In re: Riggs, Appeal No. 2022-1945 (Fed. Cir. Mar. 24, 2025)

Our Case of the Week explores the power of an examiner to request a rehearing after the Board has entered a decision on an application. The case also relates to determining when the filing date of a provisional patent application can be used for a non-provisional patent publication as a prior art reference under pre-AIA § 102(e)(1).

The application at the center of the present controversy, US Patent Application No. 11/005,678, with a priority date of July 28, 2000, addresses methods for logistics systems and transportation of goods. Initially, the examiner rejected the application for lack of novelty and obviousness based on the reference “Lettich” applied as prior art under pre-AIA law. Lettich is a printed publication of a U.S. non-provisional patent application with a priority claim to a provisional application filed April 27, 2000. The applicants appealed the examiner’s initial rejections. On the initial appeal, the Board sided with the applicants, but applied an incorrect analysis to determine that Lettich counted as prior art. Upon learning of the Board’s incorrect analysis on the prior art, the examiner requested a rehearing.

The applicants filed a complaint in the US District Court for the Eastern District of Virginia to challenge the examiner’s request. The District Court dismissed and the Federal Circuit affirmed. The Board completed the rehearing and, the second time, agreed with the examiner, finding that Lettich did serve as prior art and that the patent application should be rejected. The applicants appealed the Board’s second-round decision, which prompted the current case. On appeal, the applicants raised three different issues: (1) whether the Board’s decision was ultra vires, (2) whether the Board had properly afforded Lettich the earlier filing date of the related provisional application, and (3) whether substantial evidence supported the Board’s findings and rejection. The Federal Circuit decided the case on the first two issues and did not address the third.

On the first issue, the Federal Circuit found the applicants were estopped from arguing the Board had acted ultra vires by the Federal Circuit’s prior decision. In the prior decision, the Court had found the examiner’s request for rehearing was permitted under MPEP § 1214.04 and within ordinary agency action as well as the Director’s authority. Further, the time limits outlined in MPEP § 1214.04 regarding requests for rehearing bind only the applicant, not the USPTO.

The Federal Circuit then discussed whether the Board had properly determined that Lettich qualified as prior art. There was no dispute that Lettich is a non-provisional patent application publication that claims priority to a provisional application. However, whether Lettich was entitled to the priority date of the provisional application was disputed. The examiner and Board had used MPEP § 2136.03 and case-law precedent to decide that, since at least one claim in the Lettich non-provisional publication could rest on written description support in the provisional application, the priority date could be used as the prior art date. The Federal Circuit reasoned this was actually not the correct analysis and stated the appropriate test was more nuanced: the examiner and Board should instead have shown the provisional application had written description for the sections of the non-provisional publications which were actually used to support the specific 102 and 103 rejections. In other words, to qualify as prior art as of the priority date of the provisional application, the portion of the non-provisional publication relied on by the examiner as prior art for a rejection had to be supported by the provisional application.

Therefore, the Federal Circuit vacated and remanded the Board’s decision for it to determine whether the Lettich provisional application provides written description for the specific disclosures in the Lettich non-provisional publication that the examiner had identified and relied on in the prior art rejections.

The opinion can be found here.

By Ann Bernert

ALSO THIS WEEK

Wash World Inc. v. Belanger Inc., Appeal No. 2023-1841 (Fed. Cir. Mar. 24, 2025)

In an appeal from a $9.8 million jury verdict finding infringement by appellant Wash World of an automated car wash patent, the Federal Circuit affirmed in part, vacated in part, and remanded. In its opinion, the panel considered whether Wash World had preserved various arguments presented on appeal, and deferred to substance over form in its findings. The Court found that two of Wash World’s proposed claim constructions on appeal were materially different from the constructions it had pressed in the proceedings below, so those arguments had been forfeited.

However, the Court found a third claim construction dispute had been preserved, notwithstanding it had not been referred to as a “claim construction” issue before the district court. The Federal Circuit also found Wash World had effectively presented its $2.6 million remittitur request in detailed post-trial arguments that the jury’s award was excessive, though Wash World had never directly asked the lower court for a remittitur in that amount. Having reviewed the preserved arguments, the panel affirmed the district court’s implicit claim construction on the merits, but agreed with Wash World that the damages award had improperly included $2.6 million in lost profits for purported “convoyed sales” that did not qualify as such. Accordingly, the Court affirmed the judgment of infringement but vacated and remanded the damages award for remittitur.

The opinion can be found here.

By Jason A. Wrubleski

This article summarizes aspects of the law and does not constitute legal advice. For legal advice with regard to your situation, you should contact an attorney.