CAFC Avoids Determining Propriety of Third Party Declaration Practice in Inter Partes Patent Reexamination

Yesterday, in Lingamfelter v. Kappos, (here) the CAFC decided that the Patentee had waived the right to contest the propriety of the third party declarations filed in their inter partes patent reexamination. (earlier post here)

The crux of the Patentee’s argument was that the inter partes reexamination statute permits the USPTO to accept “written comments” from Requesters—and “comments” as recited in the relevant statute cannot embrace testimonial “evidence” of declarants.35 U.S.C.§ 314(B)(2) The Patentee further decried the allegedly improper practice as unfair, pointing out that discovery is not permitted; thus there is no way to demonstrate the inaccuracy of the submitted evidence.

The CAFC seemed intrigued by the Patentee’s contentions during oral argument, but ultimately side stepped the issue finding the argument waived, explaining:

We need not address the merit of Lingamfelter’s arguments, however, because in our view, he has waived them. To begin with, Lingamfelter was too late in challenging the introduction of the evidence into the record. He did not object when third party requesters’ evidence was submitted to the examiner at the early stages of the inter partes proceedings (in July 2005), or when the first appeal from the examiner’s decision was presented to the Board (in December 2006). It was not until he elected to reopen the case before the examiner (in February 2010 and more than four years after the proceedings had begun) that he contended the examiner lacked authority to receive the contested evidence from third party requesters. Even at that late stage, however, Lingamfelter still did not sufficiently brief the issues that he raises in this appeal.

While a loss for this Patentee, it seems very likely that the issue will reemerge at the CAFC in the months ahead.