749 F.3d 1368
Fed. Cir.2014Background
- Michael J. Vaillancourt originally owned U.S. Patent No. 6,699,221 and pursued additions to the patent claims during an inter partes reexamination requested by Becton Dickinson (BD).
- The PTO examiner rejected all 37 claims; Vaillancourt appealed to the Patent Trial and Appeal Board (PTAB/Board) and added claims 21–37 during reexamination.
- While the reexamination appeal was pending, Vaillancourt assigned “the entire right, title and interest in and to” the patent (including exclusive rights to sue) to VLV Associates, Inc. (VLV).
- VLV later sued BD for infringement in district court; VLV, not Vaillancourt, was the named owner and plaintiff in that action.
- The Board affirmed the examiner’s rejections and denied Vaillancourt’s rehearing request; Vaillancourt — no longer the patent owner — filed the appeal to the Federal Circuit in his own name.
- The Federal Circuit held that under 35 U.S.C. § 141 only the patent owner may appeal a PTAB reexamination decision, and Vaillancourt lacked the statutory cause of action because he was not the owner and VLV did not appear in the appeal.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Who may appeal a final PTAB decision in inter partes reexamination under § 141? | Vaillancourt argued he retained authority to continue the appeal despite assigning the patent to VLV and/or could proceed on VLV’s behalf. | BD argued only the patent owner (VLV) may invoke § 141 and Vaillancourt lacked a cause of action because he was not the owner. | Held: § 141 unambiguously limits appeals to the patent owner; Vaillancourt lacked standing/cause of action and appeal dismissed. |
| Whether § 141 permits delegation of the statutory appeal right to a non-owner | Vaillancourt contended the statute neither forbids nor precludes delegation and he was authorized to pursue the appeal. | BD contended statutory language is exclusive to the owner and delegation cannot create a new statutory right. | Held: Court declined to read a delegation exception into § 141; delegation does not permit a non-owner to appeal. |
Key Cases Cited
- Lexmark Int'l, Inc. v. Static Control Components, Inc., 134 S. Ct. 1377 (2014) (clarifying that certain "standing" issues are best analyzed as the scope of statutory causes of action)
- Wyeth v. Kappos, 591 F.3d 1364 (Fed. Cir. 2010) (statutory interpretation focuses on unambiguous statutory text)
- United States v. Hohri, 482 U.S. 64 (1987) (courts must follow clear statutory language)
- Consumer Prod. Safety Comm’n v. GTE Sylvania, Inc., 447 U.S. 102 (1980) (unambiguous statutory text is ordinarily conclusive)