In re Construction Equipment Company


Docket No. 2010-1507

NEWMAN (D), PROST, O’MALLEY
December 8, 2011

Brief summary: Regarding obviousness, the FC agreed with the Examiner (and the BPAI) that the “alleged invention consists entirely of combining known elements into a machine that, while possibly new, was nevertheless obvious.” It also found the reexamination to be proper even though the patent had been previously litigated by the parties, noting that neither had briefed that issue at any stage of the case.

Summary: Construction Equipment Company (CEC) appealed rejection of its claims directed to a vehicle for screening debris based on size from soil or dirt for obviousness. In 2000, CEC obtained an injunction against Powerscreen which apparently filed the request for reexamination. The FC identified no error in the BPAI decision, concluding that “CEC’s alleged invention consists entirely of combining known elements into a machine that, while possibly new, was nevertheless obvious and therefore unpatentable.” Judge Newman’s dissent argued that a final decision was reached earlier (Const. Equip., FC 2000 (cert. denied 531 U.S. 1148 (2001)), and that the PTO should not be allowed to consider “the same issue that we finally adjudicated eleven years ago”. The majority disagreed because: 1) neither party briefed or argued the issue at any stage of the case; 2) it disagreed that constitutional principles or claim / issue preclusion would bar reexamination (In re Swanson, FC 2008 (DC decision regarding infringement not incompatible with Examiner’s rejection decision); and, 3) a finding that a patent is not invalid in one proceeding against one party does not bar other validity challenges (“would be a dramatic expansion of the concept of non-mutual offensive collateral estoppel”).

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