Opposition Brief — In re Lonardo

OCTOBER TERM, 1997

IN RE ROBERT LONARDO AND RESTORATIVE CARE OF

AMERICA, INC.

ON PETITION FOR A WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

BRIEF FOR THE RESPONDENT IN OPPOSITION

SETH P. WAXMAN

Solicitor General

NANCY J. LINCK FRANK W. HUNGER

Solicitor Assistant Attorney General

ALBIN F. DROST Department of Justice

Deputy Solicitor Washington, D.C. 20530-0001

JOHN M. WHEALAN (202) 514-2217

JOSEPH G. PICCOLO

KEVIN T. KRAMER

Associate Solicitors

U.S. Patent & Trademark

Office

Arlington, VA 22215

QUESTION PRESENTED

Whether the Commissioner of Patents and Trade-

marks may consider obviousness-type double patent-

ing during reexamination.

TABLE OF CONTENTS

Page

Opinions below .........-.:sccessesseeseeeeenesereeeiseeeeeneneneeneeeannees 1

JUTISGICCION ...............cccccssscccccccccccsccescccceessecsesecssesseeessees 1

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CORCHRBION ...<0cccccencccccscccscccnccccsscccescncccscsescvoccsocssseseccesoess 14

TABLE OF AUTHORITIES

Cases:

Crawford Fitting Co. v. J. T. Gibbons, Inc.,

ABZ U.S. 437 (1987) .......ccscccssscccccscvccccseceseceressesecsseees ~

Etter, In re, 756 F.2d 852 (Fed. Cir.), cert. denied,

474 U.S. 828 (1985) .........sccccccsscceccsssccceccesscccccssseeseees 12

Longi, In re, 759 F.2d 887 i, St 3) Seen 2

Portola Packaging, Inc., In re, 110 F.3d 786 (Fed.

CO: TIED nc ccndiseanhennenesmedwawensconosacensescenceccsssasacteseecces 12

Recreative Technologies Corp., In re, 83 F.3d 1394

(Fed. Cir. 1996) ..........ccccsscccscscccssscccersrecssorccesecseoeees 12

Wisniewski v. United States, 353 U.S. 901 (1957) ... 12

Statutes and regulation:

Uruguay Round Agreements Act, Pub. L. No

103-465, § 532, 108 Stat. 4894 (35 U.S.C. 104) ........... 3, 7

B35 U.S.C. 101 ............cccccsserersssoeceees mointinnilnecaiginanaawenes 3

BB U.S.C. 112 .........cccecccccccccccccccssssccssscccscsccccccceeees 2, 13-14

35 U.S.C. 154 ......ccccessccsssscccssccerseecccrsscccssseccsecceescesenens 3, 7

35 U.S.C. 154(b) ...........ccscceeeccceeeeeeeeeeeeeessnseseeeeeeneseeees 7

35 U.S.C. 154(c)(1) .........-. salnasiinintindigtie clibienttinieaesccvaninesip 3

35 U.S.C. 253 ........cceseeees ethitiihiiaiadedtinsianiionedininienemtencnitinaes 2

BE U.S.C. BBD .....ccccccrcccccccsscccccscccscccccsscceccsccccscosssooenees 12

BB U.S.C. B01 ..........cccsrsscccccccsscccccesssscccecssccsncscseseeees 8, 11

BB U.S.C. BOD ........cccrsccvscescccccscccccsccccesccscccovcsoveccsocess 8, 11

BB U.S.C. B08 ........ccccccsosccccccsscveccssccsssscsscccccosscescecenees 5, 8

(II)

IV

Statutes and regulation: Page

BB SEF; BOD sececeenesssasccsesiscnccatacsnsacelavetiiotace 8, 9-10, 11

BB CK FO scvesisescccssntsseccncssiasiassactossosossenssooenstoqcsinenn 13

FE Ge tie Re hesctsnvercscitviccdaceseonnteccnsesmnntenseaeesennintgl 13

Miscellaneous:

H.R. Rep. No. 1307, 96th Cong., 2d Sess. (1980) ...... 9, 10

In the Supreme Court of the Gnited States

OCTOBER TERM, 1997

No. 97-892

IN RE ROBERT LONARDO AND RESTORATIVE CARE OF

AMERICA, INC.

