Teles Ag v. Kappos
846 F. Supp. 2d 102
D.D.C.2012Background
- TELES AG and Sigram Schindler allege BPAI ex parte reexamination of Schindler Patent 6,954,453 B1 resulted in final rejection of claims 34-36 and 38, and pursue judicial review in district court under 35 U.S.C. § 306.
- The 1999 amendments to 35 U.S.C. §§ 134, 141, and 145 altered rights of patent applicants, patent owners, and third-party requesters, and did not explicitly revise § 306.
- Pre-1999, patent owners could pursue district court review under § 306 or pursue Federal Circuit review; the amendments began confining patent owners to appellate review and removing district-court review.
- The Court analyzes legislative history and statutory text to determine whether, after 1999, § 306 remains a vehicle for patent owners to obtain district-court review of BPAI reexamination decisions.
- The 2011 AIA amended § 306 to remove reference to § 145, aligning § 306 with the post-1999 scheme, reinforcing the lack of district-court jurisdiction for patent owners.
- The court ultimately grants the defendant’s motion to dismiss for lack of jurisdiction and transfers the case to the Federal Circuit under 28 U.S.C. § 1631.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Do the 1999 amendments strip district court jurisdiction under §306 for patent owners? | Schindler argues amendments did not remove rights under §306. | Kappos argues amendments removed district-court review for patent owners under §306. | Yes, amendments removed district-court jurisdiction for patent owners. |
| Should §306 be read in pari materia with §§134, 141, and 145? | §306 remains viable despite changes to 134-145. | §306 must align with post-1999 §§134-145 to limit review. | §306 must be read consistently with §134-145, denying district-court review for patent owners. |
| Does §141’s limitation to appeal to the Federal Circuit apply to patent owners in ex parte reexaminations? | Patent owners may still pursue §306 despite §141 limitations. | §141 applies to all reexaminations, restricting patent owners to Federal Circuit review. | Yes, patent owners may only appeal to the Federal Circuit; no district-court review under §306. |
| Does the 2011 amendment to §306 support transfer or provide jurisdiction? | 2011 amendment is merely conforming; jurisdiction remains. | 2011 amendment reinforces lack of district-court jurisdiction. | Yes, 2011 amendment confirms lack of jurisdiction in district court; transfer appropriate. |
Key Cases Cited
- Joy Technologies v. Manbeck, 959 F.2d 226 (Fed. Cir. 1992) (patent applicants and owners construed to permit civil action pre-1999)
- Syntex (U.S.A.) Inc. v. U.S. Patent & Trademark Office, 882 F.2d 1570 (Fed. Cir. 1989) (patent owner review rights via §306 and §134/§145)
- Patlex Corp. v. Mossinghoff, 758 F.2d 594 (Fed. Cir. 1985) (reexamination framework and agency jurisdiction rationale)
- Desert Palace Inc. v. Costa, 539 U.S. 90 (2003) (plain-language statutory interpretation standard)
- Connecticut Nat. Bank v. Germain, 503 U.S. 249 (1992) (plain-language interpretation when statute is unambiguous)
- Barseback Kraft AB v. United States, 121 F.3d 1475 (Fed. Cir. 1997) (statutory interpretation principles and comprehensive review)