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Can the USPTO Be Sued Under the APA for Issuing Bad Patents?

Posted On: Dec. 8, 2011   By: Scott A. McKeown
USPTO-LawsuitInfringement Defendant Attempts to Prevent/Undo Patent Issuance by APA Action

On Tuesday the CAFC heard arguments in the case of Pregis Corporation v. Kappos and Free Flow Packaging Intl. At issue in this case was a cross appeal of under the Administrative Procedure Act (APA) alleging that the USPTO had issued U.S. Patent 7,361,397 in an arbitrary and capricious manner. The ‘397 Patent is directed to plastic film used in machines that manufacture the now ubiquitous air pillows found in shipping containers.

Yet, rather than going through the time and effort to necessary to sue a government agency on a seemingly novel cause of action, why didn’t appellant Pregis simply seek reexamination of the ‘397 Patent?

At the time Pregis was approached to take a license, the ‘397 Patent had not yet issued from the USPTO. Pregis was approached to take a license to the Free Flow portfolio. (a notice of allowance had issued for the application underlying the ‘397 Patent). Thus, there was no ‘397 Patent to reexamine at the outset of the dispute between the parties.

Being outside the protest window for the maturing application (rarely used anyway), and believing there to be clear mistakes/capricious action made in the allowance of the case, Pregis filed suit against the USPTO under the APA in the Federal District Court of Virginia (Alexandria).

The initial complaint (here) may have been primarily intended as a “back door” protest to encourage the Office to revisit the allowance. Nevertheless, the patent issued in due course and the APA action continued through the Virginia Court. The dispute made its way to the CAFC on Tuesday. Interestingly, the USPTO was represented by an attorney from the Dept. of Justice on appeal.

At mins 23-45 of the CAFC argument, the APA issues were explored, with significant attention applied to public policy concerns. (recording here).

It would seem unlikely that the Court will endorse the practice, nevertheless the debate is quite interesting in view of recent APA issues explored by the CAFC. (In re Jung, Hyatt v. Kappos)

2 Responses to “Can the USPTO Be Sued Under the APA for Issuing Bad Patents?”

  1. Mark Perdue says:

    While doctrinally the inconsistent results in litigation and reexam are reconcilable (ie BRI vs. presumed validity), the practical results are indeed troubling. Particulalry so when litigation proceeds in parallel. I’m not sure what the solution is, but there is a certain untenability in the current system.

  2. BD says:

    Its not real the US patent system been fraudulent a Carney Act for a very longtime maybe forever, the old which pea is under which pod crap.

    Granted a parent patent, asked the primary examiner a few questions started blaming it on my attorney basically called it a drive-through patent. Found mistakes, filed a reissue more prosecution time all over again more money. Was told reissue patents are very special this one was in the RE35,000 range itself since 1790. Had a nice guy primary examiner, good supervisor examiner and reissue specialize supervisor examiner that seem to have it together. The patent was fine-combed over and over to the last period all fees requested paid. A little over two months after granted the USPTO expired it and never contacted me ever. The Petitions office said the corresponding address was different than the one used for prosecution and all other departments had the same address as I had.

    Had a big Law firm in Florida senior attorney 250 in firm said, “ Mr. Dgfcuul you would have to be the most naïve man in the USA not to know what had happen. It happens all the time I have won 8 cases like this. Someone went in the backdoor at the USPTO and paid to have your patent shut down. After that five of the largest companies in the business became predators real quick.
    Just USPTO BS.