Last thing I remember, I wasRunning for the doorI had to find the passage backTo the place I was before — Hotel CaliforniaBack in 2005, a third party requested ex parte patent reexamination of U.S. Patent 5,916,912 (90/007,626). The ‘912 Patent is assigned to the Regents of the University of California and relates to methods of enhancing mitochondrial metabolism without a concomitant increase in metabolic production of oxygen reactive species, using specific doses of a combination of carnitine, together with lipoic acid (or N-acetyl-cysteine.). During the patent reexamination the examiner confirmed a handful of claims, while rejecting claims 1,2, 4-7,9-11,16,17,20-23,26-29,37-40,43-47, and 50-54. The rejection of these claims was appealed to the BPAI, which affirmed the rejection on September 27,2010.Rather than proceeding to the CAFC, this past Monday, Regents sued the USPTO in the United States District Court for the District of Columbia. Readers may recall this tactic was tried last year in the case of Sigram Schindler Beteilungsgesellschaft mbH v. Kappos, No. 1:09-cv-935-TSE-IDD (E.D. Va.). This case was dismissed without reaching the question of the propriety of suing the USPTO in this manner. In a nutshell, the USPTO believes that Patent Owners in ex parte patent reexaminations filed on or after November 29, 1999 must proceed to the CAFC. Others (such as Sigram and Regents) believe the position of the USPTO is based on a misapplication of the law.So, what’s the big deal with bypassing the CAFC in favor of the DC District Court?The court is significant to patent owners because a civil suit against the USPTO in the district court results in de novo review of the BPAI decision and affords the patent owner an opportunity to take third party discovery and introduce new evidence to rebut the USPTO’s position. In many cases, Patentees are hoping to introduce new evidence to rebut a perceived change in the position of the USPTO. This is because the Patentee may be precluded to do so at the USPTO due to the late stage of the ex parte patent reexamination, or at the CAFC since the appeal record cannot be changed.So, is this “do-over” tactic legitimate?The dispute as to statutory interpretation relates primarily to 35 U.S.C. § 141 and 35 U.S.C. § 306, and changes brought about by the American Inventors Protection Act of 1999 (AIPA).The USPTO interprets Public Law 107-273, section 13202(d) (codified as 35 U.S.C. § 306), as prohibiting a patent owner in an ex parte reexamination from obtaining judicial review of a decision of the BPAI by filing a civil suit against the USPTO in federal district court. Under the USPTO interpretation, codified at 37 C.F.R. § 1.303 and discussed in MPEP § 2279, the patent owner may only seek judicial review in an ex parte reexamination filed on or after November 29, 1999, by appealing the decision of the BPAI to the Federal Circuit.Patentees argue that the USPTO’s attempt to regulate outside conduct is ultra vires, and at odds with the plain language of 35 U.S.C. § 306. The AIPA of 1999 introduced inter partes reexamination; there was no purpose to change any aspect of ex parte patent reexamination practices. Of course, the Public Law does use the loose language “any reexamination,” but this same language was added to 35 U.S.C. § 141 as it relates to inter partes patent reexamination.Curiously, in the Regents complaint (here), the reexamination is referred to as an “application” in paragraphs 6, 10 and 11. Regents also goes as far in paragraph 11 to ask that the Director to “issue a patent.” I can only assume the use of this improper terminology is deliberate. For example, 35 U.S.C. § 141 and 145 primarily refer to “applicants” and “applications.” In patent reexamination there are no “applicants” only Patent Holders (See 35 U.S.C. § 134). Perhaps Regents is hoping to convince the court that the distinction is meaningless; of course it is not. Anyone that has ever assumed that extensions of time in patent reexamination are a matter of right (under 37 CFR § 1.136) learns very quickly that this distinction is quite meaningful. (contrast with 37 CFR § 1.956)PPG Comment: There has to be predictability and finality to patent reexamination, otherwise the entire justification for its existence is eviscerated. With pendencies of patent reexamination lasting several years (as evidenced by Regents, filed in 2005), further de novo review will just prolong an already lengthy proceeding.Certainly in the past, the PTO has been inconsistent in the treatment of new grounds of rejections on appeal, after final, etc., In such instances, I would agree that Patentees are at a disadvantage. However, the solution to this problem is not to provide a new avenue for delay, abuse and expense, but to allow Director Kappos to right the ship—which he appears to be doing. The newly proposed appeal rules address the concern of new grounds of rejection. If a Patentee fails to seasonably present evidence otherwise, a second bite at the apple is simply unwarranted.Note: The current patent reform bill, S.515, seeks to end the debate once and for all by expressely foreclosing district court actions for Patentees appealing an adverse ruling in ex parte patent reexamination.
