In an earlier post, we commented on the case of Sigram Schindler Beteilungsgesellschaft mbH v. Kappos, No. 1:09-cv-935-TSE-IDD (E.D. Va.), which raised the issue of whether the USPTO’s interpretation of Public Law 107-273, section 13202(d), codified at 35 U.S.C. § 306, was proper. The USPTO interprets 35 U.S.C. § 306 as prohibiting a patent owner in an ex parte reexamination from obtaining judicial review of a decision of the Board of Patent Appeals and Interferences (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. This is significant to patent owners because civil suit against the USPTO in district court results in de novo review of the BPAI decision and affords the patent owner an opportunity to take third party discovery.
On Friday, December 18, 2009, Judge T.S. Ellis, III, issued an opinion that declined to adjudicate the USPTO’s interpretation of 35 U.S.C. § 306. Judge Ellis decided that Sigram Schindler did not present a justiciable case or controversy to invoke the court’s jurisdiction to reach the merits of whether 37 C.F.R. § 1.303 contravenes 35 U.S.C. § 306. Instead, Judge Ellis granted summary judgment in favor of the USPTO, finding Sigram Schindler’s declaratory judgment action unripe because (i) the BPAI has not yet rendered an adverse decision that would allow Sigram Schindler to seek court review of that determination, making the purported hardship contingent and speculative; (ii) Sigram Schindler has not demonstrated that the challenged regulation creates an immediate, direct, and significant hardship altering its day-to-day activities; and (iii) any hardship is remediable by 28 U.S.C. § 1631. He dismissed Sigram Schindler’s complaint without prejudice.
Sigram Schindler had argued that its declaratory judgment action was necessitated by the Hobson’s choice presented by a decision from the BPAI: appealing to the Federal Circuit and waiving the right to file a district court action or filing a district court action and risking expiration of the sixty-day deadline for appealing to the Federal Circuit while the district court weighed jurisdictional issues. That Hobson’s choice may present itself, when and if the BPAI issues a decision adverse to Sigram Schindler.