July 2014
Board Erred by Not Issuing New Ground of Rejection for Similar Claims When It Had Knowledge of the Rejection on Appeal
| Judges: Lourie (author), Bryson, Hughes |
| [Appealed from Board] |
In Q.I. Press Controls, B.V. v. Lee, Nos. 12-1630, -1631 (Fed. Cir. June 9, 2014), the Federal Circuit affirmed the Board’s decisions finding claims 61-72 of U.S. Patent No. 6,867,423 (“the ’423 patent”) invalid under 35 U.S.C. § 103; claim 18 invalid for failing to meet the written description requirement under 35 U.S.C. § 112, first paragraph; and claims 14 and 24 as not invalid for having met the written description requirement. The Court also vacated and remanded the Board’s decision upholding the validity of claims 1-60 of the ’423 patent under § 103.
Quad/Tech, Inc. (“Quad/Tech”) owns the ’423 patent, which relates to a visual inspection system for printing presses. The ’423 patent discloses an imaging system that uses an image sensor system containing an optical sensor to inspect printed pages (the “substrate”) for defects, such as misalignments or poor color, and to change the printing process to correct those errors. Claim 1 of the ’423 patent recites, among other things, an illumination system including “a plurality of LEDs . . . in a circular configuration.” Slip op. at 4. Claims 14 and 24 are similar to claim 1, but require that the “LEDs are disposed between the sensor and the substrate of the printing press.” Id. at 4-5 (citation omitted). Claim 18 is also similar to claim 1, but adds the requirement that “the substrate . . . is unsupported at the point where the substrate is configured to be illuminated by the illumination arrangement.” Id. at 5 (citation omitted). Claim 61 is representative of claims 61-72 and includes an illumination system including “a plurality of LEDs that are disposed in a configuration surrounding the optical communication path between the substrate and the image recording device.” Id. (citation omitted).
Q.I. Press Controls, B.V. (“Q.I. Press”) develops optical measure and control systems, including a product that Quad/Tech alleged to infringe the ’423 patent. Q.I. Press initiated an inter partes reexamination of the ’423 patent, asserting that the claims of the ’423 patent would have been obvious over various prior art references, including U.S. Patent No. 6,605,819 to Ross (“Ross”); U.S. Patent No. 6,668,144 to Maruyama (“Maruyama”); and U.S. Patent No. 4,887,530 to Sainio (“Sainio”). Ross discloses a circular LED lighting system around an optical sensor, with the LEDs being lit in four separate pairs of different colored lights. Maruyama discloses an optical sensor to visually analyze and gather data from a sheet lit by an LED lighting system in a photocopier or printer. Sainio discloses a system including an optical image scanner in a printing press to detect errors in the printing process using a high intensity light.
During reexamination of the ’423 patent, the examiner rejected original claims 1-12 over various combinations of prior art. Quad/Tech amended claims 5, 9, and 12, and added new claims 13-72. The examiner closed prosecution and made final rejections of all seventy-two claims, including claims 1-4, 7-15, 17, and 18 as obvious over Maruyama in view of Ross, and claims 61-64, 71, and 72 as obvious over Sainio in view of Ross. The remaining claims were rejected as obvious over these references, combined with other prior art. The examiner rejected claims 14, 18, and 24 for failing to satisfy the written description requirement under § 112, first paragraph. On appeal to the Board, the Board affirmed the examiner’s obviousness rejection of claims 61-72 and the rejection of claim 18 under § 112, first paragraph. The Board reversed the examiner’s obviousness rejection of claims 1-17 and 19-60 based on Ross and Maruyama. The Board also reversed the examiner’s rejection of claims 14 and 24 under § 112, first paragraph. Q.I. Press appealed the Board’s reversal of the examiner’s obviousness rejection of claims 1-17 and 19-60, and the written description rejection of claims 14 and 24. Quad/Tech cross-appealed the Board’s affirmance of the examiner’s obviousness rejection of claims 61-72 and the written description rejection of claim 18.
“[W]e do find that in this instance, in which nearly identical claims were found both valid and invalid due to similar combinations of prior art resulting in a Board opinion that was seemingly inconsistent, the Board erred by not considering the combination of Sainio and Ross as a new ground for rejection of claims 1-60.” Slip op. at 19.
