Belkin International, Inc. v. Kappos
696 F.3d 1379
Fed. Cir.2012Background
- Belkin appeals a PTO inter partes reexamination decision denying review of three references (Transistor Article, Howto Guide, Redlich) that the Director previously found did not raise a substantial new question of patentability (SNQ).
- The Director had granted reexamination focusing only on claims 1–3 and 8–10 based on Peirce, which was found to raise an SNQ; the other references were deemed not SNQs for those claims.
- Belkin sought review of the Director’s non-SNQ determinations and of the scope of reexamination, but the Board held it lacked jurisdiction to review non-SNQ determinations under § 312(c).
- The Board affirmed the examiner’s Peirce-based rejections and refused to reconsider the other references.
- Belkin argued the Director’s SNQ determinations and the MPEP provided review rights and estoppel issues; the PTO argued SNQ determinations are non-appealable and only Peirce governs the reexamination.
- The court agreed that the Director’s non-SNQ determinations are final and non-appealable, and that reexamination was limited to the Peirce SNQ question; Belkin did not petition for Director review of the non-SNQ determinations.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Jurisdiction over non-SNQ references | Belkin argues Board may review SNQ determinations affecting claims 1–3, 8–10. | Director's non-SNQ determinations are final and non-appealable; Board cannot review those findings. | Board correctly refused to review non-SNQ determinations; jurisdictional bar upheld. |
| Scope of reexamination after SNQ finding | Once SNQ is found for any reference, all prior art should be considered. | Reexamination is limited to the SNQ question identified by the Director; other references remain non-considered if not SNQ. | Reexamination limited to the Peirce SNQ; other references not reviewed. |
| Appealability under 37 C.F.R. § 1.927 and related statutes | Belkin could petition the Director to review non-SNQ determinations; the MPEP supports review rights. | The Director’s SNQ determinations cannot be reviewed; MPEP § 2648 does not create a right to review non-SNQ decisions here. | No right to review the non-SNQ determinations; petition to review was required and not filed. |
| Estoppel and effect of non-SNQ determinations | Estoppel should preclude later citations of prior art raised but not considered as SNQs. | Estoppel does not attach to non-final or non-SNQ determinations; the Director’s determinations are not final patentability decisions. | Estoppel arguments rejected; Director's non-SNQ determinations are not final validity determinations. |
Key Cases Cited
- In re Gartside, 203 F.3d 1305 (Fed. Cir. 2000) (gives de novo review standard for Board decisions and jurisdiction)
- In re Kathawala, 9 F.3d 942 (Fed. Cir. 1993) (statutory interpretation standard in PTO appeals)
- In re Donaldson Co., 16 F.3d 1189 (Fed. Cir. 1994) (plain meaning of statute governs unless legislative intent specifies otherwise)
- In re Lovin, 652 F.3d 1349 (Fed. Cir. 2011) (deference to PTO interpretation of regulations unless plainly erroneous)