Where does a Patent Owner go for judicial review after losing an ex parte reexamination appeal at the Board of Patent Appeals and Interferences (BPAI)? Prior to 2001, Patent Owners had a clear choice of filing suit against the USPTO in the U.S. District Court for the District of Columbia, or appealing adverse BPAI decisions to the Court of Appeals for the Federal Circuit (CAFC). In 2001, amendments to the patent statutes ( 35 U.S.C. §§ 141 and 145 ) in the American Inventor Protection Act (AIPA) appeared to eliminate the District Court option, providing only for appeal to the CAFC. However, a recent case filed in the Eastern District of Virginia questions the USPTO’s interpretation of the statutory changes set forth in MPEP § 2279. In Sigram Schindler Beteilungsgesellschaft mbH v. Kappos, No. 1:09-cv-935-TSE-IDD (E.D. Va.) the patent owner (Sigram Schindler) seeks a right to a trial de novo under 35 U.S.C. § 145 after an adverse decision of the BPAI in an ex parte reexamination (requested by Cisco Systems Inc.) of Sigram Schindler’s 2005 patent for a telecommunications network data transmission method and related network switch. Sigram Schindler is challenging the USPTO’s interpretation of Section 13202(d) of Public Law 107-273 regarding judicial review of BPAI ex parte reexamination decisions. At the heart of Sigram Schindler’s law suit is a desire to obtain a de novo review of the BPAI’s decision in a federal district court that will provide discovery power over Cisco to obtain code utilized in Cisco’s products. Sigram Schindler appears to be advancing the theory that Cisco’s code will demonstrate that Sigram Schindler’s declaration evidence presented during the reexamination proceedings as to secondary considerations of non-obviousness is more significant than the BPAI gave it credit. (i.e., evidence of use of the invention by others is an objective indicator of non-obviousness). Sigram Schindler is seeking the Eastern District of Virginia to nullify the USPTO ‘s interpretation of Public Law 107-273, section 13202(d) as “unlawful and legally void.” In Sigram Schindler’s August 19, 2009 filed complaint, they aver that “those rules are unlawful and should be set aside as having been adopted in excess of the PTO’s statutory authority.” They say the USPTO’s efforts to regulate proceedings outside the USPTO is ultra vires. On October 21, 2009 the USPTO filed a motion for summary judgment seeking to dismiss the case. The USPTO says that Sigram Schindler lacks standing to bring the “premature” case because it’s not clear how the BPAI will ultimately rule and whether they will even need to file an appeal to the courts. According to the USPTO’s memo supporting its motion for summary judgment, “the challenged regulation — whatever its import — does not apply to [Sigram Schindler] now and may never apply to [Sigram Schindler] at all.” The USPTO’s position on the merits is that Sigram Schindler’s case should fail because of the statutory language Congress specifically placed into the Patent Act in sections 141 and 145 regarding patent owners recourse to appeal only to the Federal Circuit. The USPTO argues that Congressional amendments in Public Law 107-273 that spurred the USPTO interpretation set forth in MPEP § 2279 in question supercede the prior versions of sections 141 and 145, and are controlling. Sigram Schindler’s strategy seems to be seeking a second chance in court to persuade the fact finder than its claims are non-obvious by gaining access to third party information that was not in its possession and that it could not obtain during the ex parte reexamination proceedings. As can be appreciated, if Sigram Schindler is successful, Patent Owner’s can emerge from the USPTO’s adverse decision by the BPAI and through a federal district court action obtain discovery from third parties that would be advantageous to its position in seeking reversal of an adverse decision by the USPTO’s BPAI in ex parte reexamination proceedings. For this reason, this case is an interesting one to watch unfold.