On appeal, the Federal Circuit first addressed Quad/Tech’s cross-appeal of the Board’s finding that claims 61-72 of the ’423 patent were obvious. The Court noted that the “combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” Id. at 12 (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)). The Court explained that Sainio teaches a printing press incorporating a single high intensity illumination system used to detect misalignments in the printing press and to adjust the system accordingly, while Ross discloses a circular LED lighting configuration consisting of a plurality of LEDs surrounding an optical sensor. The Court agreed with the Board that it would have been obvious to modify Sainio with the teaching of Ross, in seeking alternatives to the single high intensity light of Sainio, to increase the number of light sources and utilize LEDs as in Ross. The Court also explained that incorporating multiple light sources would lead to the predictable result of a greater degree of illumination. The Court rejected Quad/Tech’s argument that Ross illuminated only two lights at a time, explaining that claims 61-72 of the ’423 patent do not require any specific sequence of lights to be lit—they only require a plurality of LEDs in a circular configuration, which was disclosed by Ross. The Court also determined that, although Q.I. Press’s marketing statements praising the circular LED configuration were relevant as objective indicia of nonobviousness, they did not alter the Court’s conclusion. The Court held that the Board did not err in concluding that claims 61-72 of the ’423 patent were invalid as obvious over Sainio and Ross.
The Court next addressed whether claim 18 failed to satisfy the written description requirement. The Court agreed with the Board that the ’423 patent does not provide support for the negative limitation “the substrate of the printing press is unsupported at the point where the substrate is configured to be illuminated by the illumination arrangement” recited in claim 18. The Court rejected Quad/Tech’s argument that Figures 1 and 2 of the ’423 patent provide support for this element of claim 18. The Court explained that while Figure 1 shows an unsupported substrate, it does not show an illumination system or its location. The Court also agreed with the Board that although the substrate in Figure 2 is depicted as “floating,” this depiction was inadequate without any reference or additional illustration of the roller hardware of the printing press. Therefore, the Court held that substantial evidence supported the Board’s conclusion that claim 18 was invalid due to inadequate written description.
The Court next addressed whether claims 1-60 would have been obvious. The Court first noted that claims 1-60 “differ only slightly from claims 61-72.” Id. at 17. The Court observed that claims 1-60 were rejected by the examiner over combinations of Maruyama and Ross, but claims 61-72 were rejected by the examiner over combinations of Sainio and Ross. The Court agreed with Q.I. Press that the Board’s findings that claims 61-72 were obvious while claims 1-60 were nonobvious were contradictory. The Court explained that, “[g]iven the minor differences in the claims themselves and similarities in the cited prior art, it seems apparent that the combination of Sainio and Ross discloses many of the elements of claims 1-60.” Id. at 18. The Court stated that it was “cognizant” that the Board may not have rejected claims 1-60 for obviousness over Sainio in view of Ross “because that rejection would have constituted a new ground for rejection on appeal.” Id. The Court noted that the Board has the discretion to issue a new ground of rejection if it has knowledge of one. The Court explained that when all of the references were before the Board, the Board should not permit inconsistent results when a proper challenge to that inconsistency is made on appeal. The Court stated that the Board should have noted the similarities between the claims and the references on appeal, analyzed whether the combination of Sainio and Ross would have rendered claims 1-60 obvious, and if so, issued a new ground of rejection. Since the combination of Sainio and Ross was before the Board to invalidate claims 61-72, and given the minor differences in the claims, the Court determined that the Board had knowledge of the grounds not raised in the appeal for rejecting claims 1-60. The Court held that the Board erred by not considering the combination of Sainio and Ross as a new ground of rejection of claims 1-60, vacated the Board’s decision that claims 1-60 were nonobvious, and remanded for further proceedings.
Finally, the Court agreed with Quad/Tech and the Board that claims 14 and 24 were supported by the written description of the ’423 patent. The Court noted, among other things, that Figure 2 of the ’423 patent shows an illumination system disposed between an image recording device, such as a sensor, and the substrate. The Court also explained that Figure 3 of the ’423 patent shows LEDs between the object being recorded (the substrate) and the image recording device. The Court then held that the Board’s conclusion that claims 14 and 24 were not invalid for lack of written description was supported by substantial evidence.
