PTAB Overturned on Criticality of Broadened Claim Term in Reissue

“The Federal Circuit vacated the Board’s decision and ordered the Board, on remand, to address predictability and criticality of the claim term in question in order to determine whether the written description requirement has been satisfied.”

Judge Kara Stoll wrote the opinion of the Court. PTAB Overturned on Critically of Broadened Claim Term in Reissue

Judge Kara Stoll, Circuit Judge, Federal Circuit.

Global IP Holdings, LLC, the owner of U.S. Patent No. 8,690,233 (“the ’233 patent”), recently achieved a victory with the United States Court of Appeals for the Federal Circuit vacating a decision of the Patent Trial and Appeals Board (“Board”) and remanding the case for further proceedings. See In re Glob. IP Holdings LLC, No. 2018-1426, 2019 U.S. App. LEXIS 20049 (Fed. Cir. July 5, 2019) (Before Moore, Reyna, and Stoll, Circuit Judges) (Opinion for the Court, Stoll, Circuit Judge).

The ‘233 patent claims carpeted automotive vehicle load floors having sandwich-type composite panels with cellular cores. In one embodiment, the load floor refers to the back-side of a car seat, which operates as the trunk floor when folded down. The specification discloses that hinged panel is typically manufactured from a stack of material including “first and second reinforced thermoplastic skins 16 and 18, respectively, a thermoplastic cellular core 20 disposed between the skins 16 and 18 and a top layer of a substantially continuous covering layer generally indicated at 21.” The ’233 patent at col. 4 ll. 35–42.

This present ex parte dispute arose when Global filed a reissue application, seeking to broaden its claims in the ’233 patent by replacing the term “thermoplastic” with “plastic” in independent claims 1, 14, and 17. The examiner rejected certain reissue claims as failing to comply with the written description. Global argued on appeal to the Board that because of the well-established predictability of using plastics and its lack of criticality to the claimed invention, the written description requirement was satisfied.  Ultimately, the Board agreed with the examiner on appeal, holding that Global improperly attempted to broaden its claims by replacing “thermoplastic” with “plastic” in its claims because “plastic” was not disclosed in the specification of its patent.  Global timely filed an appeal with the Federal Circuit.

The Federal Circuit began by explaining that the written description requirement is met when the specification clearly allows persons of ordinary skill to recognize that the inventor has, in fact, invented what is claimed. Next, the Federal Circuit determined that the Board legally erred in its analysis of whether the ’233 patent complies with the written description requirement because it failed to consider the predictability of the technology when substituting the claims with alternatives, which informs the level of detail required to satisfy the written description requirement. Therefore, contrary to the Board’s reasoning, the predictability of substituting generic plastics for thermoplastics in the skins and cellular cores of vehicle load floors was relevant to the written description inquiry.

Furthermore, Judge Stoll explained that the Federal Circuit has previously held, some 36 years ago, that “criticality or importance of an unclaimed limitation to the invention can be relevant to the written description inquiry.”

Although victorious, Global did not achieve everything it wanted. Global had requested the Federal Circuit to simply overrule the Board. Judge Stoll, however, explained that there was not support in the record sufficient to determine whether the “plastic” claim limitation was critical or important. Therefore, the Federal Circuit vacated the Board’s decision and ordered the Board, on remand, to address predictability and criticality of the claim term in question in order to determine whether the written description requirement has been satisfied.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Gene Quinn

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

Gene Quinn

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

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Discuss this

There are currently 2 Comments comments.

  1. Josh Malone July 30, 2019 11:24 am

    It is really important to keep the patent bargain in view. If an inventor is going to publish her discovery, she has to have a viable exclusive rights in exchange. It has become too difficult for an inventor obtain fair scope and enforceable rights. In this case a competitor has been permitted to use the inventor’s teaching by making a trivial substitution. That is contrary to the purpose of the patent system. Competitors and their lawyers have been successful at undermining the bargain while using the essential concepts taught by the inventor to “get around” the patent.

    Rather, competitors should be encouraged to “get around” the patent by 1) reducing prices on the prior art and 2) creating new technology to compete with the inventor. Using the inventor’s teaching without authorization should be discouraged.

    This decision helps restore the bargain, though we have a very long way to go.

  2. Anon July 30, 2019 2:42 pm

    Absolutely Josh.

    A vibrant patent system is one in which BOTH a carrot and a stick is present.

    That being said, THIS case is not likely to be the poster child for “fair scope/trivial substitution” on the basis of written description.

    This is because — as filed — the inventor simply did not “describe” (let alone claim) the simple fact that for the attributes in the claim, that mere plastic served the same function/way/result as the — as filed — thermoplastic.

    Why do I phrase it like that? Well, there IS another path that does NOT involve any type of new matter concern, any type of description concern: the doctrine of equivalents. Please recall (not necessarily you, Josh – the larger audience): the “triple identity” test for the doctrine of equivalence [performs substantially the same function in substantially the same way to obtain the same result] which would provide that “plastic” suffices for the claimed term use of “thermoplastic.”