Federal Circuit Ruling May Rein In Patent Re-Examinations

A federal appeals court ruling may curb the growing trend of using re-examinations to challenge other parties' patents.

In In Re Suitco Surface Inc., the U.S. Court of Appeals for the Federal Circuit remanded a U.S. Patent and Trademark Office rejection of some claims in a patent re-examination. The PTO's interpretation of Suitco's patent claim for "material for finishing the top surface of the floor" was "unreasonably broad," wrote Circuit Judge Randall Rader.

Rader noted that case law requiring the PTO to give claims "their broadest reasonable construction" does not give the PTO "an unfettered license to interpret claims to embrace anything remotely related to the claimed invention," Rader wrote. "Rather, claims should always be read in light of the specification and teachings in the underlying patent."

Suitco will be a frequently cited case for patent lawyers helping clients fight re-examinations, said Steven Moore, an intellectual property litigation partner in the Stamford, Conn., office of New York's Kelley Drye & Warren, who wasn't involved in the case.

"It's a fight that we all have with the patent office," Moore said. "If it's in your specification and you've used it in a particular manner, that's what should rule, not this broadest-interpretation concept."

Seeking a re-examination of the patent is "almost a knee jerk reaction" for defendants in patent infringement cases, he added.

"With the number of re-exams being allowed by the patent office, if you're in litigation you almost always have a re-exam," Moore said.

The PTO's Board of Patent Appeals and Interferences had affirmed the patent examiner's rejection of two of claims in Suitco's floor finishing material patent. The invention, which is "a thin plastic sheet placed over a floor surface connected by an adhesive layer," is used on various types of athletic courts.

The patent's protracted litigation history began in 1996, when Middleton Inc., the exclusive licensee of the patent at issue, sued 3M Co. in the Northern District of Illinois. The district court granted 3M a summary judgment of non-infringement ruling, which the Federal Circuit vacated and remanded in 1999.

After the district court granted 3M another summary judgment on different grounds, the Federal Circuit remanded the case again in 2002.

The Illinois court transferred the case to the Southern District of Iowa in September 2003. In 2004, 3M launched a PTO re-examination proceeding of Suitco's patent.

The patent examiner rejected four claims in Suitco's patent based on prior art, or evidence of prior inventions using the same technology, that 3M submitted to the agency.

After the PTO's patent appeals board affirmed the patent examiner's rejection of two Suitco's claims, Suitco filed its Federal Circuit appeal.

Defendants hit with a patent infringement suit frequently ask the PTO to re-examine the patent holder's patent. In fiscal 2009, 591 third parties requested patent re-examinations, compared to 358 in fiscal 2005.

Suitco attorney George Summerfield of Stadheim & Grear Ltd. in Chicago did not return a call for comment. The PTO declined to comment.

Kevin Rhodes, 3M's chief intellectual property counsel, said "it remains to be seen what will happen on remand to the patent office.

"The Federal Circuit only interpreted the claim -- it did not apply any prior art to the properly interpreted claim," he said. "We look forward to the patent office's consideration of both anticipation and obviousness."

Gregory Novak, managing partner and CEO of the Washington-based intellectual property boutique Novak Druce + Quigg, played down the ruling's significance. He said that the decision "essentially says the examiner was not a reasonable examiner." Novak wasn't involved in the case, but a patent re-examination specialty has fueled the firm's growth in recent years.

Novak didn't agree with lawyers who represent patent owners who are saying "the PTO has been slapped down." Novak said it was significant that the Suitco re-examination case was filed prior to existence of the PTO's central re-examination unit and was not decided by that division.

"The Federal Circuit simply cautioned and reined in the examiner [and reaffirmed] that they are bound by case law about how the patent is to be interpreted and read," he said.