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Not So Speedy Resolution to Patent Infringement Case

By Gabriella Khorasanee, JD on February 12, 2014 | Last updated on March 21, 2019

Litigation is a notorious time sucker, but a patent case dragging on for ten years? That's just too long according to the Federal Circuit, who not only vacated and remanded the Patent Trial and Appeal Board ("Board") decision, but urged a "speedy resolution."

Patent 6,554,446 History

Tivoli owns patent 6,554,446 ("'446"), relating to a reflective material "stair-step lighting apparatus" to "alert users to the location of step edges in darkened or low light environments." In 2004, Tivoli sued Tempo for patent infringement, and after an inter partes reexamination, and decision by an examiner, Tivoli appealed to the Board. On February 24, 2012, the Board handed down its decision.

The Board found that the examiner's definition used in claim construction was in error, yet accepted the examiner's findings that were based on the erroneous claim construction. The Board also held that Tempo had waived alternative arguments.

Federal Circuit Analysis

On appeal, Tempo raised three arguments: (1) the Board's definition for claim construction was error; (2) the Board's acceptance of factual findings based on a different claim construction was error; and (3) it did not waive its alternative arguments.

The Federal Circuit found that the Board was correct in finding the examiner's definition, for purposes of claim construction, in error, but its agreement with the Board stopped there. It found the Board erred by accepting the examiner's factual findings when they were based on a different definition for claim construction. It also found that the Board's refusal to allow Tempo to raise alternative arguments on appeal was based "on a clearly erroneous interpretation of the PTO's regulations governing appeals."

The court vacated the Board's decision, except to its decision regarding the definition used in claim construction, and remanded the case for the Board to make its own factual findings, and allow Tempo to raise alternative arguments on appeal.

As the court urged speedy resolution of the matter, hopefully the parties will have some closure before the decades comes to an end.

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