In re Teles AG Informationstechnologien
747 F.3d 1357
| Fed. Cir. | 2014Background
- Teles owns all substantial rights in U.S. Patent No. 6,954,453 on data transmission in networks; PTO ex parte reexamination rejected claims 34-36 and 38 as obvious, Board affirmed.
- Teles filed suit in the U.S. District Court for the District of Columbia under 35 U.S.C. § 145 challenging the Board’s decision.
- The district court dismissed for lack of subject matter jurisdiction, holding §145 review was unavailable to patent owners after 1999 amendments.
- This court holds the district court erred in dismissing and should have transferred the case under 28 U.S.C. § 1631, treating it as properly transferred and an appeal from the Board’s decision.
- We affirm the Board’s rejection of claim 35 as obvious under 35 U.S.C. § 103 after de novo claim construction and factual review.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether §145 review remains available to patent owners after 1999 amendments | Teles contends §145 survives for patent owners | Defendants argue amendments eliminated patent owner §145 relief | §145 rights eliminated; district court lacked jurisdiction |
| Whether the district court should have dismissed or transferred the §145 case | Petition timely filed; transfer appropriate | Dismissal proper due to lack of jurisdiction | District court should have transferred under §1631; case treated as transferred |
| Whether this court has jurisdiction to review Board’s decision via transferred action | Treat as appeal from Board; merits review appropriate | Only §145 action; jurisdictional issues prevent review | We review the Board’s decision de novo on the merits |
Key Cases Cited
- Joy Techs., Inc. v. Manbeck, 959 F.2d 226 (Fed. Cir. 1992) (construed §145 to apply to patent owners in ex parte reexaminations)
- Takeda Pharm. Co., Ltd. v. Doll, 561 F.3d 1372 (Fed. Cir. 2009) (supporting §145 applicability to patent owners)
- In re Lueders, 111 F.3d 1569 (Fed. Cir. 1997) (statutory interpretation in reexamination context)
- Boeing Co. v. Comm’r of Patents & Trademarks, 853 F.2d 878 (Fed. Cir. 1988) (early interpretation of ex parte reexamination procedures)
- Paul v. I.N.S., 348 F.3d 43 (2d Cir. 2003) (§1631 transfer/interest of justice in transfer decisions)
- Kolek v. Engen, 869 F.2d 1281 (9th Cir. 1989) (transfer when appellate deadline lapsed and justice requires)
- In re Enhanced Sec. Research, LLC, 739 F.3d 1347 (Fed. Cir. 2014) (de novo review standard and substantial evidence in obviousness)