Third-Party requester does not need to file cross-appeal to advance alternative basis of invalidity where there is no decision favorable to patentability

The Fed Cir (1) affirms the Board's construction of "inert to light"; (2) vacates the Board's findings that the prior art did not disclose "inert to light" under the proper construction; and (3) reverses the Board's refusal to consider Tempo's additional arguments of patentability. --more-->

Tempo Lighting, Inc. v. Tivoli, LLC, ___ F.3d ___ (Fed. Cir. Feb. 10, 2014) (RADER, Moore, Wallach) (PTAB) (2 of 5 stars)

The Fed Cir affirmed the Board's finding that the examiner erred in construing the term "inert to light" because the examiner resorted to extrinsic evidence that was inconsistent with the intrinsic evidence. Having determined the proper claim construction, however, the Board then erred by relying on the examiner's factual findings regarding the prior art findings based on the claim construction the Board rejected. The Fed Cir remanded for new factual findings under the proper construction.

Finally, the Fed Cir held that the Board erred in interpreting 37 C.F.R. 41.61(b) which governs a third-party requester's rights in a cross-appeal. The Board interpreted the regulation as requiring the requester to file a cross-appeal, even though the rule allows a cross-appeal as to any final decision favorable to patentability. Because the record contains no decision favorable to patentability, the rule does not require an actual cross-appeal (by using the verb "may"), and the requester did not seek to enlarge its own rights under the judgment, the Board erred in requiring a cross-appeal before considering Tempo's additional arguments.