As the first-filed Inter Partes Review proceedings begin to advance down their respective paths, it will be some time before we have the benefit of learning from the PTAB’s final written decisions, let alone Federal Circuit review. In the meantime, it will be instructive to follow the appeals of inter partes reexaminations to learn how the Federal Circuit will treat decisions of the PTAB (formerly the Board of Patent Appeals and Interferences).
One such Federal Circuit decision was handed down on December 27, 2012 in C.W. Zumbiel Co., v. Kappos, (Reexamination No. 95/000,077). The underlying patent in this reexamination proceeding, US Patent No. 6,715,639, is directed to a box that holds containers, like soda cans. The figures of the ‘639 patent disclose the familiar, elongated soda cardboard box that can hold a 12-pack of soda, but also has a perforated flap that can be opened or torn off the box to expose the cans of soda.
In 2004, inter partes reexamination of the ‘639 patent was requested and, ultimately, the examiner rejected numerous claims as obvious, but also confirmed the patentability of several claims. The patent owner appealed this determination to the Board, and the Board found additional claims to be unpatentable, but confirmed the validity of several claims. Subsequently, appeal was taken to the Federal Circuit.
The Federal Circuit began its analysis by articulating its standard of review – the legal determination of obviousness is to be reviewed de novo, and the underlying factual findings are reviewed for substantial evidence. Then, in a very detailed analysis, but reminiscent of opinions reviewing an obviousness determination from a district court, the Federal Circuit affirmed the non-obviousness and obviousness findings by the Board.
Along the way, the Federal Circuit reiterated several legal principles that are worth recounting, if only for understanding the significant similarity between this analysis and that provided in review of district court litigation. First, the decision remarked that “[a]lthough the PTO gives claims the broadest reasonable interpretation consistent with the written description…claim construction by the PTO is a question of law that we review de novo…” Opinion at 18 (the Federal Circuit then went on to agree with the Board’s claim construction). Second, the Court rejected the patent challenger’s obviousness argument by pointing out that the proffered references teach away from the suggested combination (the prior art taught that the perforation line should be higher than 1/2 of a can height, but less than the full can height; the claimed invention required a perforation line between the first and second container). Third, the Federal Circuit found that the preamble was limiting based upon the fact that the claim depends on it for antecedent basis (“containers” recited in the claim body depend on “plurality of containers” from the preamble).
In the end, because the Federal Circuit agreed with the Board’s obviousness and non-obviousness determinations in the underlying inter partes reexamination, the Board’s decision was affirmed.