ON PETITION FOR A WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

BRIEF FOR THE RESPONDENT IN OPPOSITION

OPINIONS BELOW

The opinion of the court of appeals (Pet. App. la-

21a) is reported at 119 F.3d 960. The consolidated

opinions of the Board of Patent Appeals and Inter-

ferences (Pet. App. 26a-61a) are unreported.

JURISDICTION

The judgment of the court of appeals (Pet. App. 22a)

was entered on July 8, 1997. A petition for rehearing

was denied on August 29, 1997. Pet. App. 23a-25a. The

petition for a writ of certiorari was filed on November

28, 1997 (the day after a federal holiday). The jurisdic-

tion of this Court is invoked under 28 U.S.C. 1254(1).

STATEMENT

1. This case involves the doctrine of “obviousness-

type” double patenting. Prior to 1994, the expiration

date for the seventeen-year protection afforded to

(1)

2

patented inventions was calculated solely on the basis

of the date on which the patents were issued by the

Patent and Trademark Office (PTO). By contrast,

the effective filing date of a claim determined the pri-

ority of the issued patent.’ Accordingly, if a patentee

filed an application for an invention that was not

patentably distinct from a previous invention, and if

the second application had the same effective filing

date as the original invention, then patentees could

effectively increase the term of protection Congress

intended to afford to a patented invention. To fore-

stall this result, inventors are precluded by the

doctrine of “double patenting” from obtaining addi-

tional valid patents for patentably indistinct inven-

tions unless they forgo the increased period of

protection by filing a terminal disclaimer under 35

U.S.C. 253.2 See In re Longi, 759 F.2d 887, 892 (Fed.

Cir. 1985).

1 The effective filing date of an application turns upon

when all of the necessary support for a claim on an invention is

disclosed in the specification pursuant to 35 U.S.C. 112. Thus,

a patentee’s second claim, although filed after the patentee’s

original claim, could have the same effective filing date as the

original claim.

2 Section 253 provides in relevant part:

A patentee, whether of the whole or any sectional

interest therein, may, on payment of the fee required by

law, make disclaimer of any complete claim, stating therein

the extent of his interest in such patent. Such disclaimer

shall be in writing, and recorded in the Patent and Trade-

mark Office * * *.

In like manner any patentee or applicant may disclaim or

dedicate to the public the entire term, or any terminal part

of the term, of the patent granted or to be granted.

Obviousness-type double patenting concerns a pat-

entee’s attempt to obtain a second patent for claims

that are not patentably distinct from the claims of the

first patent and thereby obtain an unwarranted ex-

tension of his patent term. Pet. App. lla. Generally,

obviousness-type double patenting involves multiple

applications with the same effective filing date for

patents on similar devices.’ Rejections of patent ap-

plication claims for obviousness-type double patenting

are based on the patentee’s earlier issued patent.

Although such a patent is a printed publication, it is

not technically “prior art” to the rejected application

claims since the patent and the application at issue

have common filing dates. See Pet. App. 1la-12a.

Congress has effectively diminished the problems

associated with double patenting with the enactment

in 1994 of the Uruguay Round Agreements Act, Pub.

L. No. 103-465, § 532, 108 Stat. 4984 (codified at 35

U.S.C. 154). The Act changed the prior 17-year

patent term and provides that the patent term be

measured from the date of filing. Under the Act, for

patents in force on or applied for before June 8, 1995,

the patent term will be the greater of: (1) twenty

years from the date of filing the application; or (2)

seventeen years from the date of issuance. See 35

U.S.C. 154(c)(1). Accordingly, with the passage of the

Uruguay Round Agreements Act, cases, such as the

present, involving obviousness-type double patenting

will increasingly disappear from the legal landscape.

3 “Same invention” double patenting is based upon 35 U.S.C.

101, which prohibits a patentee from obtaining more than one

patent for a single invention. Pet. App. lla. Same invention

double patenting is not at issue in this case.

