Panduit Corp. v. ADC Telecomms

Informative decision only: persuasive authority, not binding precedent. When a requester in an inter partes reexamination does not timely propose a rejection of claims the patent owner added by amendment, and the examiner therefore does not reject them or include them among the non-adopted rejections in the Right of Appeal Notice, the Board lacks jurisdiction over the requester's cross-appeal as to those claims; the requester's remedy is a timely petition, and the Board will not enter a new ground of rejection under 37 C.F.R. § 41.77(b) on its own to cure the omission. Section 41.77(b) provides that the Board "may" enter a new ground where it has "knowledge" that one is warranted, and the Board declined to examine the record on its own at that late stage. No prior precedent directly addressed this issue in the text; the decision cites no earlier Board decision on it. For a third-party requester, the decision means that failing to propose a rejection of newly added or amended claims in a reply under 37 C.F.R. § 1.947 forfeits appellate review of those claims, and the Board will not rescue the requester even if the claims recite features it found unpatentable in related reexaminations. For the patent owner, claims added by amendment can survive to the end of the proceeding without challenge if the requester does not propose a rejection of them in time, and a requester's policy argument that procedural technicalities should yield to the public interest in not granting undeserved patent rights does not undo that. The text cites no Federal Circuit, CCPA or Supreme Court authority; the Board relied on 37 C.F.R. §§ 1.947, 41.52 and 41.77(b). LEGAL TEST OR STANDARD: No multi-factor test is stated. The Board reasoned that it lacks jurisdiction over a cross-appeal as to claims for which the requester did not propose a rejection in a timely manner, because the examiner then neither rejected them nor included them in the non-adopted rejections of the Right of Appeal Notice. Entry of a new ground of rejection is discretionary: 37 C.F.R. § 41.77(b) provides that the Board "may" enter one where it has "knowledge" that the ground is warranted. TRIGGERING FACTS: The patent owner (ADC) added claims 9, 10, and 12 by amendment on March 12, 2009. The requester (Panduit) did not expressly propose a rejection of them in its subsequent reply, which 37 C.F.R. § 1.947 permits. The examiner did not reject them and did not list them as non-adopted rejections in the Right of Appeal Notice. Panduit filed no petition to cure the examiner's action. It then sought rehearing arguing that the same limitations were found unpatentable in related reexaminations of US 6,597,854 and US 6,868,220 B2. KEY QUOTE: "Panduit apparently chose not to seek the remedies available to it under the rules." (Paper not numbered, p. 3) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. PRACTICE TIP: As a requester, expressly propose a rejection of every claim the patent owner adds or amends, in your reply under 37 C.F.R. § 1.947. If the examiner fails to adopt or address such a proposal, file a timely petition at once, because the Board will not cure the omission on appeal or rehearing.