Patent Law Practice Center

Prior Art Admission Burns Patentee in Reexam at CAFC

Recently, the Federal Circuit issued a non-precedential per curiam decision in an appeal from an inter partes reexamination.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.

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Post-Grant USPTO Proceedings Seminar Live Blog: Patent Trial, Appeal Board Transformation & AIA Implementation

Welcome to the Post-Grant USPTO Proceedings Seminar live blog! This morning’s panel is entitled Patent Trial, Appeal Board Transformation and AIA Implementation. The panel’s moderator is Oblon, Spivak Partner and seminar co-chair Scott A. McKeown, and the featured panelists are Hon. Robert Clarke, Chief of Staff, United States Patent and Trademark Office, Office of Patent Legal Administration, Oblon, Spivak’s Stephen G. Kunin, and  Irem Yucel, Director of the Central Reexamination Unit (CRU), USPTO. Here are some highlights:

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