2. Petitioner is the inventor/assignee of expired

U.S. Patent Re. 33,762 (’762), as well as U.S. Patent

No. 5,269,748 (’748), U.S. Patent No. 5,298,013 (’013),

and application serial no. 08/218,756 (’756), all of which

are directed to a therapeutic leg and foot device. See

Pet. App. 2a-4a. Specifically, the claimed invention

consists of an L-shaped cast that is attached to a

patient’s foot using an open-heeled sandal. Jd. at 3a-

4a. The novelty of the claimed invention is that the

L-shaped cast is configured such that a space exists

between the right angle portion of the cast and the

patient’s heel, thus preventing sores from forming on

a bedridden patient’s heel. See ibid.

In 1970, petitioner filed his original application for a

patent for the therapeutic leg device. The patent on

that original invention was issued in 1976. Pet. App.

27a. Thereafter, petitioner applied for other patents

for a therapeutic leg device. Petitioner, however, did

not disclose to the PTO the relation of the subse-

quent applications to the 1976 patent on the original

invention. As a result, patents based upon the subse-

quent applications were issued in 1993 and 1994. See

id. at 26a, 37a. Petitioner’s subsequent applications

claim the same effective filing date as the original

invention, 1970. Accordingly, the protection for the

patents for petitioner’s subsequent applications would

begin in 1993 and 1994, and their priority would be

calculated on the basis of 1970. Thus, if successful,

petitioner would have effectively circumvented the

limits of the protection Congress intended to provide

to new inventions.

It is undisputed that the PTO had statutory author-

ity to reject, in the first instance, the claims of the

subsequent applications on grounds of double patent-

ing. However, because petitioner failed to disclose to

the PTO the obvious relation of the subsequent ap-

plications to the original patent, the PTO never

considered the issue of double patenting prior to the

issuance of the patents in 1993 and 1994. Pet. App.

34a.

Thereafter, third parties requested that the PTO

reexamine the 1993 and 1994 patents. The PTO con-

ducted a reexamination proceeding for both peti-

tioner’s ’748 and 7013 patents during which the patent

examiner rejected all of the claims at issue based on

the doctrine of double patenting in view of petitioner’s

expired ’762 patent. See Pet. App. 62a-73a, 95a-105a.

For similar reasons, the examiner also rejected the

sole claim of the original ’756 application. Jd. at 106a-

116a. In each case, the examiner determined that the

claims were not patentably distinct from the claims of

the ’762 patent and that if they were allowed, peti-

tioner would be improperly extending the term of his

expired ’762 patent. Jd. at 64a-66a, 97a-99a, 108a-110a.

Since petitioner’s ’762 patent, which is the basis for

the double patenting rejections, has expired, a termi-

nal disclaimer could not cure the rejections. Jd. at

lla.

Petitioner appealed the examiner’s decisions to the

Board. Relying on the language of Section 303 of

Title 35 and its own precedent, the Board determined

that the Commissioner may consider double patenting

during reexamination. See Pet. App. 28a-29a, 39a-40a.

The Board then rejected all of the claims since they

would have been obvious in view of the expired claims

of petitioner’s ’762 patent.‘ Jd. at 29a-34a, 42a-47a.

4 The examiner’s initial decision made reference to a doc-

trine of “non-obvious double patenting” in the rejection of

petitioner’s claims (Pet. App. 68a), and petitioner’s arguments

6

The Board also determined that if any of the claims

were allowed, petitioner would be improperly extend-

ing the term of his expired ’762 patent. Jd. at 30a-32a,

40a-42a.

Petitioner then appealed to the Federal Cir-

cuit. The court affirmed, holding that “the PTO was

authorized during reexamination to consider the

question of double patenting.” Pet. App. 18a. The

court based its holding on the language of the re-

examination statute, its legislative history, and the

purpose underlying the doctrine of double patenting.

