Recently, the Federal Circuit issued a non-precedential per curiam decision in an appeal from an inter partes reexamination. Chief Judge Rader, Judge Newman and Judge Dyk were on the panel.

Victor Manuel Celorio Garrido appealed from a decision of the Patent Trial and Appeal Board relative to the inter partes reexamination of U.S. Patent No. 6,213,703. The Board affirmed the Patent and Trademark Office (“PTO”) examiner’s rejection of all but six claims as anticipated or obvious over the prior art. Garrido appealed to the Federal Circuit, arguing that the Board erred by relying on prior art references that were not published or publicly accessible prior to the filing date and by failing to address alleged misconduct by the requestor.  The Federal Circuit panel concluded that the Board did not err and that the claims of misconduct were unsupported.

The ’703 patent, which claims priority to a predecessor application filed on October 3, 1997, is directed to an “Electronic Bookstore Vending Machine” for printing and binding books on demand. The ’703 patent’s specification explains that the invention is a step-by-step method and a system for formatting, printing, and binding books, magazines, or other printed material.

Claim 1 recites:

A system for producing and distributing books, comprising:

an input means for inputting requests for one or more books,

a plurality of printing and binding means for printing and binding a book upon receipt of data corresponding to a book’s content and control data, and

at least one distribution unit which receives a request for a selected book and causes said data corresponding to a book’s content and control data to be transferred to said printing and binding means, wherein at least one of said at least one distribution unit and at least one of said plurality of printing and binding means are geographically separated.

The other independent claim, claim 12, recites:

A method for producing and distributing books, comprising the following steps:

creating a plurality of electronic text files corresponding to a plurality of books such that each electronic text file corresponds to one book’s content;

storing said plurality of text files;

allowing a customer to order one or more of said plurality of books; and

transmitting the electronic text files corresponding to the ordered book(s) to a device capable of printing and binding said ordered book(s),

wherein said device capable of printing and binding said ordered book(s) comprises:

a receiving means for receiving data corresponding to a book’s content;

a formatting means for formatting the book’s content into a book distribution;

a printing means for printing the book’s content on paper sheets upon receipt of a signal from said receiving means;

a clamping means for clamping the printed sheets into a book block; and

a glueing means for applying glue to a spine of the book block,

wherein said ordered books are printed and bound such as to allow the customer to pick-up the ordered book(s).

In November 2008, Bob Holt (“Holt”) requested that the PTO initiate an inter partes reexamination of all claims of the ’703 patent. Holt asserted, among other things, that the claims were anticipated or obvious over combinations of prior art references disclosing various print-on-demand systems. The examiner issued a non-final office action rejecting various claims under 35 U.S.C. § 102(b) and § 103. Garrido responded, contending that the references were inapposite or not prior art.

Over the course of the reexamination, Garrido amended or added approximately 90 claims. In December 2009, the examiner issued a final decision confirming six of these claims and rejecting the rest as obvious over or anticipated by Wallace and the other references. Garrido petitioned to reopen the prosecution, arguing that the examiner erred by treating Wallace as a section 102(b) prior art reference. The petition was denied and Garrido timely appealed to the Board.

On appeal to the Board, the Board held that Wallace was not a section 102(b) prior art reference, because its December 16, 1996, publication date did not predate the ’703 patent’s priority date of October 3, 1997, by a full year. However, it was determined that the Wallace reference was properly available as prior art under section 102(a) because Garrido had failed to show reduction to practice or diligence prior to October 3, 1997.

The problem Garrido had on appeal to the Federal Circuit was that he admitted below that the Wallace reference was published on December 16, 1996, the date of its copyright registration. At the Federal Circuit, he tried to argue that this was a typographical error or attorney argument. The Federal Circuit pointed out, however, that the Board may rely on a patentee’s repeated concessions against interest, as they did here. Further, the panel explained that a patentee cannot advocate one position during reexamination, and then, when that position has been accepted by the PTO, reverse its position on appeal.

In a last ditch effort, Garrido tried to argue that the Wallace reference could not be considered publicly available as of the date of its copyright. The Federal Circuit, however, noted that Garrido’s repeated concession to the Board was not that the Wallace reference was available due to it being copyrighted, but rather simply that it was published on December 16, 1996.

Tags: CAFC, Federal Circuit, patent, Patent Trial Appeal Board, patents, PTAB, Reexamination

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