Radio Systems Corp. v. Accession, Inc. (Fed. Cir. 2011)
Accession is a small private New Jersey corporation. Its owner, Thomas Sullivan, is also the sole employee and named inventor of the company's patent. Accession makes and sells a pet door (the "Wedget") that installs within a sliding glass patio door. Accession's Patent No. 7,207,141 issued in April 2007 and claims this "portable pet portal insert for use with a sliding patio door." Radio Systems is headquartered in Tennessee and makes pet-related products, including a patented electronic pet access door (the "SmartDoor").
The personal jurisdiction holding in this case will be discussed in a different post, but here I wanted to bring up the interesting facts regarding Accession's ex parte contact with the USPTO regarding Radio System's pending patent application. Judge Bryson explains the facts as follows:
On August 20, 2009, Accession's counsel left a voice message with the PTO examiner for the [Radio Corp] SmartDoor application, alerting the examiner to the existence of Accession's '141 patent. On the same day, Accession's counsel telephoned Radio Systems' counsel and stated his position that the SmartDoor infringed the '141 patent and that interference proceedings would be warranted between the '141 patent and the SmartDoor application. Later that day, Accession's counsel left a voice message with Radio Systems' counsel indicating that Mr. Sullivan should be named as a co-inventor on the SmartDoor application. On August 25, 2009, Accession's counsel sent an e-mail to Radio Systems' counsel asking whether Radio Systems had brought the '141 patent to the attention of the PTO. The next day, the PTO examiner returned the phone call of Accession's counsel. As a result of that conversation, the PTO withdrew the notice of allowance previously issued for the SmartDoor application. On August 28, 2009, Accession's counsel sent an e-mail to Radio Systems' counsel informing him of the communication with the examiner.
Of course, third-party contact with an examiner is expressly prohibited under the Manual of Patent Examining Procedure unless expressly authorized by the applicant. Further violating procedure, the USPTO Examiner then returned the telephone call and based upon the information learned issued a "Notice of Withdrawal from Issue."
Once an examiner learns of important prior art it, that examiner should use the prior art. Here, the examiner cited the Sullivan patent as prior art against claim 17 of the SmartDoor application and indicated that the "pertinent prior art document" had been disclosed in a telephone conversation with Accession's patent attorney on August 26, 2009. In response, Radio Corp cancelled claim 17.
In its brief, Accession attempted to rebut the argument that its attorney had done anything wrong – writing that:
Nothing in the record could establish that the Patent Office considered Accession's contacts to be "wrongful." Indeed, after the first contact, a voicemail left by Accession's counsel with the patent examiner, the Patent Office reached out to Accession's counsel and subsequently took action it believed appropriate. That action did not include sanctions against Accession. There is nothing in this record (or elsewhere) suggesting that the Patent Office found Accession's counsel's actions to have violated any rule, policy, or law. Further, the record demonstrates that the sole purpose of the contacts was to alert the Patent Office to the fact that the Radio Systems pending application was deficient.
What should happen here?