781 F.3d 1349
Fed. Cir.2015Background
- SCR Pharmatop filed a PCT application claiming priority from a June 6, 2000 French filing and failed to meet the 30‑month U.S. national‑stage filing requirements, so the U.S. application was deemed abandoned.
- SCR filed a PTO petition to revive the application on January 2, 2003, stating the delay was "unintentional." The PTO granted revival on April 25, 2003; U.S. Patent No. 6,992,218 issued in 2006.
- In 2011 Pharmatop sued Exela for infringement under the Hatch‑Waxman statute after Exela filed an ANDA with a Paragraph IV certification.
- Exela filed a petition with the PTO and then an APA suit in district court seeking to vacate the PTO’s revival decision, arguing § 371(d) (as then written) allowed revival only for "unavoidable" delay and the PTO misapplied its regulation permitting "unintentional" revival.
- The PTO refused to accept Exela’s third‑party petition, asserting no authority exists for non‑parties to challenge revival, and moved to dismiss Exela’s APA complaint.
- The district court dismissed (on reconsideration) as time‑barred under 28 U.S.C. § 2401(a); the Federal Circuit affirmed on the independent ground that third parties cannot obtain APA review of PTO revival rulings.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether a third party may challenge a PTO revival decision under the APA | Exela: APA § 702 and the presumption of judicial review allow a third party to seek review of ultra vires PTO revival decisions | PTO: The Patent Act’s scheme and PTO practice preclude third‑party collateral APA challenges to revival rulings | Held: No; third parties may not obtain APA review of PTO revival rulings (affirmed) |
| Whether the PTO erred by applying 37 C.F.R. § 1.137 ("unintentional") instead of § 371(d) ("unavoidable") | Exela: PTO misapplied statute and regulation—regulation cannot override statute; revival was ultra vires | PTO: Even if error alleged, Exela lacks a cognizable APA cause of action as a non‑party | Held: Court did not reach merits; barred from judicial review by third‑party APA challenge framework |
| Whether Exela’s APA claim was time‑barred | Exela: timely (or merits should be reached regardless) | PTO: Statute of limitations bars action; district court applied 6‑year limit | Held: Affirmance rests on non‑reviewability; district court had dismissed as time‑barred on reconsideration but appellate decision affirms on non‑reviewability ground |
| Whether precedent allows improper‑revival defenses in infringement suits | Exela: APA is needed because Aristocrat bars such defenses, leaving no judicial route | PTO: Patent Act channels challenges to specified procedures; third‑party APA suits are inconsistent with statutory scheme | Held: Patent Act’s structure bars third‑party APA review; Aristocrat and related precedent support limiting collateral revival challenges |
Key Cases Cited
- Bowen v. Michigan Academy of Family Physicians, 476 U.S. 667 (1986) (presumption in favor of judicial review of agency action)
- Block v. Community Nutrition Institute, 467 U.S. 340 (1984) (statutory scheme and omission can show Congress intended to preclude review)
- Morganroth v. Quigg, 885 F.2d 843 (Fed. Cir. 1989) (applicant may seek APA review of PTO refusal to revive an application)
- Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 543 F.3d 657 (Fed. Cir. 2008) (improper revival is not a defense in infringement suits)
- Pregis Corp. v. Kappos, 700 F.3d 1348 (Fed. Cir. 2012) (third party cannot sue PTO under APA to challenge issuance of a patent)
- Magnivision, Inc. v. Bonneau Co., 115 F.3d 956 (Fed. Cir. 1997) (procedural lapses in prosecution generally do not support invalidity defenses)