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In re Swanson: Reaffirming a Substantially Old Question

BY Bryan Gallo
January 30, 2009

According to the legislative history accompanying 35 U.S.C. '303(a), Congress intended the re-examination procedure to provide an important “quality check” on patents that would allow the government to remove defective and erroneously granted patents. Indeed, Congress amended 35 U.S.C. '303(a) in 2002 because it disagreed with the restrictive scope of re-examination imposed by the Federal Circuit in In re Portola Packaging Inc., 110 F.3d 786 (Fed. Cir. 1997). In a panel decision by Judge Arthur J. Gajarsa, joined by Judges Alan D. Lourie and William C. Bryson, the court in In re Swanson, 540 F.3d 1368, (Fed. Cir. 2008), held that a piece of prior art relied on for a prior rejection could, nevertheless, create a new question of patentability sufficient to warrant a re-examination. In so ruling, the court made it easier for third parties to invoke the re-examination statute by broadening the ability of prior art, cited or un-cited, to support a re-examination request.

The Case

In re Swanson is an appeal from a decision of the U.S. Patent and Trademark Office's (“PTO”) Board of Patent Appeals and Interferences (“Board”), which upheld an examiner's rejection of claims 22-25 of U.S. Patent No. 5,073,484 (“the '484 patent”) in a re-examination proceeding.

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