811 F.3d 1326
Fed. Cir.2016Background
- The ’609 patent relates to supercritical fluid chromatography (SFC) systems using an FPR-orifice-BPR arrangement and optionally a differential pressure transducer to control pressure drop across the orifice.
- Aurora SFC Systems filed an inter partes reexamination request (citing Azimov and Shoji); Waters amended claims and added CO2-dependent claims during reexamination.
- Agilent purchased substantially all of Aurora’s assets in Aug. 2012 but Aurora remained a distinct entity and continued to participate in the reexamination and related district-court litigation.
- The PTO examiner rejected the claims; the Board reversed most rejections, adopting some rejections based on Shoji but rejecting anticipation by Azimov for lack of a differential pressure transducer.
- The Board’s decision caption listed Aurora as the third-party requester; Aurora filed (later) a request to change the real party in interest to Agilent but did not seek substitution as the third-party requester during reexamination.
- Agilent appealed the Board’s decision to the Federal Circuit; Waters moved to dismiss for lack of standing/authority to appeal.
Issues
| Issue | Plaintiff's Argument (Agilent) | Defendant's Argument (Waters) | Held |
|---|---|---|---|
| Whether Agilent has statutory right to appeal under 35 U.S.C. § 141 | Agilent says it is Aurora’s successor-in-interest (or privy) and hence may exercise Aurora’s appeal rights | Waters says Aurora — not Agilent — is the third-party requester and only patent owners or third-party requesters (not privies) may appeal | Dismissed: Agilent lacks a statutory cause of action to appeal because it failed to prove it is Aurora’s successor-in-interest; mere privies cannot appeal |
| Whether a privy or successor-in-interest may stand in for the original third-party requester on appeal | Agilent initially argued privy status, then asserted successor-in-interest status based on asset purchase | Waters argued statutes confer appeal rights only to patent owners and the (named) third-party requester; Congress separately referenced privies in estoppel provisions, implying different treatment | Court: Privies are not entitled to appeal under § 141; court declined to decide whether a successor-in-interest can appeal because Agilent did not establish successor status |
| Whether Agilent established it became Aurora’s successor-in-interest | Agilent relied on asset purchase and a declaration; argued it agreed to be bound by reexaminations and litigation outcomes | Waters pointed to continued Aurora participation (submissions, counsel appearance), Aurora remaining party in district case, and absence of a full asset-purchase agreement showing transfer of rights | Held: Agilent failed to meet its burden to show it is successor-in-interest; facts (post-closing filings, Aurora’s continued role) undermine Agilent’s claim |
| Burden to show right to appeal | Agilent must prove it belongs to the class entitled to appeal under § 141 | Waters contends Agilent bears this burden and has not met it | Held: Burden on Agilent; because Agilent failed to prove successor status, dismissal required |
Key Cases Cited
- Davis v. Passman, 442 U.S. 228 (U.S. 1979) (distinguishing jurisdiction, standing, and cause of action analysis)
- Bell v. Hood, 327 U.S. 678 (U.S. 1946) (failure to state a cause of action is merits, not jurisdictional defect)
- Engage Learning, Inc. v. Salazar, 660 F.3d 1346 (Fed. Cir. 2011) (failure to state proper cause of action calls for judgment on the merits)
- Pregis Corp. v. Kappos, 700 F.3d 1348 (Fed. Cir. 2012) (statutory scheme can impliedly preclude judicial review by parties not identified in statute)
- Vaillancourt v. Becton Dickinson & Co., 749 F.3d 1368 (Fed. Cir. 2014) (patent owner identity can change for § 141 after complete transfer of patent ownership)