Background
WSOU Investments LLC owns U.S. Patent No. 9,357,014, which describes “service-based networking” that establishes connections between endpoints using service names. After previously failing to obtain inter partes review, Cisco Systems sought ex parte reexamination based on a new analysis of the Traversat reference, which describes reliable peer-to-peer connections and a protocol for locating named peers.
The examiner rejected several claims as anticipated by Traversat. On appeal, the Patent Trial and Appeal Board reversed the anticipation rejection but entered a new rejection concluding that claims 1–11, 18, and 19 would have been obvious over Traversat. WSOU attempted to reopen prosecution by proposing additional claims and disputing the Board’s reasoning, but it did not amend or cancel the rejected claims or submit evidence outside the existing record. The Central Reexamination Unit treated the filing as a rehearing request, which the Board denied.
The Court’s Holding
The Federal Circuit affirmed the obviousness rejection. It held that the Board applied the same claim construction used in the earlier inter partes review proceeding, requiring the same remote service name to appear in the connection-request message and to serve as a basis for supporting establishment of the connection. Substantial evidence supported the Board’s finding that Traversat suggested specifying a peer’s name in a discovery query to locate that peer and ultimately establish a connection. The court also upheld the Board’s finding that Traversat did not teach away from the claimed invention.
The court further held that the Central Reexamination Unit did not abuse its discretion by declining to reopen prosecution under 37 C.F.R. § 41.50(b)(1). WSOU’s proposed new claims did not amend or otherwise address the rejected claims, and its purported new evidence consisted of additional arguments based on Traversat, which was already in the record. Referring the submission to the Board as a rehearing request neither violated the governing regulation nor denied WSOU due process.
Key Takeaways
- A prior-art reference can support obviousness even when it does not expressly disclose every limitation sufficiently to anticipate the claim.
- To reopen prosecution after a new Board rejection, a patent owner must appropriately amend the rejected claims, submit genuinely new evidence relating to them, or do both.
- Adding separate claims while leaving the rejected claims unchanged does not require reopening, and new arguments based on an existing reference are not necessarily new evidence.
Why It Matters
The nonprecedential decision illustrates the procedural and substantive differences between anticipation and obviousness: a reference that falls short of expressly disclosing a limitation may still suggest an obvious variation supported by substantial evidence.
It also warns patent owners that reopening prosecution after a new Board rejection requires a response directed to the rejected claims or genuinely new evidence. Merely proposing additional claims and recharacterizing arguments from the existing record may result in the filing being treated as a rehearing request.