The court then reached the merits of the case and

determined that the claims of petitioner’s ’748 patent

(id. at 14a-16a), 013 patent (id. at 16a-17a), and 756

application (id. at 17a-18a) were all invalid based on

obviousness-type double patenting in view of peti-

tioner’s expired ’762 patent. The court of appeals

determined that each of the additional limitations

contained in the claims was “an obvious modification

of the device defined in the ’762 claims.” Jd. at 15a. In

addition, the court of appeals determined that since

petitioner’s expired ’762 claims were “species” (i.e., a

subset) of the broader “genus” claims on appeal, the

claims were invalid. /bid. Finally, the court held that

there was “no patentable distinction” between the

claims at issue and the claims of petitioner’s expired

in its petition to this Court in part turn upon whether this is a

basis on which the PTO may reject a claim. Pet. 13-17. On

appeal of the examiner’s decision, however, the Board con-

cluded that petitioner's second application was an instance of

obviousness-type double patenting. Hence, the Federal Circuit

correctly concluded that petitioner’s contentions regarding

non-obviousness double patenting were not relevant to its

decision. Nor are they relevant here in petitioner’s quest for

review of that decision. Pet. App. 14a.

7

"762 patent. Ibid. Judge Newman dissented in part,

because in her view “[djouble patenting is not a

ground of rejection that is permitted to be raised

under the reexamination statute.” Jd. at 19a.

ARGUMENT

Further review of this case is not warranted. Due

to a change in the patent laws, the primary issue

raised by petitioner has little prospective importance.

Moreover, the court of appeals’ decision rejecting all

claims based on obviousness-type double patenting is

correct and does not conflict with any decision of this

Court or any other court of appeals.

1. In 1994, Congress amended the patent laws to

require that the patent term be measured from the

date of filing. See Uruguay Round Agreements Act,

Pub. L. No. 103-465, § 532, 108 Stat. 4984 (codified at 35

U.S.C. 154). That change in law effectively cures the

double patenting problem for applications with the

same effective filing date. As a result of the Act, most

applications filed on or after June 8, 1995, which issue

as patents will expire twenty years from the applica-

tion’s effective filing date. 35 U.S.C. 154. Thus, ex-

cept for those few patents eligible for a term exten-

sion under 35 U.S.C. 154(b), for most such applica-

tions filed after June 8, 1995, the resulting patents

will expire on the same date. Consequently, in most

cases a patentee will no longer be able to extend his

patent term through double patenting. This change

in law greatly diminishes the prospective importance

of the primary issue presented in this case.

2. The court of appeals’ decision is correct and

is fully consistent with the language of the re-

examination statute. That statute authorizes the

Commissioner to reexamine an issued patent when he

8

determines that a “substantial new question of paten-

tability” exists. 35 U.S.C. 303(a). Although reexami-

nation may be requested by any person based on

“prior art consisting of patents or printed publica-

tions,” 35 U.S.C. 301 and 302, the Commissioner

determines whether a substantial new question of

patentability exists “with or without consideration of

other patents or printed publications.” 35 U.S.C.

303(a). Moreover, on his own initiative, “the Commis-

sioner may determine whether a substantial new

question of patentability is raised by patents and

publications discovered by him.” Ibid. (emphasis

added).

By its plain terms, Section 303(a) provides that in

determining whether a substantial new question of

patentability exists to initiate a reexamination pro-

ceeding, the Commissioner may consider “other

patents or printed publications” in addition to those

cited pursuant to Sections 301 and 302. 35 U.S.C.

303(a). In addition, Section 303(a) provides that at

any time, the Commissioner himself may determine

whether a substantial new question of patentability

exists based on “patents and publications discovered

by him.” bid. As petitioner concedes (Pet. 9-10), the

language of Section 303(a) does not restrict the Com-

missioner to considering only prior art. Upon

comparing the language of Sections 301 and 302 with

that of Section 303, the court of appeals correctly

determined that Congress did not intend that the

phrases “patents and publications” and “other patents

or printed publications” in Section 303(a) should be

limited to prior art patents or printed publications.

Pet. App. 12a. Cf. Crawford Fitting Co. v. J. T. Gib-

bons, Inc., 482 U.S. 437, 445 (1987) (noting this Court’s

9

longstanding practice of construing statutes on the

same subject matter together or “in pari materia”).

3. The legislative history of the reexamination

statute supports the court of appeals’ reading of the

statute’s plain meaning. See Pet. App. 12a-13a. That

history indicates that, in determining the scope of

reexamination, Congress gave particular considera-

tion to issues of cost and administrative expertise.

