Summary: CAFC vacated the Board’s holding that certain claims would not have been obvious and remanded.

Case: Q. I. Press Controls, B.V., v. Lee, No. 2012-1630, -1631 (Fed. Cir. June 9, 2014) (precedential). On appeal from Board of Patent Appeals and Interferences in Reexamination No. 95/000,526. Before Lourie, Bryson, and Hughes.

Procedural Posture: Third-party inter partes reexamination requester appealed decision allowing certain claims. Patentee cross-appealed decision rejecting certain other claims as invalid. CAFC vacated in part, affirmed in part, and remanded.

  • Obviousness (cross-appeal): The Board correctly held that certain claims were invalid as obvious. Two prior art references disclosed the claimed visual inspection system for printing presses, and combining the teachings of the prior art yielded predictable results. Noting that proffered evidence of non-obviousness must be assessed as part of the obviousness inquiry, even in the reexamination context, the patentee’s objective indicia of non-obviousness in the form of industry praise did not alter the court’s obviousness conclusion.
  • Obviousness (appeal): The Federal Circuit vacated the Board’s holding that certain claims would not have been obvious and remanded. The Board erred by not applying the combination of prior art references that invalidated one group of claims to another group of claims as a new ground for rejection because there were only minor differences between the two groups of claims.
  • Waiver: Appellant’s failure to argue to the Board that certain claims improperly expanded the scope of the patent in violation of 35 U.S.C. § 305 resulted in waiver of that argument.
  • Written Description (cross-appeal): The Board did not err in holding a claim invalid for failure to meet the written description requirement because substantial evidence supported the Board’s conclusion that the patent does not disclose a substrate unsupported at the point of illumination.
  • Written Description (appeal): The Board did not err in holding that two claims were not invalid for inadequate written description because the figures disclosed a sensor that is above the LEDs and printing press substrate. A sensor was inherently disclosed with the disclosure of an image recording device.

Nathaniel DeLucia