Can Declaration Evidence be Considered “Written Comments”
Since the advent of inter partes patent reexamination (IPX), both Requesters and Patentees alike have relied upon declaration evidence to bolster their respective positions. Practically speaking, the lack of RCE practice in patent reexamination creates a limited prosecution window relative to the prosecution of patent applications. For this reason, submission of declaration evidence by Patentees under 37 CFR § 1.131 and/or 37 CFR § 1.132 is fairly routine in patent reexamination proceedings.
For Requesters, it is critical to respond to the declaration evidence of the Patentee in kind, especially as the Requester will be estopped from advancing failed arguments of the IPX in a district court or subsequent USPTO proceeding.
Despite this well established, declaration practice in IPX, a recent reexamination dispute before the CAFC questions the statutory propriety of Requester declaration submissions. The CAFC has recently heard arguments in the appeal of Lingamfelter v. Kappos, which is an appeal of a Board of Patent Appeals and Interferences (BPAI) ruling that invalidated a patent related to beverage packaging (6,789,673). The reexamination was requested by two packaging suppliers of Coca-Cola and Miller Brewing Co., which the Patentee sued for infringement.
The crux of the Patentee’s argument is that the Requesters improperly introduced declarations of Coca-Cola and Miller employees addressing the difference between the claimed invention and the prior art. Based in part on that evidence, the examiner rejected several claims as anticipated or obvious in light of the prior art, a finding that was affirmed by the BPAI.
Specifically, the Patentee challenges the acceptance of evidence from the Requesters, contending that the USPTO exceeded its authority by allowing the Requesters (suppliers, MeadWestvaco Packaging Systems LLC and Graphic Packaging International Inc.), to submit declaration evidence from Coca-Cola and Miller employees. According to the Patentee, while the inter partes reexamination statute permits the USPTO to accept “written comments” from Requesters, “comments” as recited in the relevant statute, does not embrace testimonial “evidence” of declarants. As no discovery is permitted in IPX proceedings, the Patentee argues that he is unable to demonstrate the inaccuracy of the submitted evidence (and testing).
The relevant portion of 35 U.S.C. 314 (B)(2) provides:
(2) Each time that the patent owner files a response to an action on the merits from the Patent and Trademark Office, the third-party requester shall have one opportunity to file written comments addressing issues raised by the action of the Office or the patent owner’s response thereto, if those written comments are received by the Office within 30 days after the date of service of the patent owner’s response.
The above argument did not appear to be given much in the way of serious consideration by either the USPTO or third party in their responsive briefs. (here and here). Yet surprisingly, the CAFC appeared to receive this argument quite favorably during the oral hearing. (here) The Court also seemed persuaded by the fact that the new statutes outlining Inter Partes Review (IPR) specifically distinguishes between “evidence” and “comments” and also provides for limited discovery. (as perhaps an indication that Congress was intending to address shortcomings of IPX)
Moreover, the Court found that there may not be Chevron deference accorded to the PTO’s proferred definition of “comments” as it did not appear the the agency had ever interpreted “comments” previously. Likewise, neither the PTO nor the Requesters had presented any evidence as to the practical realities of current declaration practice to exhibit such an agency supported definition of “comments.”
Should the CAFC reverse the BPAI on this issue it will create quite a mess for the USPTO….stay tuned.