I have to admit some prior confusion as to the rules governing appeals from adverse BPAI decisions during an ex parte reexamination. My confusion stems from three potentially conflicting provisions in the Patent Act.
35 U.S.C. 145 indicates that “[a]n applicant dissatisfied with the decision of the Board of Patent Appeals and Interferences in an appeal under section 134(a) of this title may, unless appeal has been taken to the United States Court of Appeals for the Federal Circuit, have remedy by civil action against the Director in the United States District Court for the District of Columbia . . . .
35 U.S.C. 306 indicates that “[t]he patent owner involved in a reexamination proceeding . . . may seek court review under the provisions of sections 141 to 145 of this title, with respect to any decision adverse to the patentability of any original or proposed amended or new claim of the patent.
35 U.S.C. 141 indicates that “[a] patent owner, or a third-party requester in an inter partes reexamination proceeding, who is in any reexamination proceeding dissatisfied with the final decision in an appeal to the Board of Patent Appeals and Interferences under section 134 may appeal the decision only to the United States Court of Appeals for the Federal Circuit.”
§145 was part of the original 1952 Patent Act. §306 was added to the Patent Act in 1980 when ex parte reexaminations were introduced. In 1999, §141 was amended to add the limitation that “[a] patent owner in any reexamination proceeding dissatisfied with the final decision in an appeal to the Board of Patent Appeals and Interferences under §134 may appeal the decision only to the United States Court of Appeals for the Federal Circuit.” In 2002, the portion regarding “inter partes reexaminations” was added to §141.
Conflicting: §141 indicates that a patent owner in reexam may only appeal a BPAI decision to the CAFC; Section 306 indicates that the patent owner in reexam may appeal under either §141 or §145; §145 indicates the availability of an appeal in district court. Of course, §145 focuses on an “applicant” rather than a patent owner, but pre 1999–cases held that patent owners whose patents are undergoing reexamination are “applicants” for the purposes of §145.
Solution: The PTO interpretation found in 37 C.F.R. § 1.303 and in MPEP § 2279 is that §145 controls and that reexaminations may only be appealed to the Federal Circuit. The caveat is that reexaminations filed prior to the 1999 amendment of §145 may also be appealed to a district court under §141.
In a 2009 decision, an Eastern District of Virginia court recognized the statutory tension but substantially agreed with the PTO interpretation:
[T]he fact that § 306 continues to cross-reference §§ 141 to 145 following the AIPA's enactment appears to be in tension with the AIPA amendment to § 141: Although § 145 authorizes a patent applicant--and thus a patent owner under the plain terms of § 306--to file a civil action in the D.C. District Court, § 141 was specifically amended to allow patent owners dissatisfied with a BPAI decision to "appeal the decision only to the United States Court of Appeals for the Federal Circuit." Id. § 141 (emphasis added). Despite this tension, the statutory provisions continue to make clear that a patent owner's right to seek court review of a BPAI decision accrues only after the BPAI renders a "decision adverse to the patentability of any original or proposed amended or new claim of the patent." Id. § 306; see also id. §§ 141-145. Sigram Schindler v. Kappos, 2009 WL 4981473 (E.D. Va. Dec. 18, 2009).
Charles Miller of Dickstein Shapiro has worked on this issue and directed me to the statutory problem. In a forthcoming article, Miller and Daniel Archibald argue that the PTO’s interpretation is wrong and constitutes an unlawful extension of the agency’s authority. In particular, they argue that “Congress did not entrust the PTO with administering, nor did it authorize the agency to enact rules interpreting § 141, § 145, and § 306 of the Patent Act . . . these statutes pertain only to rights in proceedings outside the PTO's jurisdiction and operational domain, and are exclusively for the courts to interpret and apply in cases that they decide.”
- Read the Sigram Schindler Opinion [File Attachment: SigramSchindlerMemo.pdf (1522 KB)]
- Read the (losing) arguments by Sigram Schindler [File Attachment: SigramSchindlerBrief.pdf (86 KB)]
- Reexam Center discusses the Sigram Schindler decision [Link]
- Note, the Sigram Schindler decision was filed in E.D.Va. because the patentee was challenging the USPTO interpretation of the statutes rather than actually attempting to appeal BPAI decision.
- The Schindler reexamination was filed by Cisco on US Patent No. 6,954,453. Cisco and Schindler (Teles) are currently litigating an infringement suit over the patent.