Conversant Wireless Licensing S.a.r.l.Download PDFPatent Trials and Appeals BoardMay 15, 20202020001874 (P.T.A.B. May. 15, 2020) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/762,594 02/08/2013 Jussi KUISMA 29771-US-REI 1126 100809 7590 05/15/2020 Conversant Wireless Licensing Ltd. 5830 Granite Parkway #100-247 Suite 247 Plano, TX 75024 EXAMINER CRAVER, CHARLES R ART UNIT PAPER NUMBER 3992 NOTIFICATION DATE DELIVERY MODE 05/15/2020 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): ipadmin-core@conversant-wireless.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JUSSI KUISMA and SISKO PIHLAJAMAKI Appeal 2020-001874 Application 13/762,594 Patent 7,886,007 B2 Technology Center 3900 Before ALLEN R. MacDONALD, JOHN A. JEFFERY, and MICHAEL J. ENGLE, Administrative Patent Judges. ENGLE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting reissue claims 1–20, which are all of the claims pending in this reissue application. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Conversant Wireless Licensing S.a r.l. as the real party in interest. Appeal Br. 3. Appeal 2020-001874 Application 13/762,594 U.S. Patent No. 7,886,007 B2 2 TECHNOLOGY The application relates to transmitting multimedia messages between a multimedia messaging center and a terminal, including notification messages. Spec. Abstract. ILLUSTRATIVE CLAIMS Issued claim 1 of U.S. Patent No. 7,886,007 B2 (“the ’007 Patent”) is reproduced below with emphasis added to show the differences from reissue claim 1 as initially filed: 1. A method comprising: transmitting a first message wirelessly to a multimedia messaging centre, the first message requesting the multimedia messaging centre to transmit a notification message to a terminal only for multimedia messages addressed to the terminal that have arrived at the multimedia messaging centre and for which the terminal has not received a notification message yet, and only for multimedia messages for which a notification message has been sent and an acknowledgement message from the terminal has not yet been received by the multimedia messaging center, wherein said first message comprises an option to define a selection criterion so as to limit information to be sent in response to said first message; and sending the notification message to the terminal, wherein the notification message is a message to which a response is sent from the terminal for receiving the actual multimedia message. In this reissue application, Appellant sought to change “sending . . . to” to be “receiving . . . at.” Reissue claim 1 as initially filed is reproduced below emphasizing this as the only difference from issued claim 1: Appeal 2020-001874 Application 13/762,594 U.S. Patent No. 7,886,007 B2 3 1. A method comprising: transmitting a first message wirelessly to a multimedia messaging centre, the first message requesting the multimedia messaging centre to transmit a notification message to a terminal only for multimedia messages addressed to the terminal that have arrived at the multimedia messaging centre and for which the terminal has not received a notification message yet, and only for multimedia messages for which a notification message has been sent and an acknowledgement message from the terminal has not yet been received by the multimedia messaging center, wherein said first message comprises an option to define a selection criterion so as to limit information to be sent in response to said first message; and receiving the notification message at the terminal, wherein the notification message is a message to which a response is sent from the terminal for receiving the actual multimedia message. REJECTION Reissue claims 1–20 stand rejected under 35 U.S.C. § 251 as being broadened in a reissue application filed outside the two year statutory period. Final Act. 4. ANALYSIS The issues before us are (1) whether reissue claim 1 as initially filed was broader than the issued patent, in particular issued claims 1 and 16 and (2) if so, whether presenting a broadened reissue claim with no further express statement about broadening constitutes an unequivocal indication of intent to broaden. Appeal 2020-001874 Application 13/762,594 U.S. Patent No. 7,886,007 B2 4 Background of the Law & Facts By statute, “[n]o reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.” 