Digest of In re Orbital Tech. Corp., No. 2014-1298, -1299 (Fed. Cir. Jan. 20, 2015) (non-precedential). On appeal from P.T.A.B. Before Reyna, Clevenger, and Wallach.

Procedural Posture: Patent Owner appealed from the Patent Trial and Appeal Board’s (“PTAB”) decision affirming an examiner’s rejection of the claims of two related patents directed to a method and apparatus of lighting an open-top marine habitat using an LED lighting system as obvious during ex parte reexamination. The Patent Owner also appealed the examiner’s use of a machine translation of the key prior art reference that was not provided to the Patent Owner before the close of reexamination. CAFC affirmed.

  • Waiver: Substantial evidence supported the PTAB’s determination that the Patent Owner waived its argument that it was improper for the examiner to use a machine translation of a Japanese patent publication when finding that there was a substantial new question of patentability. While the Patent Owner was not provided with a copy of the translation while reexamination was pending, it declined the examiner’s offer to reopen prosecution after an appeal was filed. In doing so, it chose to appeal the substance of the examiner’s findings and waived any objection it had to the use of the translation. The Patent Owner was also wrong to argue that the examiner’s offer to reopen reexamination was “conditional” and thus cannot give rise to waiver. While reopening prosecution could result in the mooting of some of Patent Owner’s current grounds for appeal, this does not mean that the offer to reopen prosecution was conditioned on Patent Owner’s waiving these grounds.
  • Obviousness: The PTAB’s determination of obviousness was also supported by substantial evidence. Each of the elements required by the claims was taught by a prior art reference (“Tomofuji”), except for an element requiring the use of LEDs rather than fluorescent lamps as the light source. The CAFC held that it would have been obvious to one skilled in the art to modify Tomofuji by replacing fluorescent bulbs with an LED light source, as taught in two other prior art references. The Patent Owner argued that substituting LEDs into Tomofuji’s system would not result in the claimed invention, that one of ordinary skill would not have combined the prior art, and that the machine translation of Tomofuji was too unclear to support a rejection. First, the prior art did teach all the required claim elements. In arguing to the contrary, the Patent Owner was interpreting the claim requirement that the bulbs be “mounted to” or “disposed on” a housing too narrowly. The claims were broad enough to embrace indirect attachment of the bulbs to the housing with an intervening reflector. Second, it would have been obvious to utilize LED bulbs with Tomofuji’s cooling system. While LED bulbs do generate less heat than fluorescent lamps, they nonetheless do generate some heat. Thus, the Board was correct when it found that the cooling system of Tomofuji provides an obvious benefit even when used with LED bulbs. Third, while the machine translation of Tomofuji was poor (and there may be cases where a machine translation will not be sufficient to provide evidence of a reference’s content), the translation in this case was adequate because the technology was simple and the reference included accompanying teachings in its figures.