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.”
Notes:
- 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.
That is not how 28 USC 1631 operates. If the district court were to conclude it was without jurisdiction to review the BPAI decision under 35 USC 306 and 145 because of an ambiguous statement in 35 USC 141 (which pertains only to appeals to the Federal Circuit), then the district court must also have concluded that the plaintiff instead should have filed an appeal to the Federal Circuit. The case would then be allowed to be transferred to the Federal Circuit as an appeal under 35 USC 141, with the date of filing of the Notice of Appeal being nunc pro tunc’ed to the date the civil complaint was filed. Clearly, the civil complaint does not get sent to the Federal Circuit. To suggest that is just silly.
You appear to be unduly focused on the style of the proceeding seeking review of the BPAI decision. Whether styled as a civil action in district court or an appeal in circuit court, both proceedings relate to the same subject: the patent owner’s right to seek judicial review of a decision of the BPAI in an ex parte reexamination proceeding. 28 USC 1631 is a remedial statute and is to be construed broadly in the interest of justice. 1631 assumes that a litigant made an error and permits that error to be corrected.
Not sure how you conclude that the Federal Circuit would be without jurisdiction.
Without jurisdiction to hear the civil action that was filed in the DDC.
In Jamison, the court of appeals had statutory jurisdiction to “review”. Here, the Circuit has jurisdiction to hear an “appeal”, but not a civil action that people in this thread have pointed out is a very different procedure.
What would you do if you were a CAFC justice and a civil action against the Director of the PTO landed on your desk?
Jamison v. FTC, 628 F.Supp. 1548, 1552 (D.D.C. 1986)(transfer from district court to court of appeals). Not sure how you conclude that the Federal Circuit would be without jurisdiction.
To the contrary, it is the civil action that is waived by filing an appeal.
Yes, good point.
Further, 35 USC 142 permits the USPTO Director to prescribe the time to file a notice of appeal to the Federal Circuit, not less than 60 days.
Again, the fate of your appeal depends on someone else deciding to be nice to you. Do you want to bet your patent on it, or do you want to file your appeal within 60 days?
I still don’t believe the transfer provision allows the transfer of a civil action from one court without jurisdiction to hear it to another court without jurisdiction to hear it, but I’m willing to be swayed by caselaw to the contrary.
As you appear to have recognized in your Feb 17 post, you do not waive the right to appeal by filing a civil action. To the contrary, it is the civil action that is waived by filing an appeal. See 141 and 145.
Further, 35 USC 142 permits the USPTO Director to prescribe the time to file a notice of appeal to the Federal Circuit, not less than 60 days. This is covered by 37 CFR 1.304. Thus, in addition to the transfer provisions of 28 USC 1631 the time for filing a notice of appeal may be enlarged under 37 CFR 1.183.
As to statutory conflict, compare 306 with 315. 315 clearly limits review in inter partes reexam to “appeal” under 141-144. 306 speaks not only to appeal but also to “court review” under 141-145. Where 145 is not applicable, 145 is not included, as in 35 USC 315.
the EDVa has ruled there is no other way to challenge the perceived conflict between 35 USC 141 and 306.
There’s clearly no other way to challenge the perceived conflict, assuming you perceive a conflict. Which I don’t. Also, the only thing they actually ruled was that challenging the perceived conflict was premature.
A more significant conflict, in my view, is that by filing a civil action you waive the appeal that a transfer under 28 USC 1631 would purport to create.
Is it contrary to the interest of justice to deny a litigant a right he has waived? Would the Federal Circuit take jurisdiction over an already-waived appeal? A transferred civil action that could not have been brought before them? I wouldn’t bet my patent application on it.
and such would be clearly an abuse of judicial discretion as the EDVa has ruled there is no other way to challenge the perceived conflict between 35 USC 141 and 306.
28 USC 1631 would permit transfer of the action from the district court to the Federal Circuit as if it had been filed there originally on the same date.
Sure, except that the civil action technically could not have been brought before the Federal Circuit, and the judge can still exercise “interest of justice” discretion not to transfer it.
IANAE you are mistaken. 28 USC 1631 would permit transfer of the action from the district court to the Federal Circuit as if it had been filed there originally on the same date.
If the DCDC rules against you, it wouldn’t there still be the option to appeal to the CAFC?
Only if you’re still within the time limit to appeal to the CAFC, which you can’t guarantee in advance before you hear from the DCDC on jurisdiction.
In response to The Big Lebowski, wouldn’t there be a strategic advantage to going to the DCDC before going to the CAFC? If the DCDC rules against you, it wouldn’t there still be the option to appeal to the CAFC? In a sense the patent owner/applicant might get to cracks of bat so to speak and that would be the “so what” if that is the case.
What a bizzare suit. Who cares if the *USPTO* has a rule that says you can only appeal to the CAFC? The DCDC isn’t going to decide whether or not it has jurisdiction based on a USPTO rule that purports to interpret the statute; the DCDC will decide that question for itself, by looking at the statute and coming to its own conclusion. Which means that the question remains, which part of the statute is controlling, and do you want to be the guinea pig who appeals to DCDC, only to have your appeal tossed out on grounds that 141 controls and your appeal should have gone to the CAFC?
Correct and thank you IANAE
Seems to me the reference in 306 to “141 to 145” isn’t a statement that all the provisions 141-145 are necessarily applicable, but a general indication that those are the sections where the appeal procedures are to be found.
Upon reading 35 USC 134(a), it seems it wasn’t intended to apply to reexams at all, since it would render 35 USC 134(b) superfluous. If 134(a) doesn’t apply in reexam, neither does 145, and we’re left with only 141 – appeal a decision under 134 (note: no paragraph specified) only to the CAFC.
Seems to me that the E.D. Va. has it right: section 141 should control, given the timing of its enactment and its unambiguous restriction on the forum for appeals.
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