In Re Construction Equipment Co.
665 F.3d 1254
Fed. Cir.2011Background
- CEC owns U.S. Patent No. 5,234,564 for a mobile screening machine; PTO reexamined claims 1,2,5-10,13,14,19,20 and rejected as obvious; Board affirmed; district court previously held the patent valid and Powerscreen was involved in earlier litigation; reexamination cites multiple references; panel affirms PTO rejections for obviousness; dissent argues reexamination after final adjudication violates final judgments and collateral estoppel principles.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether reexamination after final district/court decisions can invalidate a patent | Powerscreen/patentee claim the final judicial decision should bar reexamination | Panel majority allows reexamination despite final judgments | Reexamination not available after final judicial adjudication per constitutional/finality concerns |
| Whether the doctrine of res judicata/issue preclusion bars reexamination | Final district/court decision should preclude relitigation | Reexamination can proceed despite prior adjudication | Reexamination cannot relitigate decided issues; preclusion applies to final judgments |
| Whether obviousness was properly shown in light of the prior art | The patentee’s combination of known elements was not obvious | References teach combining elements; skilled artisan would find it obvious | Board’s obviousness rejection supported by substantial evidence and proper rationale |
| Whether the court should apply non-mutual collateral estoppel in this context | Preclude relitigation given earlier adverse adjudication | Administrative forum should reconsider in reexamination | Rejected; non-mutual estoppel not adopted in this patent context |
| Whether the reexamination statute contemplates overriding final judicial judgments | Statute permits reexamination to correct grants. | Constitutional finality prohibits overruling judicial decisions | Statute does not authorize overruling final judgments; reexamination improper here |
Key Cases Cited
- In re Swanson, 540 F.3d 1368 (Fed.Cir.2008) (reexamination can be instituted despite prior art raised in litigation; discusses history of reexamination and Swanson applicability)
- KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (Supreme Ct. 2007) (rejections must have a rational underpinning for obviousness)
- Plant v. Spendthrift Farm, Inc., 514 U.S. 211 (Supreme Ct. 1995) (final judgments and judicial finality principles)
- Consolidated case: Constr. Equip. Co. v. Powerscreen Int'l Distrib. Ltd., 243 F.3d 559 (Fed.Cir.2000) (prior Federal Circuit holding on validity/obviousness; later cert denied)
- San Remo Hotel, L.P. v. City & Cnty. of S.F., 545 U.S. 323 (Supreme Ct. 2005) (res judicata principles in final judgments)