 thoughts on “Issue Preclusion for Patent Applicants

  1. There’s only one person who uses zeros in place of the letter “o” on this page.

  2. The Examiners are instructed to reject the claims under the res judicata doctrine. MPEP 706.03(w)

  3. Pro se prosecution.

  4. Why bother even have issue preclusion if you can just reopen the litigation with new arguments.

    The whole point is judicial efficiency

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