Digest of Acme Scale Co. v. LTS Scale Co. , No. 2014-1721 (Fed. Cir. June 10, 2015) (non-precedential). On appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board. Before Wallach, Taranto, and Chen.

Procedural Posture: Appellant patent owner appeals the Board’s decision, on appeal from a reexamination request filed by LTS, that certain claims are not patentable as anticipated and obvious.  The Federal Circuit reversed and remanded.

  • Appellate Jurisdiction: The Federal Circuit has appellate jurisdiction over this case. Although a patentee must, as a mandatory matter, either reopen prosecution or request rehearing within one month from the date of any decision containing a new ground of rejection in order to avoid termination of the appeal proceeding as to the rejected claim, the parties to the appeal of a rehearing decision may choose to, as a permissive option, file a further request for rehearing of the new decision. It is not necessary to further request a rehearing on a rehearing decision in order to appeal.
  • Appellate Jurisdiction: The § 102 prior art reference, Bourgoin, is the only reference before the Federal Circuit, because Acme did not challenge on appeal the other bases for rejection which relied on the three other prior art references.
  • Claim Construction: During reexamination, the Board must use the “broadest reasonable interpretation” of the claims. The Federal Circuit reviews the Board’s interpretation to determine whether its construction is “reasonable.”
  • Anticipation: The Federal Circuit held that, under the broadest reasonable interpretation, a “material handling vehicle” does not include “a table with fitted rollers,” a device disclosed in a prior art, because, as opposed to the appellant’s claimed vehicle which was to be “positioned to move with the vehicle,” the prior art device was not intended for transport.
  • Obviousness: The Board failed to bisect the anticipation and obviousness inquiries during the rehearing. The Federal Circuit held that it would simply be unreasonable to view “a table with fitted rollers” as a device ‘doing’ the transporting as opposed to a device ‘being transported’ and consequently that a skilled artisan would not have viewed that prior art as teaching or suggesting that a “table fitted with rollers” could be used as a “material handling device.”

Note: Special thanks to Na Kyung Lee, a 2015 Kenyon summer law clerk.