Dispute with USPTO Ripens for District Court?

As some may recall, in 2009 patent owner Sigram Schindler pursued a declaratory judgment action against the USPTO in the Eastern District of Virginia. (EDVA). The DJ action questioned the propriety of foreclosing district court review of USPTO action in the ex parte patent reexamination of Sigram’s U.S. Patent 6,954,453.

More specifically, the DJ action (previous discussion here) sought a determination as to whether the USPTO’s interpretation of 35 U.S.C. § 306, was proper.  The USPTO interprets 35 U.S.C. § 306 as prohibiting a Patentee in an ex parte patent reexamination from obtaining judicial review of a decision of the Board of Patent Appeals & Interferences (BPAI) by filing a civil suit against the USPTO in federal district court.

Rather than deciding the issue, the EDVA simply noted that the question was not yet ripe due to the absence of a BPAI decision. Yesterday, a decision issued (here) in the reexamination (90/010,017) affirming the examiners rejection of the reexamined claims. Seems like matters have ripened…..

Critics perceived the previous DJ  action as primarily a delay tactic for the purpose of allowing the co-pending Delaware litigation of the ‘453 Patent to advance. It is unclear whether or not Sigram will now head back to the EDVA, or simply follow in the footsteps of The Regents of the University of California v. Kappos 1:10-cv-02031 (D.D.C.) (previous discussion here).

Currently the validity portion of the Delaware case is stayed pending the outcome of the patent reexamination. (see previous discussion on the impact of the reexamiantion on the Markman Order here)