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June 25, 2009

Paid As Used

Richard P. Mettke got 5,602,905, claiming a "public on-line, pay-as-you-use communications terminal." He wanted his claims directed to the Internet, so he filed for reissue, pursuant to 35 U.S.C. §251, "submitting with his application a declaration stating that he believed the '905 patent to be 'wholly or partly inoperative or invalid by reason of me claiming less than I had the right to claim.'" Naturally, Obzilla stomped on it, with the help of three interested potential infringers slipping the PTO previously uncited art. Not content to have his patent act as a rug, Mettke persisted. The stomping never stopped.

In re Richard P. Mettke (CAFC 2009-1125) non-precedential

Richard P. Mettke appeals the decision of the Board of Patent Appeals and Interferences affirming the examiner's rejection of the sole remaining claim (claim 6) in his application for reissue of U.S. Patent No. 5,602,905. Ex parte Mettke, Appeal 2008-0610 (B.P.A.I. Sept. 30, 2008). The Board concluded that claim 6 would have been obvious in light of any of several different combinations of references, and was therefore properly rejected under 35 U.S.C. §103(a).

Obviousness is a legal conclusion based on underlying findings of fact. In re Thrift, 298 F.3d 1357, 1363 (Fed. Cir. 2002). The factual inquiries relevant to obviousness are set forth in Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966), and include (1) the scope and content of the prior art, (2) the differences between the prior art and the claims, (3) the level of ordinary skill in the relevant art, and (4) any objective indicia of non-obviousness such as commercial success, long felt need, and failure of others.

Mettke apparently hadn't heard the shout of KSR: "A court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions."

Mr. Mettke criticizes the Board's finding that the field of endeavor is "pay-for-use public communication terminals," arguing that this field was too broad and led the Board to consider non-analogous art.

But the prior art was analogous, even as four references were used for invalidation. The capper was "article by Rawn Shah titled 'Suggestions for Information Kiosk Systems using the World Wide Web.'"

The Board found that the Shah reference teaches the addition of the sole remaining element: "means for accessing the Internet." Shah describes "a kiosk based information system using the World Wide Web on the Internet as an interface."

Mettke, delusional, argued otherwise.

Mr. Mettke argues, as he did before the Board, that the Shah reference does not disclose "accessing the Internet" at all. He contends that the PTO "grossly misinterpret[ed] the Shah prior art," and that Shah "teaches away from accessing the Internet." Petr.'s Br. 6. He contends that Shah's discussion of the World Wide Web is limited to the use of a Web "browser" to access only limited information on a "standalone network," meaning one that is not connected to the larger Internet. The Board considered these contentions, and rejected them based on the text of the Shah reference, finding that Shah plainly discloses an information kiosk that uses the "World Wide Web on the Internet as an interface." Board op. at 22 (quoting Shah, abstract). Shah mentions access to the Internet expressly and repeatedly, as the Board explained. Substantial evidence supports the Board's reading of the content of the Shah reference and its application, as analogous art, to claim 6.

Mettke got a response about hindsight, but not the one hoped for.

Mr. Mettke contends the Board engaged in hindsight analysis, using his patent as a blueprint for the combination of elements from various sources. Mr. Mettke is correct that the selective hindsight combination of references that show various elements of the claim generally does not suffice to establish obviousness. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) ("[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.").

But the Board's analysis included more than a combination of disparate references disclosing different elements, for the Board explained why Shah teaches the very combination of elements that Mr. Mettke sought to claim. The Board found that Shah does not merely disclose "accessing the Internet" as a general matter; Shah expressly teaches Internet access in connection with information and communication kiosks--the kinds of public communication terminals described in Exhibits E and F. Shah provides explicit support for the Board's finding that a person of ordinary skill would have been motivated to modify existing information kiosks or terminals to provide access to the Internet.

The final cup of weak tea was arguing non-obviousness because of commercial success.

