BPAI finds Examiner improperly shifted the burden to Patentee to show date that material was added to standards document

Takeaway: In an inter partes reexamination proceeding, the Examiner relied on a product safety standard (UL 588) as a reference. The standard included several different copyright dates, the latest of which was in 2001, after the Patentee's effective filing date. The Examiner took the position that the post-filing date was "only the most recent update to otherwise older prior art content" and that "the entire contents of this reference clearly did not first appear in August 2000. The UL reference therefore cannot be dismissed as available prior art." The BPAI reversed, finding that the Examiner had improperly shifted the burden to the Patentee to show when the material relied upon by the Examiner was added to the standard.(Fiber Optic Designs v. Seasonal Specialties, BPAI 2011.)

Details:

Fiber Optic Designs v. Seasonal Specialties
Appeal 2011007195; Reexam. No. 95/000,137; Tech. Center 3900
Decided  July 29, 2011

This inter partes reexamination involved strings of LED lights. The Patentee appealed a number of prior rejections, including an obviousness rejection that used a product safety standard published by Underwriters Laboratory (UL), referred to as "UL 588." ("Standard for Safety for Seasonal/Holiday Decorative Products, Eighteenth Edition). UL 588 included several different copyright dates, including 1921, 1974, and 2001.

The effective filing date of the patent was in 1999. Thus, material in UL 588 dating back to 1921 or 1974 was properly prior art, but material with a date of 2001 was not prior art. The obvious rejection relied on a particular figure, Figure 7.2, which illustrated a set of LED lights connected in parallel.

Before appeal, the Examiner explained why Figure 7.2 of UL 588 was properly prior art, as follows:

The sixth page' of UL Standard 588 refers to "Copyright 1974" which indicates the presence of content within the standard dating back more than 20 years to 1974. Additional references on this page indicate that content in the standard date back to the year 1921. The date of August 21, 2000 and the Fig. 7.2 from this reference, showing nothing more than parallel light connections cannot be dismissed as having first been taught in August 2000. The UL reference is therefore retained as available prior art.

In response, the  Patentee argued that the publication date for Figure 7.2 could not be 1921 or 1974 because "the LED lights as set forth in [Patentee's] '754 patent did not even exist in 1974, much less 1921." The Patentee offered several types of evidence to support the argument. One such piece of evidence was a Request for Comments (RFC) document which described the purpose of the UL 588 Standard. The RFC contained this statement:

The requirements in the Standard for Seasonal and Holiday Decorative Products, UL 588, were developed prior to the existence of light-emitting diode (LED) lamps and based on recent submittal of these products it has been determined that the requirements need to be revised to reflect this new technology.

Thus, according to the Patentee, "clearly this Underwriters Laboratories document shows that the UL Standard 588 cannot and does not disclose LED standards dating before August 1998 because the LEDs at issue did not exist in 1974 or prior to 2000."

As additional evidence as to why the LEDs discussed in UL 588 dated back to 2002 rather than 1974 or 1921, the Patentee offered declarations describing the UL approval process for the Patentee's LED light string product:

Patentee submitted its product for UL approval in 1999 and received UL approval in March 2001. Exhibit 2, David R. Allen Decl., 7 2. Exhibit 2 provides additional evidence that the invention of the '358 patent is new and non-obvious since even Underwriters Laboratories  recognized that LEDs used in seasonal lighting products were "new technology" in 2001 several years after the invention of the 758 Patent. Indeed, when the Patentee submitted the invention for approval to Underwriters Laboratories, UL tested this patented product as a "new and unusual'' product. Exhibit 2, David R. Allen Decl., 11.2. UL polled its offices worldwide and concluded that none of its employees had ever tested a product similar to the invention. Id.

In summary, the Patentee argued that the Examiner erred in relying on a date of 1974 for Figure 7.2 of UL 588.

On appeal, the Board found that the Examiner had improperly shifted the burden to the Patentee to show that the relied upon portion of the document was not prior art.

The page bearing Figure 7.2 lists a date of August 21, 2000. The Examiner‟s attempt to shift the burden to Appellant to show when Figure 7.2 was added as an update to UL Standard 588 under these facts is improper. It would constitute speculation to determine such a date. See In re Lister, 583 F.3d 1307, 1317 (2009) (“We surely would not view the mere existence of the reference . . . as prima facie evidence that it was available prior to the applicant‟s critical date.”).

Because the Examiner had not made a prima facie showing that the reference was prior art, the Board did not reach the issue of whether the Patentee's rebuttal evidence was convincing.

My two cents: A good illustration of how to handle a scenario where the Examiner relies on a copyright date as the publication date of a reference.

Seems like the Examiner was really overreaching here, since the particular page relied on (Figure 7.2) had its own date of August 21, 2000, a date after Patentee's effective filing date. So doesn't this, by itself, say that the Examiner had not made a prima facie case that Fig. 7.2 was prior art?

The Patentee's statement that "the LED lights as set forth in [Patentee's] '754 patent did not even exist in 1974" needed some sort of evidentiary foundation, since the basic LED was invented in the 1960's. The Patentee lucked out in finding a standards-related document which stated that the standards were developed before decorative LED light strings and were then updated to cover LED strings. Without this type of document, the Patentee could maybe offer evidence dicussing the history of LED products, showing when LED holiday lights became commercially available. The Patentee's evidence showing their product was UL tested as a "new and unusual product" was an interesting way of getting to the same conclusion.