In re Recreative Technologies Corp.

Congress passed 35 U.S.C. § 303 (the reexamination statute) to increase confidence in the United States patent system and improve the country’s competitive position by allowing the United States Patent and Trademark Office (PTO) to remedy prior examination errors. To combat potential abuse of the reexamination process, the statute restricted reexamination to new information about prior art and new novelty or obviousness challenges. Any matter decided in the original patent examination was not open to reexamination. The reexamination statute incorporated this prohibition by requiring a substantial new question of patentability. However, § 2258 of the PTO’s Manual of Patent Examining Procedure (the manual) stated that once reexamination was initiated, the examiner could consider any references regardless of whether they had been previously addressed by the PTO. Recreative Technologies Corp. (Recreative) (plaintiff) owned United States Patent No. 4,912,800 (the 800 patent), which disclosed a golf-bag attachment for cleaning golf items. Recreative sued Preferred Response Marketing (Preferred Response) (defendant) in federal court for infringement of the 800 patent. Preferred Response requested reexamination of the 800 patent and provided eight new prior-art references that purportedly raised substantial new questions of patentability. The reexamination request was granted. The patent examiner rejected several claims as unpatentable but did not refer to any of the newly raised prior art. Instead, the claims were rejected only in view of prior art (the Ota reference) that was cited and prosecuted in the initial examination of the 800 patent and ultimately resolved in Recreative’s favor. Recreative appealed to the PTO Board of Appeals and Interferences (the appeals board), which also rejected several claims based solely on the Ota reference. Recreative appealed.