In Re: Arunachalam
824 F.3d 987
| Fed. Cir. | 2016Background
- Dr. Lakshmi Arunachalam is the owner of U.S. Patent No. 5,778,178, which entered reexamination in November 2008.
- In September 2014, the Patent Trial and Appeal Board (PTAB) affirmed rejections of claims 9–16 but designated a new ground of rejection as to claim 16.
- After the Board’s action, Dr. Arunachalam elected to reopen prosecution rather than seek rehearing before the Board.
- The patent examiner then issued a final rejection in June 2015 following the reopened prosecution.
- Instead of appealing the examiner’s final rejection to the Board under 35 U.S.C. § 134(b), Dr. Arunachalam filed an appeal directly to the Federal Circuit.
- The Federal Circuit dismissed the appeal for lack of jurisdiction because the Board had not issued a final decision subject to review under 28 U.S.C. § 1295(a)(4)(A).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the Federal Circuit has jurisdiction over an appeal when reexamination reopened after the PTAB designated a new ground of rejection | Arunachalam appealed to the Federal Circuit after the examiner issued a final rejection, treating the PTAB action as reviewable | The government (via statutory framework) contends the proper path is appeal of the examiner to the PTAB first, then to the Federal Circuit after a final Board decision | Dismissed: court lacks jurisdiction because the Board had not issued a final decision; the appeal was premature |
| Whether a PTAB designation of a new ground of rejection is a final decision for purposes of judicial review | Arunachalam implicitly treated the PTAB action as triggering direct review | The PTAB’s new ground is not final; it allows the patent owner to reopen prosecution or seek rehearing before the Board | Held: a new ground is non-final; reopening prosecution requires subsequent Board finality before Federal Circuit review |
| Whether the Federal Circuit should relax finality requirements for Patent Office appeals | Arunachalam argued the examiner’s final rejection justified immediate appellate review | The court maintained the finality rule and two-step appeals preserve orderly review and efficiency | Held: the court enforces finality; parties must exhaust Board proceedings before appeal |
| Whether pending motions should be resolved despite dismissal for lack of jurisdiction | Arunachalam sought relief tied to the appeal | The court lacked jurisdiction to adjudicate motions after dismissing appeal | Denied as moot; appeal dismissed for lack of jurisdiction |
Key Cases Cited
- Loughlin v. Ling, 684 F.3d 1289 (Fed. Cir. 2012) (§ 1295(a)(4) incorporates a finality requirement for Board decisions)
- Copelands’ Enters., Inc. v. CNV, Inc., 887 F.2d 1065 (Fed. Cir. 1989) (en banc) (endorsing finality requirement and policy reasons for single, final appeals)
- Firestone Tire & Rubber Co. v. Risjord, 449 U.S. 368 (U.S. 1981) (discussing benefits of awaiting final decisions and consolidating errors in a single appeal)