35 U.S.C. § 251(d) (emphasis added). According to the Manual of Patent Examining Procedure (9th ed. Rev. 08.2017, Jan. 2018) (“MPEP”), “[a] reissue application filed on the 2-year anniversary date from the patent grant is considered to be filed within 2 years of the patent grant.” MPEP § 1412.03(IV) (citing Switzer v. Sockman, 333 F.2d 935, 937–38 (CCPA 1964) for a similar rule in interferences). Here, Appellant filed the reissue application on February 8, 2013, exactly two years after the grant of the patent on February 8, 2011. Thus, the MPEP treats Appellant’s reissue application as “within two years from the grant of the original patent.” In addition to filing a reissue application within the two-year period, the Federal Circuit has held that the applicant must provide some kind of notice within that same time period that the reissue is broadening. In re Graff, 111 F.3d 874, 877 (Fed. Cir. 1997) (“the reissue statute requires that proposals to broaden a patented invention must be brought to public notice within two years of patent issuance”). In Graff, the Federal Circuit rejected an applicant’s argument that § 251 “requires only that a reissue application was on file before the two years had elapsed” and that it therefore was “irrelevant” that his “broadened claims were first filed more than two years after patent grant.” Id. Instead, the Federal Circuit held that “[t]he interested public is entitled to rely on the absence of a broadening reissue application within two years of grant of the original patent.” Id. Appeal 2020-001874 Application 13/762,594 U.S. Patent No. 7,886,007 B2 5 The MPEP expands on this notice: “Where any intent to broaden is unequivocally indicated in the reissue application within the two years from the patent grant, a broadened claim can subsequently be presented in the reissue after the two year period.” MPEP § 1412.03(IV); see also In re Staats, 671 F.3d 1350, 1356–57 (Fed. Cir. 2012) (O’Malley, J., concurring) (“Consistent with § 251’s language and legislative history, all PTO governing rules and regulations have—for decades—made clear that any timely intent to broaden via reissue permits subsequent attempts to broaden via continuation practice authorized under Title 35.”). Often, this intent is indicated in an inventor’s oath or declaration. See 37 C.F.R. § 1.175(b) (“If the reissue application seeks to enlarge the scope of the claims of the patent (a basis for the reissue is the patentee claiming less than the patentee had the right to claim in the patent), the inventor’s oath or declaration for a reissue application must identify a claim that the application seeks to broaden.”). Here, there is no dispute that the reissue claims were broadened by later amendments (i.e., more than two years after the patent issued). See Ans. 3–4, 6. The only dispute is whether Appellant provided sufficient notice of intent to broaden within two years of the patent’s issuance. Appellant’s substitute statements in lieu of an oath or declaration from the inventors do unequivocally express an intent for broadening, but those statements were not submitted until August 7, 2013, which was more than two years after the patent issued. Unlike those statements, Appellant’s initial filing on February 8, 2013, did not expressly say the reissue application was broadening. The Examiner therefore rejected all claims for Appeal 2020-001874 Application 13/762,594 U.S. Patent No. 7,886,007 B2 6 broadening in a reissue application outside the two-year statutory period. Final Act. 4. Appellant argues that reissue claim 1 (as initially filed) was broader than issued claim 1. Appeal Br. 8–11. Appellant further contends that if the change to claim 1 “is considered a broadening amendment, this amendment indicates an unequivocal intent to broaden.” Reply Br. 3. Whether Reissue Claim 1 (As Initially Filed) Is Broader Than Issued Claim 1 The Examiner determines that reissue claim 1 (as initially filed) is actually narrower than issued claim 1, not broader. Ans. 6. In particular, reissue claim 1 (as initially filed) is exactly the same as issued claim 1 except for replacing “sending the notification message to the terminal” with “receiving the notification message at the terminal.” See Amendment 3 (Feb. 8, 2013). The Examiner explains that “sending a message does not require that the message actually be properly received,” whereas “receiving” requires that the message was both sent and received, and therefore “receiving” is narrower than “sending.” Ans. 6. From a purely scientific perspective, the Examiner may well be right that if every step in reissue claim 1 (as initially filed) is performed, then every step in issued claim 1 also would be performed by someone somewhere. However, we agree with Appellant that the Examiner is not applying the proper test for broadening. The Federal Circuit has set forth the test for broadening as follows: A claim of a reissue application is broader in scope than the original claims if it contains within its scope any conceivable apparatus or process which would not have infringed the original Appeal 2020-001874 Application 13/762,594 U.S. Patent No. 7,886,007 B2 7 patent. A reissue claim that is broader in any respect is considered to be broader than the original claims even though it may be narrower in other respects. Medtronic, Inc. v. Guidant Corp., 465 F.3d 1360, 1374 (Fed. Cir. 2006) (quotation omitted). Thus, we must look to whether there is any process which would not have infringed issued claim 1 that would infringe reissue claim 1 (as initially filed). Applying this infringement test, we agree with Appellant that the change from “sending” to “receiving” can substantively change the infringement analysis. Appeal Br. 9–11; Reply Br. 4–6. For example, direct infringement requires acts “within the United States.” 