January 24, 2013
Rexnord Industries got an inter partes reexam on 6,523,680, which claims a radius conveyor belt system, after patent holder Habasit accused Rexnord of infringement. The examiner crucified the patent on the alter of prior art, but the PTO Board resurrected it, holding the patent valid. Rexnord appealed to the CAFC.
Rexnord Industries v. Kappos and Habasit Belting (CAFC 2011-1434) precedential; Judges Newman (author), Lourie and Prost
Rexnord had "fully raised before the examiner" an obviousness argument, but "these references were not again a patentability issue until after the Board reversed the examiner."
When Habasit appealed the examiner's decision, Rexnord was not barred from presenting this argument in defense of the examiner. The PTO states in its brief on this appeal:
Just as this Court does not entertain arguments made outside of appellant's opening brief, see, e.g., In re Watts, 354 F.3d 1362, 1367 (Fed. Cir. 2004); In re Schreiber, 128 F.3d 1473, 1479 (Fed. Cir. 1997), the Board has a rule that similarly bars the presentation of new arguments outside appellant's opening brief (absent circumstances not alleged here), see 37 C.F.R. § 41.79(b).
PTO Br. 24. We observe that Rexnord was not the appellant before the Board, and that the premise is an incorrect statement of the appellate process. On judicial review, the correctness of the decision appealed from can be defended by the appellee on any ground that is supported by the record, whether or not the appellant raised the argument. See Jaffke v. Dunham, 352 U.S. 280, 281 (1957) ("A successful party in the District Court may sustain its judgment on any ground that finds support in the record."); Glaxo Group Ltd. v. TorPharm, Inc., 153 F.3d 1366, 1371 (Fed. Cir. 1998) ("an appellate court may affirm a judgment of a district court on any ground the law and the record will support so long as that ground would not expand the relief granted"); Datascope Corp. v. SMEC, Inc., 879 F.2d 820, 822 n.1 (Fed. Cir. 1989) ("Appellees always have the right to assert alternative grounds for affirming the judgment that are supported by the record."); Bio-Rad Labs., Inc. v. Nicolet Instrument Corp., 807 F.2d 964, 969 (Fed. Cir. 1986) ("a court of appeals may affirm the judgment of a district court on any ground, including grounds not relied upon by the district court").
The PTO Board was overturned in its refusal to entertain argument and evidence in light of preserving error.
The Board erred in declining to consider the references presented for reexamination, and in declining to consider Rexnord's arguments in support of the examiner's decision. The Board's decision is reversed as to obviousness, and the examiner's reexamination decision is reinstated. The Board's decision as to anticipation is affirmed.
Posted by Patent Hawk at January 24, 2013 12:26 PM | Prosecution