See H.R. Rep. No. 1307, 96th Cong., 2d Sess. 3-4 (1980)

(“Reexamination will permit efficient resolution of

questions about the validity of issued patents without

recourse to expensive and lengthy infringement liti-

gation. * * * A new patent examination procedure is

needed to permit the owner of a patent to have the

validity of his patent tested in the Patent office where

the most expert opinions exist and at a much reduced

cost.”). Thus, although Congress did not provide for

reexamination to address all validity issues, it did

authorize reexamination in those areas within the

PTO’s everyday expertise that rely on evidence that

is both readily available and best considered by the

PTO—1.e., patents and printed publications. See Pet.

App. 12a-18a.

Double patenting, which involves an examination

based on the patentee’s readily available other pat-

ents, is precisely the type of issue Congress meant to

be considered during reexamination. See H.R. Rep.

No. 1307, supra, at 7 (reexamination statute “would

permit the Commissioner to initiate reexamination

without a request upon a determination that a sub-

stantial new question of patentability is raised by

patents or publications discovered by him or cited

under the provisions of Section 301”); Pet. App. 13a.

As the court of appeals correctly observed, such con-

sideration of “patents or printed publications,” 35

10

U.S.C. 303(a), comports with the PTO’s expertise and

does not significantly increase the cost of reexamina-

tion. See Pet. App. 13a (“[T]he cost of examination is

not significantly increased by having the PTO con-

sider the ground of double patenting, as it involves

issues of claim identity and obviousness, well within

the PTO’s everyday expertise.”).

In addition to cost and agency expertise, Congress

was also concerned with limiting potential harass-

ment of patentees by third parties. H.R. Rep. No.

1307, supra, at 4 (“Patent office reexamination will

greatly reduce, if not end, the threat of legal costs

being used to “blackmail” [patent] holders into allow-

ing patent infringements or being forced to license

their patents for nominal fees.”); Pet. App. 12a. Con-

gress thus limited third parties to challenges based

on “prior art.” However, Congress’s concerns over

harassment of patentees by third parties is inapplica-

ble to the Commissioner’s reexamination of obvious-

ness-type double patenting, since the primary basis

for such a reexamination is the patentee’s own prior

patent, readily available for review and well within

the Commissioner’s expertise. Accordingly, the

court of appeals properly concluded that Congress’s

objectives, as expressed in the Act’s legislative his-

tory, are best served by having the PTO, as opposed to

a district court, consider questions of double patent-

ing in the first instance. Ibid.”

5 Petitioner’s attempt (see Pet. 9-10) to exclude the consid-

eration of double patenting from reexamination by relying on

the phrase “preexisting technology” as it appears in the legis-

lative history is not persuasive. The particular discussion in

the legislative history relied upon by petitioner states that the

“new procedure will permit any party to petition the patent

office.” H.R. Rep. 1307, supra, at 3, (emphasis added). Neither

11

4. As noted by the court of appeals, and as this case

illustrates, the public interest is best served by

allowing the Commissioner to consider issues con-

cerning double patenting during reexamination since

the continued maintenance of a patent that is invalid

based on double patenting would be an imposition on

the public. Pet. App. 13a.

In this case, petitioner has not explained why the

"762 patent was not discussed during the initial

examination of the ’748 or ’013 patents. The informa-

tion about the interrelation of the relevant applica-

tions was within petitioner’s knowledge, and would

not generally be known to the examiner absent peti-

tioner’s referring to the issue. Thus, precluding the

Commissioner from raising the issue during re-

examination would reward petitioner’s nondisclosure

by allowing petitioner to maintain the ’748 and ’013

patents despite the fact that the ’762 patent—which

covers a patentably indistinct invention-—has already

expired. Such a result would enable petitioner to

exclude others from practicing the claimed invention

for an unwarranted extension of time, unless and

until a potential infringer is willing to undergo costly

litigation. Moreover, the result petitioner seeks

would encourage applicants to withhold double patent-

ing information from the PTO during original pro-

secution based on the knowledge that the PTO could

not address the issue later during reexamination.

the statute nor its legislative history, however, contemplates

having the Commissioner petition his own office to initiate

reexamination. Thus, this discussion relates to the procedures

in Sections 301 and 302, which cover requests for reexamina-

tion by “any person,” not Section 303(a), which covers the

Commissioner’s determination in reexamination. See 35 U.S.C.

