Enter to open, tab to navigate, enter to select
DC District Court Limits Patent Owners' Right to Appeal BPAI Reexamination Decisions
Practical Law Legal Update 5-518-3879 (Approx. 4 pages)
DC District Court Limits Patent Owners' Right to Appeal BPAI Reexamination Decisions
by PLC Intellectual Property & Technology
| Published on 09 Mar 2012 • USA (National/Federal) |
In Teles v. Kappos, the US District Court for the District of Columbia held that, unlike patent applicants, patent owners cannot take advantage of the de novo review and liberal discovery procedures of a federal civil action to overturn an adverse final decision of the Board of Patent Appeals and Interferences (BPAI) on the reexamination of their patent claims. Rather, patent owners' sole remedy in such cases is to file an appeal to the Federal Circuit seeking limited, appellate review.
Key Litigated Issues
In Teles AG v. Kappos, the key issue before the US District Court for the District of Columbia was whether a patent owner may file a civil action in district court following an adverse ex parte reexamination decision by the Board of Patent Appeals and Interference (BPAI).
Background
On March 4, 2011, Teles AG and Sigram Schindler Beteiligungsgesellschaft mbH (Teles) filed a complaint under Section 306 of the Patent Act against USPTO Director David J. Kappos to contest the BPAI's affirmance of a final rejection, following an ex parte reexamination, of certain claims of their jointly-owned telecommunications patent.
The defendant, Director Kappos, moved to dismiss the complaint on the grounds that the district court lacked subject matter jurisdiction to review the BPAI's decision under Section 306 of the US Patent Act.
Outcome
In its March 5, 2012 decision addressing this question of first impression, the DC district court dismissed the patent owners' complaint, ruling that the court lacked subject matter jurisdiction over the case.
Examining the legislative history of the patent law amendments enacted by the 1999 American Inventors Protection Act (Pub. L. No. 106-113, § 4001 et seq., 113 Stat. 1501 (1999)), and the plain meaning of Sections 145 and 306 of the Patent Act, the court ruled that, after the 1999 amendments, only patent applicants have the right to federal district court de novo review of BPAI decisions. The court determined that this right is reserved exclusively for patent applicants because after the 1999 amendments:
- Section 134 of the Patent Act refers specifically to the different rights of patent applicants, patent owners and third-party requesters to the review of patent examiner and BPAI decisions.
- The combined effect of Sections 134(a), 141 and 145 of the Patent Act is to provide only to applicants, and not to owners, the option to pursue judicial review of an adverse BPAI decision by filing an appeal to the Federal Circuit (Section 141) or a civil action in the US District Court for the District of Columbia (Section 145).
- The appeal provisions of Section 306 of the Patent Act do not change this result, but rather, leave a patent owner the sole remedy of appeal to the Federal Circuit under Sections 134(b), 141 and 145 of the Act for review of BPAI final decisions in reexamination proceedings.
Practical Implications
Unlike patent applicants, patent owners cannot take advantage of the de novo review and liberal discovery procedures of a federal civil action to overturn an adverse final decision of the BPAI on the reexamination of their patent claims. Rather, the patent owner's sole remedy in such cases is to file an appeal to the Federal Circuit seeking limited, appellate review.