Garrido v. Holt

NOTE: This disposition is nonprecedential.

United States Court of Appeals
for the Federal Circuit
______________________

VICTOR MANUEL CELORIO GARRIDO,
Appellant,

v.

BOB HOLT,
Appellee.
______________________

2013-1194
______________________

Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Reexamination
No. 95/000,393.
______________________

Decided: October 22, 2013
______________________

VICTOR MANUEL CELORIO GARRIDO, of Gainesville,
Florida, pro se.

JEFFREY SONNABEND, Sonnabend Law, of Brooklyn,
New York, for appellee.
______________________

Before RADER, Chief Judge, NEWMAN, and DYK,
Circuit Judges.
2 GARRIDO v. HOLT

PER CURIAM.
Victor Manuel Celorio Garrido (“Garrido”) appeals
from the decision of the Patent Trial and Appeal Board
(“Board”) in the inter partes reexamination of U.S. Patent
No. 6,213,703 B1 (“the ’703 patent”). The Board affirmed
the Patent and Trademark Office (“PTO”) examiner’s
rejection of all but six claims as anticipated or obvious
over the prior art. Garrido appealed, contending that the
Board erred by relying on prior art references that were
not published or publicly accessible prior to the filing date
and by failing to address alleged misconduct by the re-
questor. We conclude that the Board did not err in relying
on the prior art references. We also agree that Garrido’s
allegations of misconduct are unsupported. We affirm.
BACKGROUND
Garrido owns the ’703 patent, which is directed to an
“Electronic Bookstore Vending Machine” for printing and
binding books on demand. The ’703 patent claims priority
to a predecessor application filed on October 3, 1997.
The ’703 patent’s specification explains that “[t]he
present invention is a step by step method and a system
. . . for formatting, printing, and binding, for example, a
book, a magazine, or other printed material.” ’703 patent
col. 5 ll. 6-10. The specification describes preferred embod-
iments that use various methods to format, print, and
bind books (for example, using different kinds of glue). See
id. col. 11 l. 4 to col. 12 l. 4. Independent claim 1 is di-
rected to
[a] system for producing and distributing books,
comprising:
an input means for inputting requests for one
or more books,
a plurality of printing and binding means for
printing and binding a book upon receipt of data
GARRIDO v. HOLT 3

corresponding to a book’s content and control da-
ta, and
at least one distribution unit which receives a
request for a selected book . . . .
Id. col. 16 ll. 19-27. Independent claim 12 is directed to
[a] method for producing and distributing
books, comprising the following steps:
creating a plurality of electronic text files cor-
responding to a plurality of books . . . ;
storing said plurality of text files;
allowing a customer to order one or more of
said plurality of books; and
transmitting the electronic text files corre-
sponding to the ordered book(s) to a device capa-
ble of printing and binding said ordered book(s)
....
Id. col. 17 ll. 14-25. The remaining claims are dependent
claims.
In November 2008, Bob Holt (“Holt”) requested that
the PTO initiate an inter partes reexamination of all
claims of the ’703 patent. See Holt v. Garrido, No. 2012-
000170, slip op. at 2 (P.T.O. March 28, 2012). Holt assert-
ed, inter alia, that the claims were anticipated or obvious
over combinations of prior art references disclosing vari-
ous print-on-demand systems. These included JIM
WALLACE, EXPLORING IBM PRINT ON DEMAND
TECHNOLOGY (1997) (“Wallace”); XEROX CORP., THE POWER
OF PRINT ON DEMAND: AN ANTHOLOGY OF CASE HISTORIES
AND SOLUTIONS (1994) (“Xerox”); and CAP VENTURES, THE
PRINT-ON-DEMAND OPPORTUNITY: TECHNOLOGY,
PRODUCTS, & THE BUSINESS (Jim Hamilton ed., 1996)
(“CAP Ventures”).
4 GARRIDO v. HOLT

