In re Richard P. Mettke

In re Richard P. Mettke, 570 F.3d 1356 (2009)

•January 23, 1995 – Mettke applied for a patent directed to an “On-Line Communication Terminal/Apparatus”
•February 11, 1997 – Patent ‘905 was issued with five claims. Four of the five claims were for a “public online, pay-as-you-use communications terminal” and 1 claim for a method of using the terminal.
•August 17, 1998 – Mettke applied for reissue of the ‘905 patent. He submitted a declaration stating that he thought that the patent was “wholly or partly inoperative or invalid” because he had claimed less than he had the right to claim. He thought he had inadvertently omitted claims for “accessing the Internet” generally. He wanted to cancel claims 1-5 and add new claims 6-9

Procedural History:
•Three parties filed protests against Mettke reissue, and provided several references (Exhibit E, Exhibit F, and Shah)
•The examiner rejected Mettke’s new claims
•Board affirmed the examiner’s rejection and added a new ground of rejection for obviousness
•Mettke filed a Request for Continued Examination and amended claim 6 and cancelling claims 7-9
•Examiner rejects amending claim 6
•Board affirms rejection concluding that claim 6 was obvious in light of the references supplied by the protesting parties
•Mettke appeals

•Whether claim 6’s subject matter is obvious to a person skilled in the art of that particular invention.

Existing rules:
•Obviousness is when a patentee offers objective evidence of non-obviousness, there must be a sufficient relationship between that evidence and the patented invention
•Graham v. John Deere Co. factual inquiries:
1)The scope and content of the prior art
2)The differences between the prior art and the claims
3)The level of ordinary skill in the relevant art, and
4)Any objective indicia of non-obviousness such as commercial success, long felt need, and failure of others

• Scope and Content of the Prior Art
o Field of Endeavor: Mettke argues that the Board considered non-analogous art because it used the “pay-for-use public communication terminals” field which was too broad. He feels that “Internet terminal” in the claim 6 is more limited. Claim 6 is dealing with providing access to the Internet, and the Board found that the prior art references are within that field. This finding is supported by substantial evidence
o Prior Art References: Types
1)Exhibit E: A “free-standing pay-for-use Touch Fax . . . public communications terminal (kiosk)”
2)Exhibit F: A “Public Communication Terminal from Touch Fax” which provides several types of services including “access to a growing number of information databases from Wall Street news to international sports scores”
3)Shah: Which teaches a “means for accessing the Internet”

• The differences between the prior art and the claims
o Mettke argues that the first two references do not focus on the internet and, therefore, are not relevant
- The Board points out that the two references disclose every element of claim 6 except a means for accessing the Internet, and the Shah reference specifically deals with the last element of the Internet
o Mettke argues that the Shah reference didn’t disclose “accessing the Internet” rather it “teaches away from accessing the Internet” because it only discusses the World Wide Web which is discussing the web browser
- However, the Board asserts that Shah discloses information kiosk that uses the World Wide Web on the Internet which directly relates the Mettke claim 6

• The level of ordinary skill in the relevant art
o Mettke argues against the Boards theory that the subject matter of claim 6 was obvious in regard to the three references. He argues that there is a lack of motivation to be combine the elements of Exhibit E and F with the “means for accessing the Internet” from Shah.
- The Court does agree with Mettke that hindsight alone does not establish obviousness; however, the Board analyzed further to find that Shah not only has the “means for accessing the Internet” but the connect that to information and communication kiosks which links back to the terminals described in Exhibits E and F. Someone with ordinary skill in the art would have had the motivation to combine the references.

• Any objective indicia of non-obviousness such as commercial success, long felt need, and failure of others
o Mettke claims that his ‘905 patent has been used as prior art for 93 other patents which he argues makes the patent a technology leader
- However, both the Board and the Court find that this alone is not enough to rebut the prima facie case of obviousness
o Mettke argues that over half of kiosks have all the elements of claim 6 which suggest its commercial success
- Mettke has failed to establish the relationship between the evidence and his invention (nexus) which means he has failed to meet his burden to show that the commercial success was due to his patent

• The Court found that claim 6 of patent ‘905 was in fact obvious based on the combination of Exhibit E, Exhibit F, and Shah
o The finding is based on substantial evidence and not rebutted by objective evidence
• The Court denied the patentability of reissue application claim 6 and affirmed the Board’s opinion

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