Mr. Mettke also states that "over 50% of all [now-existing] kiosks have all of the elements" of claim 6, suggesting commercial success. The Board found that Mr. Mettke failed to establish a "nexus" between this asserted wide use and his invention. See In re Paulsen, 30 F.3d 1475, 1482 (Fed. Cir. 1994) ("When a patentee offers objective evidence of nonobviousness, there must be a sufficient relationship between that evidence and the patented invention."). We note that when the commercially successful device is the claimed invention itself, there is a presumption of nexus. See Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). However, the Board found that Mr. Mettke failed to meet his burden because he has not shown that the alleged commercial success is due to the claimed invention. We conclude that the evidence of obviousness was not, in this case, rebutted by the asserted commercial success.


Posted by Patent Hawk at June 25, 2009 1:23 PM | Prior Art


Actually, Mr. Mettke's argument is sound except it doesn't relate to the claim. He argues "accessing the internet" is not disclosed. He's right. Unfortunately for him, "means for accessing the internet" are disclosed.

Method steps should never have been allowed into product claims, even under 112 6th.

This man is yet another example of why.

Posted by: 6000 at June 25, 2009 2:10 PM

My kingdom for a continuation...

Posted by: Steve M at June 25, 2009 4:54 PM

Two words: substantial evidence.

Posted by: step back at June 25, 2009 11:40 PM

Thanks for the flattering comments. I was naïve in thinking that the CAFC was anything more than a rubber stamp of the BPAI. I viewed them as guys in white hats. This was dragged out for more than 10 years in the patent office and came back the original prior art that the examiner cited as making my application obvious, two pay fax machines(basically) and the Shah article. Which DOES not teach accessing the Internet! I think I dissected that article enough times (Examiner, BPAI and CAFC) to assist in its interpretation, to no avail. I think a first year law student would have understood my dissection. The CAFC and Patent office did not. The CAFC did not address a lot of areas in my brief that were blatantly improper actions by the BPAI:
-The BPAI improperly pulled prior art back in to the case which had been reviewed and ruled out by the Examiner as prior art that would negate a reissue.
- The BAPI improperly added material (Internet Navigator, Aliens, and On Haiti) to the “closed” record, and conducted research, i.e. Wikipedia and then relied on their flawed technical expertise. As if I needed any help…There were over 50 pieces of prior art submitted by third parties.
- The BPAI stated case law, “A nexus is required between the merits of the claimed invention and the evidence of secondary considerations in order for the evidence to be given substantial weight in an obviousness decision. The burden of proving a nexus is on the applicant , the PTO lacks the means or resources to gather evidence which supports or refutes the applicant's assertion” I told the CAFC this BPAI argument should hold no weight. The BPAI, throughout the review of reissue prosecution took the time to conduct research outside of the record and insert it into the record. How can they then quote case law that says that is up to me because they don’t have the time? No comment by the CAFC other then referencing some other secondary obvious case law. They need to get their story straight. That will be a bone to pick in my rehearing request.
There are many more areas in my brief that the CAFC left out and did not address related to BPAI improprieties…….So I guess they don’t want to the world know it condones the BPAI’s improper actions. What are my next steps?
Well I am going to ask for a rehearing first and if it is denied, an enbanc rehearing…..I hate to have to go to the Supreme Court to help interpret the Shah paper. The CAFC denied my request to present oral arguments (maybe I could have helped interpreting the Shah article). That will be point one in my rehearing request. If anyone is interested in the Shah paper or my Brief, please let me know (email: rmettke@aol.com). I thought the brief was a winner……… Rick Mettke

Posted by: Rick Mettke at June 26, 2009 5:23 PM

Regarding "Shah reference does not disclose 'accessing the Internet' at all.": based on the limited disclosure I agree (it's not really explicitly stated), however I'd bet money that whatever Shah was working on actually accessed the internet.

It's also worth pointing out that "Kiosks: A Technological Overview" (Jan 10 1995) does teach pay-for-internet kiosks.

Posted by: 2600examiner at June 27, 2009 4:45 PM