301-303(a).

12

5. Contrary to petitioner’s assertion, the court of

appeals’ decision is fully consistent with its prior

case law. In any event, any inconsistency in that

court’s own decisions would be for the court of

appeals, rather than this Court, to resolve. Wis-

niewski v. United States, 353 U.S. 901, 902 (1957).

Petitioner contends that the court’s decision is

inconsistent with its previous decisions in In re

Etter, 756 F.2d 852 (Fed. Cir.) (en banc), cert. denied,

474 U.S. 828 (1985), In re Recreative Technologies

Corp., 83 F.3d 1394 (Fed. Cir. 1996), and In re Portola

Packaging, Inc., 110 F.3d 786 (Fed. Cir. 1997). How-

ever, none of those cases involved the issue of double

patenting. In addition, prior to this case, the court of

appeals never addressed the issue of whether the

Commissioner may consider double patenting during

reexamination.

Etter held that 35 U.S.C. 282, which deals with the

presumptions and defenses involved in district court

patent litigation, is not applicable to reexamination

proceedings. 756 F.2d at 858. In Recreative Tech-

nologies, the court of appeals held that the Commis-

sioner is barred on reexamination from considering

“questions of patentability that were decided in the

original examination.” 83 F.3d at 1398. In Portola

(authored by same judge as the present opinion

(Lourie, J.)), the court determined that during re-

examination, the Commissioner may not consider

questions based on art previously cited during the

patent’s initial examination. 110 F.3d at 789. Here, by

contrast, since the issue of double patenting was

never raised and the ’762 patent was not even con-

sidered during the original prosecution of petitioner’s

748 and ’013 patents, neither Recreative Technolo-

13

gies nor Portola suggests the Commissioner is bar-

red from considering the issue during reexamination.

6. Petitioner’s argument (Pet. 17-20) that reexami-

nation should be limited to only those specific issues

recited in the reexamination order is without merit.

Nothing in the statute, legislative history, or regula-

tions suggests that the Commissioner must order a

new reexamination each time a new issue arises. In

fact, new issues often arise during reexamination

since the patentee is free to amend his claims. Even

petitioner notes that only 24 percent of patents

reexamined survive with no changes to the claims.

Pet. 7. Thus, new issues almost always arise in re-

examination. Moreover, petitioner’s argument is

inconsistent with the statutory requirement that

reexamination proceedings “be conducted according

to the procedures established for initial examination.”

35 U.S.C. 305. Under such procedures, the PTO

examination “will be as complete as possible as to all

matters.” 37 C.F.R. 1.105. Finally, since petitioner

was given both ample notice as well as several

opportunities to respond to the double patenting re-

jection, petitioner was in no way unfairly prejudiced

by the Commissioner’s procedure in this case.

7. Petitioner’s argument regarding claim con-

struction (see Pet. 20-22) goes to the specific facts of

this case, not to a question of law. Petitioner defined

an element of his claims using “means-plus-function”

language.° Specifically, the claims recite a “means

® Section 112 provides that an element of a claim may be

expressed in terms of a means or step for performing a speci-

fied function, instead of being expressed in terms of its struc-

ture. This Section requires that such claims “shall be

construed to cover the corresponding structure * * *

14

for releasably securing” the cast to the patients’ foot.

Means-pius-function language is interpreted by con-

sidering the specification. Here, petitioner’s specifi-

cation discloses an open-heeled sandal as the means

for securing the cast to the patient’s foot. Thus, the

court of appeals correctly construed the means for

securing claim language as including the open-heeled

sandal disclosed in petitioner’s specification. In any

event, that fact-specific matter does not warrant this

Court’s review.

CONCLUSION

The petition for a writ of certiorari should be

denied.

Respectfully submitted.

SETH P. WAXMAN

Solicitor General

NANCY J. LINCK FRANK W. HUNGER

Solicitor Assistant Attorney General

ALBIN F. DROST

Deputy Solicitor

JOHN M. WHEALAN

JOSEPH G. PICCOLO

KEVIN T. KRAMER

Associate Solicitors

U.S. Patent & Trademark

Office

JANUARY 1998

described in the specification and equivalents thereof.” 35

U.S.C. 112.