Power Integrations, Inc. v. Kappos
6 F. Supp. 3d 11
D.D.C.2013Background
- Power Integrations sues in D.D.C. to review BPAI ex parte reexamination decision on patent 6,249,876.
- USPTO Director moves to dismiss for lack of subject-matter jurisdiction or, alternatively, transfer to the Federal Circuit.
- 1999 amendments to the Patent Act removed district court review for ex parte reexaminations; post-1999 review rights narrowed to patent owners via 134, 141, 145.
- BPAI decision issued July 9, 2009; BPAI affirmed December 22, 2010; rehearing denied May 11, 2011; complaint filed thereafter.
- 2011 amendments (AIA) changed 134, 141, 306, and confirmed alignment with post-1999 structure; court ultimately transfers to the Federal Circuit.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether 1999 amendments removed district court review for ex parte reexaminations | Power Integrations argues 306 preserves district court relief. | Kappos contends amendments ended district court jurisdiction for patent owners. | No jurisdiction in district court; transfer appropriate. |
| Proper interpretation of 306 after 1999 amendments | Segment 306 creates freestanding right despite amendments. | 306 is cross-reference to 141-145 as amended; no independent right. | 306 conformed to post-1999 amendments; no independent district-court right. |
| Effect of 2011 amendments on prior understanding | 2011 housekeeping preserves prior rights. | 2011 clarifies and aligns with 1999 changes; confirms removal of district-court route. | 2011 amendments confirm the post-1999 structure; no district-court review for patent owners. |
| Whether transfer to the Federal Circuit is proper | If jurisdiction exists, it remains in this court; transfer unnecessary. | Transfer under 28 U.S.C. § 1631 to the Federal Circuit is appropriate. | Case transferred to the Federal Circuit. |
Key Cases Cited
- Joy Techs., Inv. v. Manbeck, 751 F. Supp. 225 (D.D.C. 1990) (construed 'applicant' to cover patent owners pre-1999)
- Teles AG v. Kappos, 846 F. Supp. 2d 102 (D.D.C. 2012) (post-AIPA reading of sections 134, 141, 145; removal of district-court review)
- Sigram Schindler Beteiligungsgesellschaft MBH v. Kappos, 675 F. Supp. 2d 629 (E.D. Va. 2009) (pre-AIA uncertainty about patent owners' rights to district court review)
- Canady v. Erbe Elektromedizin GMBH, 271 F. Supp. 2d 64 (D.D.C. 2002) (patent owner's rights regarding district court review discussed)
- Fresenius Med. Care Holdings, Inc. v. Baxter Int'l, Inc., 2007 WL 1655625 (N.D. Cal. 2007) (discussed post-AIA review avenues (not controlling on jurisdiction))