35 U.S.C. § 271(a). More specifically, “a process cannot be used ‘within’ the United States as required by section 271(a) unless each of the steps is performed within this country.” NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1318 (Fed. Cir. 2005). Applying this to the claims here, if the recipient was in the United States but the sender was not, then issued claim 1 would not be directly infringed because the “sending” step was not performed “within the United States.” However, reissue claim 1 (as initially filed) would be directly infringed because the “receiving” step was “within the United States.” Thus, even though the two claims likely would involve the same underlying acts (i.e., sending and receiving), the reissue claim, by changing the perspective of the actor, can change not only who directly infringes, but also whether direct infringement occurs. See also MPEP § 1412.03(I) (“A claim would be considered a broadening claim if the patent owner would be able to sue any party for infringement who previously could not have been sued for infringement.”). Appeal 2020-001874 Application 13/762,594 U.S. Patent No. 7,886,007 B2 8 Because reissue claim 1 (as initially filed) contains within its scope a conceivable process which would not have directly infringed issued claim 1, reissue claim 1 (as initially filed) is broader than issued claim 1. Whether Reissue Claim 1 (As Initially Filed) Is Broader Than Issued Claim 16 The Examiner determines that even if reissue claim 1 (as initially filed) was broader in scope than issued claim 1, it still was not “broader in scope than the broadest issued claim, e.g. claim 16.” Ans. 8. We agree with the Examiner that “a claim is not a broadened reissue claim if it is narrower than, or equal in scope to, any other claim which appears in the patent.” Id. As the MPEP states, “[a] broadened reissue claim is a claim which enlarges the scope of the claims of the patent, i.e., a claim which is greater in scope than each and every claim of the original patent.” MPEP § 1412.03(I) (emphasis added). Nevertheless, we agree with Appellant that reissue claim 1 (as initially filed) is broader than issued claim 16. See Appeal Br. 10. Issued claim 16 is reproduced below with emphasis added: 16. A system comprising: means for transmitting a first message, wirelessly from a terminal to a multimedia messaging centre, the first message requesting the multimedia messaging centre to transmit a notification message to the terminal only for multimedia messages addressed to the terminal that have arrived at the multimedia messaging centre, and for which the terminal has not received a notification message yet and only for multimedia messages for which a notification message has been sent but for which an acknowledgement has not yet been received in the multimedia messaging centre, wherein said first message comprises an option to define a selection criterion so as to limit information to be sent in response to said first message and the Appeal 2020-001874 Application 13/762,594 U.S. Patent No. 7,886,007 B2 9 notification message is a message to which a response is sent from the terminal for receiving the actual multimedia message. As can be seen, issued claim 16 is a system claim whereas reissue claim 1 (as initially filed) was a method claim. Although exceptions do exist, such as certain situations involving a claimed process to make a claimed system, generally a process and a system are both “broader” than each other in that each contains within its scope at least one conceivable apparatus or process which would not be within the scope of the other. The MPEP recognizes this in stating, “where the original patent claims only the process, and the reissue application newly adds product claims, the scope of the claims has been broadened because a party could not necessarily be sued for infringement of the product based on the claims of the original patent (if it were made by a different process).” MPEP § 1412.03(I). For example, a system claim can infringe even if the system is never used (i.e., the process is never performed). Conversely, a process claim often does not recite or