Federal Circuit rules on book vending patent

A US court has upheld a US Patent and Trademark Office (USPTO) decision by rejecting patent claims following a dispute over prior art references.

Issuing a ruling on October 22, the US Court of Appeals for the Federal Circuit said the USPTO had adequately taken note of the prior art references in invalidating the claims.

The patent, US no 6,213,703, owned by Victor Manuel Celorio Garrido, is for an “Electronic Bookstore Vending Machine” and was granted in 2001.

It says it can be used as a “step by step method” for printing and binding books on demand and allows users to use electronic text to create a bound book over the Internet.

However, in 2008, it was disputed by Bob Holt, who requested the USPTO initiate an inter partes reexamination of all of the claims of the patent in view of prior art references which disclosed various similar systems and which had not been taken into account.

Background details of Holt were not provided in court documents but he is believed to be an inventor.

Following a reexamination, the examiner rejected all but six claims in the patent as being either anticipated or obvious.

The prior art included a reference to Jim Wallace, who had published a paper called "Exploring IBM Print on Demand Technology."

Garrido argued to the examiner that his prior art registration in the initial application showed Wallace had published the paper in December 1996; Garrido then sought to submit a declaration of prior invention.

However, the examiner rejected the claims.

In an appeal to The Patent Trail and Appeal Board (PTAB), Garrido changed positions and said there was no evidence that Wallace’s paper was published in December 1996 and that US law allows the registration of both published and unpublished documents in prior art references.

However, the board noted that the new position was in direct contrast to that which was advocated throughout the reexamination process and declined to address it, thus affirming the examiner’s initial rejections.

Garrido appealed to the Federal Circuit which upheld the PTAB decision, noting that a patentee could not advocate one position during reexamination and reverse the position on appeal.

Michael Oblon, partner at Perkins Coie in Washington, DC, said based on the Federal Circuit’s opinion, the PTAB’s initial decision was correct and “not a close call.”

“Reading between the lines, it appears that Garrido realised his arguments were not convincing, and so shifted gears at the last minute,” Oblon said.

“If respondents were permitted to raise entirely new issues such as this one for the first time in a request for rehearing in front of the board, then there would be no purpose in having the examiner perform the reexamination.”

Oblon added: “Even if this new theory had merit, it was much too late. If Garrido had raised this new issue in a timely manner during the reexamination with the examiner, then the petitioner could have located additional information (perhaps by contacting the publisher) to confirm the date of publication.”

In the appeal Garrido also said Holt had lied in “at least 27 different instances” about the content and meaning of the references.

However, the Federal Circuit dismissed the claims.

“The board [PTAB] held that it lacked jurisdiction to address these allegations. We do not reach the jurisdictional issue, however,” wrote Chief Judge Rader, in the Federal Circuit’s ruling.

Rader added that Garrido provided “no support” for concluding that any misconduct occurred.

“To the extent we understand his arguments, the alleged ‘misconduct’ appears to be no more than disagreement over what is disclosed in the prior art. Mere disagreement between the parties is not evidence of misconduct,” Judge Rader added.

Despite the long running saga, Oblon dismissed the possibility of further Federal Circuit action adding there was no reason to believe that the chief judge would entertain another appeal.

“It sounds as though the accusations regarding the petitioner’s conduct were vague and unsubstantiated, which probably harmed the respondent’s credibility,” Oblon said.