The examiner issued a non-final office action rejecting
various claims under 35 U.S.C. § 102(b) and § 103. Gar-
rido responded, contending that the references were
inapposite or not prior art. See generally Patent Owner’s
Response to Non-Final Office Action, Holt v. Garrido Inter
Partes Reexam. Control No. 95/000,393 (P.T.O. Mar. 13,
2009). With respect to Wallace, Garrido argued that “[t]he
copy right [sic] registration with respect to the Wallace
reference indicates the Wallace reference was published
on December 16, 1996.” Id. at 38. Garrido sought to
antedate Wallace as a section 102(a) reference, submit-
ting “a signed Declaration [u]nder 37 CFR. § 1.131 by the
patentee which swears behind the publication date De-
cember 16, 1996 of Wallace.” Id.
Over the course of the reexamination, Garrido
amended or added approximately ninety claims. In De-
cember 2009, the examiner issued a final decision con-
firming six of these claims and rejecting the rest as
obvious over or anticipated by Wallace and the other
references. Garrido petitioned to reopen the prosecution,
arguing that the examiner erred by treating Wallace as a
section 102(b) prior art reference. Garrido stated:
The inside cover of the Wallace reference shows
“Copyright 1997 by Maximum Press” and the cop-
yright registration with respect to the Wallace
reference indicates that the Wallace reference was
published on December 16, 1996.
Petition under 37 C.F.R. § 1.181 - Request To Reopen
Prosecution after Action Closing Prosecution at 6, Holt v.
Garrido, Inter Partes Reexam. Control No. 95/000,393
(P.T.O. Jan. 11, 2010). Garrido argued that the examiner
had erred “by not realizing that 12/16/96, the date the
copyright registration indicates the Wallace reference was
published, is within one year of 10/3/07, the . . . effective
filing date,” and that Wallace therefore created no statu-
GARRIDO v. HOLT 5

tory bar to patentability under section 102(b). Id. at 7.
Garrido’s petition was denied.
Garrido timely appealed to the Board, and Holt cross-
appealed. The Board held that Wallace was not a section
102(b) prior art reference, because its December 16, 1996,
publication date did not predate the ’703 patent’s priority
date of October 3, 1997, by a full year. 1 See Decision on
Appeal at 32, Holt v. Garrido, No. 2012-000170 (P.T.A.B.
Mar. 28, 2012) (“Board Decision”). The Board instead held
that Wallace was available as prior art under section
102(a). Id. The Board also held that Garrido had failed to
show reduction to practice or diligence prior to October 3,
1997. Id. at 60. The examiner’s rejections were sustained.
Garrido requested a rehearing. He argued that there
was no evidence that Wallace was published on December
16, 1996. See Patent Owner’s Request for Rehearing at 40,
Holt v. Garrido, No. 2012-000170 (P.T.A.B. May 1, 2012).

1 At the time, the statute provided:
A person shall be entitled to a patent unless—
(a) the invention was known or used by others in
this country, or patented or described in a printed
publication in this or a foreign country, before the
invention thereof by the applicant for patent, or
(b) the invention was patented or described in a
printed publication in this or a foreign country or
in public use or on sale in this country, more than
one year prior to the date of the application for pa-
tent in the United States . . . .
35 U.S.C. § 102(a), (b) (2010). These provisions have since
been amended. See Leahy-Smith America Invents Act
(“AIA”), Pub. L. No. 112-29, § 3(b)(1), 125 Stat. 284, 285-
286 (2011), amending 35 U.S.C. § 102(a), (b).
6 GARRIDO v. HOLT

He also argued that misconduct by Holt in misrepresent-
ing the prior art had tainted the proceedings. Id. at 9-10,
31-33.
The Board denied rehearing. It noted that Garrido’s
new position on Wallace’s publication date was “in direct
contrast to the position advocated by [Garrido] through-
out reexamination prosecution and up through [the]
Appeal.” Decision on Request for Rehearing at 18, Holt v.
Garrido, No. 2012-000170 (P.T.A.B. Oct. 25, 2012) (“Reh’g
Decision”). Accordingly, the Board declined to address it:
Patent Owner now argues that Wallace’s publica-
tion date is . . . 1997. However, this argument was
not made in Patent Owner’s Appeal Brief, and as
such, we take this shift in position to be a new ar-
gument.
Id. at 19 (citation omitted). The Board also declined to
address Garrido’s allegations that Holt committed mis-
conduct, stating that it lacked jurisdiction over such
allegations, which had to be addressed to the Office of
Enrollment and Discipline. Id. at 23.
Garrido timely appealed to this court. Holt did not
appeal with respect to the six allowed claims. We have
jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A) and 35
U.S.C. § 141. We review the Board’s legal determinations
de novo, and its factual findings for substantial evidence.
In re Baxter Int’l, Inc., 678 F.3d 1357, 1361 (Fed.
Cir.2012).
DISCUSSION
I. The Wallace Publication Date
Garrido’s primary argument on appeal is that the
Board erred by treating Wallace as having been published
GARRIDO v. HOLT 7