require all the components of the claimed system (e.g., the claimed “means for” in issued claim 16 is not in reissue claim 1). Here, the differences between the process claim (reissue claim 1 as initially filed) and the system claim (issued claim 16) are even more stark because issued claim 16 is written in a means-plus-function format. By statute, a means-plus-function limitation is limited to the corresponding structure described in the specification. See 35 U.S.C. § 112, para. 6. Yet the Examiner here has provided no analysis how reissue claim 1 (as initially filed) was narrower than the structure disclosed for the means-plus-function limitation in issued claim 16. To the contrary, during prosecution of the reissue application, the Examiner determined that the Specification did not Appeal 2020-001874 Application 13/762,594 U.S. Patent No. 7,886,007 B2 10 disclose sufficient structure, Final Act. 4–5 (Dec. 4, 2014), and if that is true, then nothing could infringe issued claim 16 and the reissue claim certainly is broader than nothing. Moreover, we note that issued claim 16 appears to be written as a “single means claim,” which is impermissible by statute. In re Hyatt, 708 F.2d 712, 714 (Fed. Cir. 1983) (discussing “[t]he proper statutory basis for the rejection of a single means claim”); 35 U.S.C. § 112, para. 6 (“An element in a claim for a combination may be expressed as a means . . . .” (emphasis added)). Thus, in addition to the usual fundamental differences in infringement of process claims as opposed to system claims, issued claim 16 presents further concerns confirming that reissue claim 1 (as initially filed) was broader. Therefore, reissue claim 1 (as initially filed) was broader than the claims in the issued patent, including issued claims 1 and 16. Whether a Broadened Claim Provides Sufficient Notice of Broadening The next question we must address is whether a broadened claim in a reissue application, without more, is sufficient to unequivocally indicate intent to broaden. The MPEP notes that a “statement that ‘the patent is wholly or partly inoperative by reason of claiming more or less than applicant had a right to claim’ is NOT an unequivocal statement of an intent to broaden.” MPEP § 1412.03(IV). This may be because the phrase “more or less” lacks clarity as to whether the claims are broader or narrower. In contrast, the Federal Circuit has held that clear changes to the claim in addition to an inventor’s declaration that the applicant claimed “less than we had a right to” were sufficient notice of broadening. MBO Labs., Inc. v. Becton, Dickinson & Co., 474 F.3d 1323, 1332 (Fed. Cir. 2007). Appeal 2020-001874 Application 13/762,594 U.S. Patent No. 7,886,007 B2 11 The Federal Circuit, precedential PTAB panels, and the MPEP do not appear to have addressed whether submitting a broadened claim alone is itself an indication of intent to broaden. However, in line with MBO Laboratories, we hold that it is. When (1) a reissue claim is submitted within two years of the patent’s issuance, (2) the reissue claim is broader than the issued patent, and (3) the subsequent prosecution history confirms the applicant’s intent to broaden, even if such prosecution history occurs more than two years after the patent’s issuance, an applicant has provided sufficient and timely notice of intent to broaden. See also 37 C.F.R. § 1.175 (stating that “the inventor’s oath or declaration . . . must identify a claim that the application seeks to broaden” but not putting any time limit to do so). The public has access to reissue claims just as much as it has access to inventor’s oaths or declarations, and therefore the same public notice function is served in the same way. That said, to avoid lengthy disputes such as this one over whether reissue claims as initially filed were broader than the issued claims, obviously it may still be in applicants’ and the public’s best interest to make a clear and unambiguous statement of intent to broaden within the two-year time period, such as in a timely-filed inventor’s oath. Here, reissue claim 1 was initially filed within two years of the patent’s issuance and is broader than the issued claims, and the subsequent substitute statement in lieu of the inventors’ oaths or declarations confirmed Appellant’s intent to broaden. Therefore, reissue claim 1 (as initially filed) provided sufficient notice of broadening. Appeal 2020-001874 Application 13/762,594 U.S. Patent No. 7,886,007 B2 12 Accordingly, we do not sustain the Examiner’s rejection of reissue claims 1–20. DECISION The following table summarizes the outcome of each rejection: Claims Rejected 35 U.S.C. Basis Affirmed Reversed 1–20 § 251 Broadening reissue 1–20 REVERSED Copy with citationCopy as parenthetical citation