My colleague Daniel Farris wrote this post about a case pending before the Federal Circuit that could have a significant impact on how retailers combat patent trolls in the USPTO.  Daniel is a part of my retail patent litigation team with strong technical experience related to internet and computer-based technologies. 

The Federal Circuit heard argument on April 6 in a case that looks to test the bounds of evidence that may be considered by the USPTO during an inter partes reexamination proceeding.  At issue in the case, styled Lingamfelter v. Kappos, et al., No. 11-1449 (Fed. Cir.), is whether the Board of Patent Appeals and Interferences may consider declarations from the employees of entities which are not participating in the inter partes reexamination.  This is especially important for retailers who source an accused product or internet widget from a vendor.  Without knowledge of the particulars of the accused technology, retailers must often rely upon information, and potentially declarations, from their vendors.

The patent-in-suit in Lingamfelter, titled “Container for providing easy access to beverage cans,” is for a type of 12-can carton with the break-away front corner which makes the transportation/storage and dispensing of canned beverages more efficient.  The patent issued in 2004 to inventor C. Brown Lingamfelter, who later sued MeadWestvaco Packaging Systems LLC and Graphic Packaging International Inc. for infringement.  The alleged infringers — packaging suppliers to Coca Cola and Miller Brewing Company — initiated inter partes reexamination proceedings in the USPTO.  During the re-exam, the USPTO allowed the suppliers to file written comments in response to the patentee’s position on validity.  The suppliers‘ filings included declarations from Coca-Cola and Miller employees, despite the fact that Coca-Cola and Miller were not parties to the re-exam. 

Based in part on the declarations of the Coca-Cola and Miller employees, which compared the prior art to the alleged invention, the examiner rejected several claims as anticipated or obvious.  The Board of Patent Appeals and Interferences affirmed the decision.  Lingamfelter appealed the decision, challenging not only the claims construction and patentability analysis performed by the examiner, but also the USPTO’s ability to accept written comments from individuals/entities which are not party to the inter partes reexamination proceeding.  Lingamfelter’s argument is essentially a due process argument, claiming that he did not have sufficient opportunity to cross-examine the declarants, or otherwise respond to the evidence that they submitted.  This, Lingamfelter claims, “puts patent owners at a substantial procedural and evidentiary disadvantage,” and “increases the possibility of cherry-picked or fraudulent evidence by third parties.”

The suppliers argue that the USPTO has accepted similar evidence from third parties during reexamination proceedings in the past.  They also argue that due process does not always include the right to cross-examine a witness or to otherwise conduct discovery, particularly in agency proceedings.  The suppliers also note that there is nothing in the legislative history of the Patent Act, allowing the USPTO to accept written comment, which would support the restrictive definition sought by Lingamfelter. 

For its part, the USPTO has taken the position that the appeal to the Federal Circuit is improper.  The USPTO argues that because the Patent Trial and Appeals Board does not have jurisdiction over the evidentiary issue, Lingamfelter should have petitioned the USPTO’s director, or otherwise sued the USPTO in a district court.  The USPTO further claims that Lingamfelter’s failure to do so should be considered a waiver. 

A victory for the suppliers in this case would confirm the existence of another tool for retailers in their fight against patent trolls.  We will keep an eye on the case and post about it as there are further developments.