in 1996, before the filing date of the ’703 patent. 2 In
particular, he argues that although Wallace may have
been registered before the filing date, it was not published
before that date.
Garrido contends that the publication date issue is
not waived, because he “raised [it] clearly in . . . [the]
Appeal Brief” before the Board. Appellant’s Br. at 6. This
is incorrect. Garrido’s appeal brief before the Board stated
without reservation that “Wallace was published on
December 16, 1996.” Pat. Owner Corrected Appellant
Appeal Br. at 13, No. 2012-000170, (P.T.A.B. Sept. 14,
2010) (“Board Appeal Brief”) (emphasis added). The Board
Appeal Brief reiterated the arguments previously made to
the examiner, that is, that the claimed invention antedat-
ed Wallace for purposes of section 102(a) (an argument
not raised on appeal to this court), and that for purposes

2 Holt contends that we lack jurisdiction over this
appeal because Garrido failed to name the PTO Director
as a party to the appeal, in violation of the Federal Rules
of Appellate Procedure. The Rules require that a petition
for review of an agency order must, inter alia, “name the
agency as a respondent (even though not named in the
petition, the United States is a respondent if required by
statute).” Fed. R. App. P. 15(a)(2)(B).
This argument is meritless. The statute granting this
court jurisdiction to review final Board decisions in inter
partes reexaminations does not require that the PTO
Director be named as a party. To the contrary, the statute
addressing review of these PTO decisions, 35 U.S.C.
§ 143, contemplates that the Director will not be named,
as the Director is given the right to intervene. See id.
(“The director shall have the right to intervene in an
appeal from a decision entered by the [Board].”).
8 GARRIDO v. HOLT

of section 102(b), October 7, 1997, was not one full year
after the publication date of December 16, 1996:
The inside cover of Wallace shows “Copyright
1997 by Maximum Press”. Therefore, patentee ar-
gues it is unclear whether Wallace was published
prior to October 3, 1997 . . . . The patentee asserts
that [the claimed invention] was conceived prior
to November 1, 1995.
...
The copyright registration of Wallace indi-
cates that Wallace was published on December 16,
1996 . . . . December 16, 1996 is within one year of
10/03/97.
...
12/16/96, the date the copyright registration
indicates the Wallace reference was published, is
within one year of 10/3/97, . . . the effective filing
date of the current claims in the ’703 patent.
Id. at 12-13.
Garrido now argues that insofar as he stated that
Wallace’s publication date was 1996, it was an uninten-
tional mistake, that is, an error in typing the last digit of
the year. But Garrido’s Board Appeal Brief was clear that
he attributed a December 16, 1996 date to the Wallace
reference. 3 Our law establishes that a patentee cannot

3 Garrido also urges that his previous statements
about Wallace’s publication date can be given no weight
because they were merely “attorney argument.” See
Appellant’s Br. at 3 (citing In re Schulze, 346 F.2d 600
(CCPA 1965)). But the cited reference does not support
him. While it is true that attorney argument “does not
take the place of evidence in the record” to support the
GARRIDO v. HOLT 9

advocate one position during reexamination, and then,
when that position has been accepted by the PTO, reverse
its position on appeal. See Elmer v. ICC Fabricating, Inc.,
67 F.3d 1571, 1574-75 (Fed. Cir. 1995) (a party’s contrary
position on appeal does not negate the record developed
below based on its prior position); EF Operating Corp. v.
Am. Bldgs., 993 F.2d 1046, 1050 (3d Cir. 1993) (“It goes
without saying that one cannot casually cast aside repre-
sentations, oral or written, in the course of litigation
simply because it is convenient to do so . . . .”). Nor can a
party escape responsibility for positions it has repeatedly
taken in its briefs by subsequently dismissing those
positions as mistakes or attorney argument. Fleck v. KDI
Sylvan Pools, Inc., 981 F.2d 107, 116-17 (3d Cir. 1992)
(“When a litigant takes an unequivocal position at trial,
he cannot on appeal assume a contrary position simply
because the decision in retrospect was a tactical mistake .
. . .”); Alexander v. Town & Country Estates, Inc., 535 F.2d
1081, 1082 & n. 1 (8th Cir. 1976) (“On appeal, we will not
decide the case on a legal theory directly contrary to that
advanced by appellants at trial.”).
Garrido also argues that even if he advanced a 1996
publication date for Wallace in the Board Appeal Brief,
his response to Holt’s brief before the Board made no such
contention. Instead, he argued:
The copyright of [Wallace’s] publication date - if
ever -, is not known. It is not 1996 nor 1997 as
stated previously during the Reexamination. The

