811 F.3d 1326
Fed. Cir.2016Background
- The ’609 patent covers an SFC (supercritical fluid chromatography) system using an FPR-orifice-BPR arrangement and optionally a differential pressure transducer to control pressure drop.
- Aurora filed an inter partes reexamination of the ’609 patent in March 2012; Waters amended claims during prosecution and the examiner rejected all remaining claims.
- Aurora (not Agilent) cross-appealed the examiner’s rejections to the Patent Trial and Appeal Board; the Board reversed the examiner on several grounds but adopted a new rejection based on Shoji for some claims.
- Agilent acquired "substantially all" of Aurora’s assets around August 2012 and later participated in the reexamination and related litigation, but Aurora remained a distinct entity and continued to file submissions during the reexamination.
- Agilent appealed the Board’s decision to the Federal Circuit, but Waters moved to dismiss for lack of a statutory cause of action, arguing Aurora — the third-party requester — (not Agilent) is the proper appellant.
- The Federal Circuit concluded Agilent failed to prove it was Aurora’s legal successor-in-interest (and Congress’s statutes confer appeal rights to patent owners and third-party requesters, not to mere privies), and therefore dismissed Agilent’s appeal for lack of a statutory cause of action.
Issues
| Issue | Plaintiff's Argument (Agilent) | Defendant's Argument (Waters) | Held |
|---|---|---|---|
| Whether Agilent may appeal under 35 U.S.C. § 141 | Agilent is Aurora’s successor-in-interest (or privy) and thus may invoke § 141 appeal rights | Only the patent owner or the third-party requester who filed the reexamination may appeal; a mere privy or unproven successor cannot | Agilent failed to show it is Aurora’s successor-in-interest; mere privies lack a statutory cause of action to appeal; appeal dismissed |
| Whether a successor-in-interest can substitute as the third-party requester | Asset purchase transferred rights relating to the reexamination to Agilent, permitting substitution | Aurora remained a distinct party, continued filings after the sale, and did not designate Agilent as the third-party requester; Agilent did not prove full transfer | Court declined to decide the broader legal question because Agilent did not establish successor status; substitution not allowed here |
| Whether statutory language or related provisions allow appeals by privies | Agilent argued statutory terms permit contemporaneous ‘‘requesting’’ party to be considered | § 317 explicitly references privies for estoppel but § 141 does not extend appeal rights to privies; differing statutory terms show Congress intended a difference | Court reads statutes as excluding mere privies from § 141 appeals; Congress’s separate use of "privies" in other provisions supports that interpretation |
| Burden to establish cause of action | Agilent bears burden to prove it is entitled to appeal as successor-in-interest | Waters argues burden on Agilent because it seeks relief | Court: burden rests on Agilent; Agilent failed to produce the asset agreement or sufficient evidence to satisfy that burden |
Key Cases Cited
- Engage Learning, Inc. v. Salazar, 660 F.3d 1346 (Fed. Cir.) (distinguishing jurisdictional defects from failure to state a cause of action)
- Davis v. Passman, 442 U.S. 228 (1979) (whether a plaintiff may invoke a statute depends on class membership of litigants entitled to enforce the statute)
- Pregis Corp. v. Kappos, 700 F.3d 1348 (Fed. Cir.) (statutory scheme can impliedly preclude judicial review by other parties)
- Vaillancourt v. Becton Dickinson & Co., 749 F.3d 1368 (Fed. Cir.) (treatment of post-reexamination change in patent owner for § 141 purposes)
- Jazz Photo Corp. v. ITC, 264 F.3d 1094 (Fed. Cir.) (complainant bears burden to establish its cause of action)