Docket No. 2014-1808
LOURIE, DYK, MOORE
July 17, 2015
Brief Summary: PTAB dismissal of Airbus’ cross-appeal dismissed vacated and remanded because “the determination of a substantial new question of patentability is irrelevant to new claims proposed by a patentee during the course of” IPR (on remand the Examiner must consider whether Airbus’ submission rebuts the addition of new claims 91-94 by Firepass).
Summary: Airbus appealed from PTAB dismissal of its cross-appeal during IPR regarding Firepass’ US 6,418,752 relating to the use of hypoxic compositions for preventing and extinguishing fires for lack of jurisdiction. Firepass brought suit against Airbus in 2009 and Airbus filed a request for IPR in 2011. The PTO granted the request with respect to anticipation of certain ‘752 claims in view of the “Kotliar” patent but denied it with respect to obviousness. The DC stayed litigation pending resolution of the IPR. During examination, Firepass amended its claims and Airbus then proposed obviousness rejections which was denied, although the Examiner rejected those claims for lack of written description. Firepass appealed on this point and Airbus cross-appealed regarding the denial of its obviousness arguments. The Board denied Airbus’ request, finding third parties could only appeal “examiner final decisions that are ‘favorable to the patentability’ of any claim, including new claims” (35 USC 134(c), 315(b), 37 CFR 41.61(a)(2)). It also confirmed the dismissal was not based on the denial regarding the original claims but only the Examiner’s determination regarding the new claims. The FC panel agreed that an examiner’s decision that a proposed rejection failes to raise a substantial new question of patentability “is not a patentability decision, favorable or otherwise; it is a substantial new question decision” and not appealable. However, it also determined that since IPR had already been instituted by the time Airbus alleged obviousness of the new claims, the Examiner was required to consider Airbus’ submission under 37 CFR 1.948(a)(2) (prior art submitted “to rebut a response of the patent owner”; “the determination of a substantial new question of patentability is irrelevant to new claims proposed by a patentee during the course of” IPR). Thus, on remand the Examiner must consider whether Airbus’ submission rebuts the addition of new claims 91-94 by Firepass.
