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Anticipatory Nonpatent Publications Are Presumed Enabled

11-1465
July 27, 2012

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Last Month at the Federal Circuit - August 2012

Judges: Rader, Lourie (author), Bryson

[Appealed from: Board]

In In re Antor Media Corp., No. 11-1465 (Fed. Cir. July 27, 2012), the Federal Circuit affirmed the Board’s decision rejecting on reexamination claims of U.S. Patent No. 5,734,961 (“the ’961 patent”) as anticipated or obvious.

Antor Media Corporation (“Antor”) owns the ’961 patent, which relates to a method and apparatus transmitting information recorded on digital disks from a central server to subscribers via a high data rate telecommunications network. In a consolidated five-way ex parte reexamination, the PTO rejected all claims under reexamination as anticipated or obvious over four prior art references. Antor appealed to the Board, arguing that the claims were not obvious or anticipated and that two of the references were not enabled. The PTO did not present any rebuttal evidence regarding enablement. The Board found that Antor did not show that the references were not enabling nor required undue experimentation. Antor appealed.

Antor argued that the Board erred by holding that prior art publications cited by an examiner are presumptively enabling during prosecution. The Court noted that “both claimed and unclaimed materials disclosed in a patent are presumptively enabling . . . in the district court as well as the PTO, placing the burden on the patentee to show that unclaimed disclosures in a prior art patent are not enabling.” Slip op. at 7 (citing Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003)). The Court extended this holding to find that “a prior art printed publication cited by an examiner is presumptively enabling barring any showing to the contrary by a patent applicant or patentee.” Id.

“[D]uring patent prosecution, an examiner is entitled to reject claims as anticipated by a prior art publication or patent without conducting an inquiry into whether or not that prior art reference is enabling.” Id. at 10. The Court held that “[a]s long as an examiner makes a proper prima facie case of anticipation by giving adequate notice under § 132, the burden shifts to the applicant to submit rebuttal evidence of nonenablement.” Id.

Regarding the rejections, the Court found that the Board thoroughly reviewed Antor’s allegations regarding the enablement of the Ghafoor reference. Antor did not rebut the presumption that Ghafoor was enabling, because it did not show that undue experimentation would be needed to practice the claimed invention. The Court held that “the mere use of forward-looking language (such as terms like ‘should’) does not show one way or another whether a person of ordinary skill in the art would have to engage in undue experimentation to perform the claimed invention.” Id. at 11. “[T]he verb tense and word choice used in a prior art reference, taken without an understanding of the state of the art and the nature of the invention, shed no light on enablement.” Id.

In response to Antor’s argument that the MINOS reference is not enabling, the Court noted that a reference can qualify as prior art in determining obviousness, independent of enablement. The Court held that the claims were obvious, and that the Board correctly found that Antor’s licenses proffered for secondary consideration of nonobviousness were insufficient to overcome the prima facie case of obviousness. “[W]ithout a showing of nexus, ‘the mere existence of . . . licenses is insufficient to overcome the conclusion of obviousness.’” Id. at 18-19 (second alteration in original) (quoting Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1324 (Fed. Cir. 2004)).

Summary authored by Troy L. Gwartney, Esq.