Back in 2005, a third party requested ex parte patent reexamination of U.S. Patent 5,916,912 (90/007,626). The ‘912 Patent is assigned to the Regents of the University of California and relates to methods of enhancing mitochondrial metabolism without a concomitant increase in metabolic production of oxygen reactive species, using specific doses of a combination of carnitine, together with lipoic acid (or N-acetyl-cysteine.). During the patent reexamination the examiner confirmed a handful of claims, while rejecting claims 1,2, 4-7,9-11,16,17,20-23,26-29,37-40,43-47, and 50-54. The rejection of these claims was appealed to the BPAI, which affirmed the rejection on September 27,2010.
Rather than proceeding to the CAFC, this past Monday, Regents sued the USPTO in the United States District Court for the District of Columbia. Readers may recall this tactic was tried last year in the case of Sigram Schindler Beteilungsgesellschaft mbH v. Kappos, No. 1:09-cv-935-TSE-IDD (E.D. Va.). This case was dismissed without reaching the question of the propriety of suing the USPTO in this manner. In a nutshell, the USPTO believes that Patent Owners in ex parte patent reexaminations filed on or after November 29, 1999 must proceed to the CAFC. Others (such as Sigram and Regents) believe the position of the USPTO is based on a misapplication of the law.
So, what’s the big deal with bypassing the CAFC in favor of the DC District Court?
The court is significant to patent owners because a civil suit against the USPTO in the district court results in de novo review of the BPAI decision and affords the patent owner an opportunity to take third party discovery and introduce new evidence to rebut the USPTO’s position. In many cases, Patentees are hoping to introduce new evidence to rebut a perceived change in the position of the USPTO. This is because the Patentee may be precluded to do so at the USPTO due to the late stage of the ex parte patent reexamination, or at the CAFC since the appeal record cannot be changed.
So, is this “do-over” tactic legitimate?
The dispute as to statutory interpretation relates primarily to 35 U.S.C. § 141 and 35 U.S.C. § 306, and changes brought about by the American Inventors Protection Act of 1999 (AIPA).
The USPTO interprets Public Law 107-273, section 13202(d) (codified as 35 U.S.C. § 306), as prohibiting a patent owner in an ex parte reexamination from obtaining judicial review of a decision of the BPAI by filing a civil suit against the USPTO in federal district court. Under the USPTO interpretation, codified at 37 C.F.R. § 1.303 and discussed in MPEP § 2279, the patent owner may only seek judicial review in an ex parte reexamination filed on or after November 29, 1999, by appealing the decision of the BPAI to the Federal Circuit.
Patentees argue that the USPTO’s attempt to regulate outside conduct is ultra vires, and at odds with the plain language of 35 U.S.C. § 306. The AIPA of 1999 introduced inter partes reexamination; there was no purpose to change any aspect of ex parte patent reexamination practices. Of course, the Public Law does use the loose language “any reexamination,” but this same language was added to 35 U.S.C. § 141 as it relates to inter partes patent reexamination.
Curiously, in the Regents complaint (here), the reexamination is referred to as an “application” in paragraphs 6, 10 and 11. Regents also goes as far in paragraph 11 to ask that the Director to “issue a patent.” I can only assume the use of this improper terminology is deliberate. For example, 35 U.S.C. § 141 and 145 primarily refer to “applicants” and “applications.” In patent reexamination there are no “applicants” only Patent Holders (See 35 U.S.C. § 134). Perhaps Regents is hoping to convince the court that the distinction is meaningless; of course it is not. Anyone that has ever assumed that extensions of time in patent reexamination are a matter of right (under 37 CFR § 1.136) learns very quickly that this distinction is quite meaningful. (contrast with 37 CFR § 1.956)
PPG Comment: There has to be predictability and finality to patent reexamination, otherwise the entire justification for its existence is eviscerated. With pendencies of patent reexamination lasting several years (as evidenced by Regents, filed in 2005), further de novo review will just prolong an already lengthy proceeding.
Certainly in the past, the PTO has been inconsistent in the treatment of new grounds of rejections on appeal, after final, etc., In such instances, I would agree that Patentees are at a disadvantage. However, the solution to this problem is not to provide a new avenue for delay, abuse and expense, but to allow Director Kappos to right the ship—which he appears to be doing. The newly proposed appeal rules address the concern of new grounds of rejection. If a Patentee fails to seasonably present evidence otherwise, a second bite at the apple is simply unwarranted.