Digest of AIRBUS S.A.S. v. FIREPASS CORP., No. 2014-1808 (Fed. Cir. July 17, 2015) (Precedential). On appeal from the U.S. Patent and Trademark Office. Before Lourie, Dyk, and Moore.

Procedural Posture: During inter partes reexamination, Appellant proposed that certain newly-added claims be rejected as unpatentable over prior art references that the Examiner previously determined had not raised a “substantial new question of patentability” (SNQP) with respect to the original claims of the patent. The Examiner declined to adopt the proposed rejections of the newly-added claims because the cited prior art references had already been found not to raise an SNQP. CAFC reversed this decision and remanded for further proceedings.

  • Review of New Claims During Reexamination Pre-AIA: The Federal Circuit agreed with the Appellant in finding that the SNQP test does not apply to new claims added during an inter partes reexamination. The Federal Circuit determined that Section 312(a) regarding the SNQP test does not apply to claims added or amended after the start of the reexamination. Therefore, the Examiner erred in evaluating the prior art references for an SNQP.
  • Prior Art Raised After Institution of Reexamination: The Federal Circuit held that 37 C.F.R. § 1.948(a)(2) limits the prior art that can be raised by a third-party requester in proposed rejections to newly-added or amended claims. Specifically, because § 1.948(a)(2) only allows the citation of additional prior art “which is necessary to rebut a response of the patent owner,” a third-party’s citation of additional prior art against a newly-added or amended claim should not be directed to claim limitations for which the prior art has already been considered either during original prosecution or in the request for reexamination. The Federal Circuit found that Appellant’s citation to prior art was necessary to rebut a response of the patent owner, and the Examiner must consider on remand whether the cited prior art references actually rebut the newly-added claims.