Fitch, Even, Tabin & Flannery LLP: Court Rules Patent Owners' Avenues for Review of Ex Parte Reexamination Decisions Are Restricted

On March 5, 2012, in Teles AG v. Kappos, the U.S. District Court for the District of Columbia barred a patent owner's civil action under 35 U.S.C. § 145 that was brought from an ex parte reexamination proceeding, and transferred the appeal to the Court of Appeals for the Federal Circuit.

The issue before the court was whether the patent owners (collectively "Teles"), could challenge an adverse decision by the Board of Patent Appeals and Interferences (BPAI) in an ex parte reexamination by filing a civil action in district court as opposed to filing an appeal to the Court of Appeals for the Federal Circuit. Teles sought to invoke the procedures available in a civil action in district court to introduce additional evidence to rebut the BPAI's adverse decision. On appeal to the Federal Circuit, Teles generally would be unable to introduce additional evidence into the record.

The U.S. Patent and Trademark Office (USPTO) responded with a motion to dismiss the complaint on the basis that, following amendments to the Patent Act in 1999, the only option for patent owners to challenge adverse ex parte reexamination decisions by the BPAI is to appeal to the Court of Appeals for the Federal Circuit. The USPTO argued that only patent applicants, not patent owners, may file a civil action in district court. 

The court reviewed the 1999 amendments to Sections 134, 141, and 145 of the Patent Act and the legislative history, and ruled that after the 1999 amendments, the de novocourt review of adverse BPAI decisions under 35 U.S.C. § 145 is only available for patent applicants, not for patent owners in reexamination. The court further explained that certain America Invents Act provisions enacted in 2011 "clarify any ambiguity left by the 1999 amendments, and confirm for the Court that Congress intended the 1999 amendments to remove this Court's jurisdiction over patent owners' ex parte reexamination claims."

The district court's decision is subject to review via subsequent appellate action. Nonetheless, per the district court's decision, patent owners can only appeal to the Federal Circuit from adverse BPAI decisions in ex parte reexaminations. Consequently, patent owners in an ex parte reexamination should develop the factual record as fully as possible with the understanding that the record for any appeal will be based solely on the administrative record before the USPTO.

If you have questions regarding this decision, please contact Fitch Even partner Kendrew H. Colton, the author of this alert.

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