04/08/2014

In re Teles AG Informatinstechnologien: No § 145 Appeals of Reexamination by Patent Owners under Pre-AIA law


Category: Civil Procedure 
 
 
 
 
 By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleIn re Teles AG Informatinstechnologien, No. 2012-1297 (Fed. Cir. April 4, 2014).
Issues
[1] While we have jurisdiction to review the district court’s dismissal pursuant to § 1295(a)(1), the question is whether we also have jurisdiction to review the Board’s action [if the district court lacked jurisdiction and improperly dismissed the case].
In re Teles AG Informatinstechnologien at *3 (text added).
[2] In 1999, Congress amended § 145 and related provisions [authorizing patent applicants to challenge the Board’s adverse examination decisions in district court instead of directly appealing to the CAFC]. This case raises the question of whether § 145 civil actions remained available to patent owners seeking to challenge adverse reexamination decisions after Congress amended the statute in 1999 and before 2011 [AIA], when Congress amended the statute to clarify that § 145 review was not available to patent owners.
Id. at *3 (text added).
Holdings
[1] [Because of the different language in § 145 concerning appeals by patent owners versus patent applicants,] [w]e […] hold that the 1999 amendments eliminated the right of patent owners to secure review under § 145, and affirm that the district court lacked jurisdiction over the § 145 action.
Id. at *14 (text added).
[2] [T]he statutory deadline for filing an appeal to this court had passed, and no evidence suggested bad faith in Teles’ filing with the district court. Under these circumstances, it was in the interest of justice to transfer the case pursuant to §1631, and we “treat [Teles’] petition for review, which was timely filed with the district court, as if it had been properly transferred” to this court rather than dismissed.
Id. at *5.
 
 
 
Procedural History“The Patent and Trademark Office (“PTO”) conducted an ex parte reexamination of the ’453 patent and rejected claims 34–36 and 38 as obvious under 35 U.S.C. § 103. The Board of Patent Appeals and Interferences (“Board”) affirmed. Teles brought suit in the United States District Court for the District of Columbia, challenging the Board’s decision pursuant to 35 U.S.C. § 145 (2006).” In re Teles AG Informatinstechnologien at *2. “The district court dismissed the case for lack of subject matter jurisdiction, holding that, after the 1999 amendments, § 145 proceedings could not be maintained by patent owners. Teles appealed the district court’s dismissal for lack of subject matter jurisdiction to this court pursuant to 28 U.S.C. § 1295(a)(1).” Id. at *4.
 
 
 
Legal Reasoning (Dyk, Moore, Wallach)
[1] Improper Dismissal
Attempt to Trasnfer after DismissalAfter the district court granted the motion to dismiss, it also purported to transfer the case to this court pursuant to 28 U.S.C. § 1631. A transfer “is not proper when combined with a dismissal.” Hollyanne Corp. v. TFT, Inc., 199 F.3d 1304, 1307 (Fed. Cir. 1999); […]. Once the district court dismissed the case for lack of jurisdiction, it “was without authority to transfer the case.” Tootle v. Sec’y of Navy, 446 F.3d 167, 173 (D.C. Cir. 2006).
In re Teles AG Informatinstechnologien at *4.
Improper DismissalOnce the district court held that it lacked jurisdiction, it should have transferred the case pursuant to § 1631. See Paul v. I.N.S., 348 F.3d 43, 47 (2nd Cir. 2003); see also Kolek v. Engen, 869 F.2d 1281, 1283–84 (9th Cir. 1989). Here, as in Paul and Kolek, the statutory deadline for filing an appeal to this court had passed, and no evidence suggest- ed bad faith in Teles’ filing with the district court. Under these circumstances, it was in the interest of justice to transfer the case pursuant to §1631, and we “treat [Teles’] petition for review, which was timely filed with the district court, as if it had been properly transferred” to this court rather than dismissed. […]
Id. at *4-5 internal citations omitted.
[2] Does Pre-AIA, 1999 amended § 145 Permit a Patent Owner to Appeal Reexam to District Court?
Background
§ 141Congress amended § 141, which provided for appeals of Board decisions to this court, by inserting an express limitation on the appeal rights of patent owners in any reexamination proceeding: “A patent owner 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.” 35 U.S.C. § 141 (2000) (emphases added).
In re Teles AG Informatinstechnologien at *6-7.
§ 145 and § 134Congress amended § 145, which previously referenced § 134 generally[, including 134(a)-Patent Applicant, 134(b)-Patent Owner, and 134(c)-Third Party ], to refer only to § 134(a), governing patent applicants: An 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. § 145 (2000) (emphasis added). On their face, these amendments would appear to restrict § 145 appeals to patent applicants.
Id. at *8 (text added).
Distinction between patent owners and patent applicants in § 141§ 141 stat[es] that a patent owner “may appeal the [adverse reexamination] decision only to the United States Court of Appeals for the Federal Circuit” […] Significantly, § 141 did not subject patent applicants to a similar limitation, stating that “[a]n applicant dissatisfied with the decision in an appeal to the Board of Patent Appeals and Interferences under section 134 of this title may appeal the decision to the United States Court of Appeals for the Federal Circuit.” 35 U.S.C. § 141 (2000) (emphasis added). If the “only” limitation were designed to restrict appeals to this court, rather than other circuit courts, it is hard to understand why Congress would not employ similar language as to patent applicants.
Id. at *8-9.
Inconsistency of § 306
After the 1999 amendments, § 306 continued to read:
The patent owner involved in a reexamination proceeding under this chapter may appeal under the provisions of section 134 of this title, and may seek court review under the provisions of section 141 to 145 of this title, with respect to any decision adverse to the patentability of any original or pro- posed amended or new claim of the patent.
35 U.S.C. § 306 (2000) (emphasis added).
Id. at *9.
The fact that in the case of an inter partes reexamination, § 315, as of the time of the 1999 amendments, provided for an appeal by the patent owner “under the provisions of sections 141 through 144,” 35 U.S.C. § 315(a)(1) (2000), merely confirms the likelihood that the reference to § 145 in § 306 was a drafting error [based on the reasoning of Chickasaw Nation v. United States]. Moreover, the fact that § 145 on its face applied only to “applicants” and not owners helps to explain why Congress could have failed to focus on the drafting error in § 306.
Id. at *10.
The debate on the provision [to amend § 306] suggests nothing about a decision to retain § 145 for patent owners, but demonstrates that the provision was removed because of opposition to giving appeal rights to third parties in ex parte examinations.
Id. at *11.
Conclusion
We therefore hold that the 1999 amendments eliminated the right of patent owners to secure review under § 145, and affirm that the district court lacked jurisdiction over the § 145 action.
In re Teles AG Informatinstechnologien at *14.
 
 
 
Editor Note
This case also briefly reviewed the findings of the Board (Claim Construction and 103). To read further, click here.
 
 
 
 
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