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Federal Circuit Finds Prior Art Printed Publications Presumptively Enabling
Practical Law Legal Update 9-520-6303 (Approx. 4 pages)
Federal Circuit Finds Prior Art Printed Publications Presumptively Enabling
by PLC Intellectual Property & Technology
| Published on 30 Jul 2012 • USA (National/Federal) |
In In Re Antor Media Corporation, the US Court of Appeals for the Federal Circuit affirmed the Board of Patent Appeals and Interferences' (BPAI) decision rejecting Antor Media Corporation's patent as anticipated and obvious over four references. Three of the four references were print publications. The Federal Circuit notably held that a prior art printed publication cited by an examiner is presumptively enabling.
Key Litigated Issues
The key issues before the US Court of Appeals for the Federal Circuit in In Re Antor Media Corporation were whether the Board of Patent Appeals and Interferences (BPAI) erred in:
- Holding that prior art non-patent publications cited by an examiner during prosecution are presumptively enabling.
- Rejecting Antor's claims as anticipated and obvious by those prior art references. A claimed invention can only be anticipated by prior art disclosures if the anticipatory disclosures are enabled.
Background
Antor Media Corporation (Antor) owns US Patent No. 5,734,961 ('961 patent), which claims a method and apparatus for transmitting information recorded on digital disks from a central server to subscribers via a high data rate telecommunications network. The '961 patent aims to allow subscribers to access and receive digital media stored on information systems over a telecommunications network.
The USPTO granted ex parte reexamination of the '961 patent based on five separately filed requests. On reexamination, the examiner rejected several of the patent's claims based on the four following prior art references:
- Ghafoor. A 1988 research publication disclosing a multimedia database system to provide multimedia services using a network controller, multimedia servers, a communications network or a broadband integrated services digital network and workstations.
- MINOS. A 1987 article published in the Journal of Management Information Systems disclosing a system for storing multimedia digital information on optical disks at a central server accessible by a remote workstation over a network.
- Huang. A 1988 publication reviewing the state of the art in diagnostic imaging including a description of a system that allows for the storage and retrieval of radiographic images.
- Barrett. U.S. Patent No. 4,918,588, a computer-based office automation system that retrieves document images and provides an image access subsystem built around a minicomputer connected to a telecommunications network.
Antor appealed to the BPAI, arguing that:
- The four prior art references did not make the claims in the '961 patent anticipated or obvious.
- Ghafoor and MINOS were not enabling.
The USPTO did not submit any rebuttal evidence regarding enablement. The BPAI found that Antor had not shown that Ghafoor and MINOS were not enabling and had failed to show that their performance required undue experimentation. The BPAI also upheld the USPTO's rejection of the claims as anticipated or obvious based on the prior art. Antor appealed to the US Court of Appeals for the Federal Circuit.
Outcome
The Federal Circuit affirmed the BPAI's decision that the '961 Patent was anticipated and obvious over four references. Specifically, the court found that the BPAI did not err in either:
- Holding that prior art publications cited by an examiner are presumptively enabling during prosecution.
- Rejecting Antor's claims as anticipated and obvious by prior art references.
Presumption of Enablement
The court affirmed the BPAI's finding that prior art publications cited by an examiner are presumptively enabling during prosecution. After the examiner cites a prior art publication, the burden then shifts to the patent applicant or patentee to prove nonenablement.
Antor argued that a presumption of enablement applies only to prior art patents not to publications because:
- The USPTO must examine patents for enablement before they issue.
- Issued patents are presumed valid under Section 282 of the Patent Act.
However, the court noted that in Amgen Inc. v. Hoechst Marion Roussel, Inc. it rejected that argument in relation to claimed disclosures in a prior art patent in holding that both claimed and unclaimed disclosures in a prior art patent are presumptively enabled. The court reasoned in Amgen that:
- An applicant is in the better position to show why a disclosure is not enabling or operative.
- It would be unduly cumbersome to place the burden of showing that a cited piece of prior art is enabling on the USPTO.
Because unclaimed disclosures that are not examined by the USPTO are presumed enabling, the Federal Circuit found no logical reason why printed publications shouldn't receive the same deference. The court concluded that under statutory framework and precedent, the USPTO can reject claims as anticipated by a prior art publication without determining whether the prior art is enabled, shifting the burden to the applicant to rebut the presumption of enablement.
Claims Were Anticipated by Prior Art
The Federal Circuit held that the BPAI had correctly rejected Anton's claims as anticipated because:
- Antor did not prove that undue experimentation would be needed to practice the claimed invention based on the teaching in Ghafoor.
- The BPAI's rejection of claims 1-3, 5-8, 9, 11-15, 17-19, 21-24, 26, and 27-29 as anticipated by Ghafoor is supported by substantial evidence.
- All of the rejected claims were obvious based on Barrett in view of MINOS.
Practical Implications
The Federal Circuit's decision extends the presumptively enabling standard during patent prosecution to prior art printed publications. Counsel for patent applicants and patentees should take note of this decision and support any argument that cited prior art non-patent publications are not enabling with evidence sufficient to rebut the presumption.