patentability of a claim, see Schulze, 346 F. 2d at 602, the
Board may rely on a patentee’s repeated concessions
against interest, as it did here, see Board Decision at 32
n.12 (finding Garrido’s concession that Wallace was
published in 1996 “credible as a statement against inter-
est”).
10 GARRIDO v. HOLT

Copyright Office DOES NOT HAVE ANY
EVIDENCE that such a document was ever regis-
tered in that office. Not in 1996, not in 1997, and
NOT EVER.
Patent Owner’s Corrected Response to Appeal Brief of
Appellant at 16, No. 2012-000170, (P.T.A.B. Sept. 14,
2010) (“Board Response Brief”).
The Board did not err in construing PTO Rule
41.52(a)(1), like our own appellate rules, to require that a
party’s arguments be raised in the opening brief. Here,
Garrido’s Board Response Brief not only raised a new
argument, it contradicted the Board Appeal Brief without
any explanation for the abrupt change in position. The
Board Response Brief never contended, as Garrido does
now, that the attribution of a December 16, 1996, publica-
tion date to Wallace in Garrido’s earlier filings was an
inadvertent mistake. Thus, the Board did not err when it
concluded that the argument advanced in Garrido’s
petition for rehearing had not been properly raised on
appeal, and rejected it.
Finally, Garrido argues that even if December 16,
1996 is Wallace’s copyright registration date, a copyright
registration is insufficient proof that Wallace was publicly
disseminated, as required by section 102. See In re
Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989). He then
makes the same objection to two other references, Xerox
and CAP Ventures. Garrido relies on our holding in In re
Lister, 583 F.3d 1307 (Fed. Cir. 2009), where we held that
an unpublished manuscript that was registered with the
Copyright Office, and available for inspection by visitors
to that office, was not a “printed publication” for purposes
of section 102(b). Id. at 1311-17. But the Copyright Office
allows registration of both published and unpublished
documents. See 37 C.F.R. § 202.3(b)(1)(i). Here, Garrido’s
concession was not that Wallace was registered on De-
cember 16, 1996, but that it was “published” on that date.
GARRIDO v. HOLT 11

The publication of Wallace on December 16, 1996, was
sufficient to render it prior art under 102(b).
Because Garrido has not shown that the Board’s find-
ings with respect to Wallace are erroneous or unsupported
by substantial evidence, we decline to disturb them.
II. Requestor Misconduct
Garrido next argues that because the reexamination
proceeding was tainted by misconduct, the Board was
obliged to reverse its decision rejecting the ’703 claims.
Garrido alleges that Holt “lied in at least 27 different
instances about the content of the references, their mean-
ing, or both.” Appellant’s Br. at 8. The Board held that it
lacked jurisdiction to address these allegations. We do not
reach the jurisdictional issue, however, because Garrido
provides no support for concluding that any misconduct
occurred. He does not give a single example in his opening
brief. Attached to his reply brief is a list of various state-
ments that he contends are false, but he does no more
than allege in a conclusory fashion that they are false. To
the extent we understand his arguments, the alleged
“misconduct” appears to be no more than disagreement
over what is disclosed in the prior art. Mere disagreement
between the parties is not evidence of misconduct. See
Dexter Fastner Tech., Inc. v. N.L.R.B., Nos. 96-6421, 96-
96519, 1998 WL 199814, at *6 (6th Cir. Apr. 14, 1998)
(affirming that “considerable evidence of disagreement
between the parties” alone does not amount to miscon-
duct).
In any case, arguments made for the first time in a
reply brief are waived. See, e.g., Advanced Magnetic
Closures, Inc. v. Rome Fastener Corp., 607 F.3d 817, 833
(Fed. Cir. 2010).
We have considered Garrido’s remaining arguments
and find them without merit.
12 GARRIDO v. HOLT

AFFIRMED
COSTS
Costs to Holt.