IP News

Federal Circuit: Only Patent Owner May Appeal a PTAB Reexamination Decision

On April 24, 2014, a unanimous panel of the Federal Circuit, comprising Chief Judge Rader and Judges Linn and Taranto, issued an opinion in Vaillancourt v. Becton Dickinson and Co., Case No. 2013-1408. The opinion was authored by Chief Judge Rader. In it, the panel dismissed Michael Vaillancourt's appeal of a decision by the Patent Trial and Appeal Board (PTAB or Board) because Vaillancourt no longer owned the patent at issue.

Vaillancourt obtained ownership of the patent at issue in 2005, and in 2010, Becton Dickinson (BD) requested an inter partes reexamination of that patent. During the reexamination, the examiner rejected all of the patent claims, and Vaillancourt appealed the rejection to the Board. While the appeal was pending, Vaillancourt assigned the patent to VLV Associates, Inc. (VLV), which subsequently initiated a suit against BD in the District of New Jersey. In that suit, VLV sued in its own name, and did not join Vaillancourt.

The Board eventually affirmed the rejection of all claims, and Vaillancourt appealed to the Federal Circuit, identifying himself as the patent owner and appellant. On appeal, the panel looked to the text of 35 U.S.C. '141, and held that that “[t]he unambiguous language of '141 provides that a patent owner alone can appeal a final decision in an inter partes reexamination to [the Federal Circuit].” Slip op. at 4. The panel went on to find that because Vaillancourt had transferred his rights in the patent to VLV, he had no standing to appeal the decision of the PTAB. Id. at 5. Further, the panel disagreed with Vaillancourt's assertion that VLV could and did authorize him to continue the appeal, dismissing the argument and stating “[Vaillancourt] states that while the unambiguous language of '141 does not explicitly provide for [the] delegation [of the right to appeal], the section does not explicitly bar it either ' . The statute also does not forbid a patent owner's travel agent from filing an appeal, but that hardly justifies interpreting the statute to extend to such unmentioned categories.” Id. (internal quotations omitted). Finding that Vaillancourt had no standing, the panel dismissed the appeal.

Federal Circuit: Clones Not Patentable Subject Matter

On May 8, 2014, a unanimous panel of the Federal Circuit, made up of Judges Dyk, Moore and Wallach, issued an opinion in In re Roslin Institute, Case No. 2013-1407. The opinion was authored by Judge Dyk. In it, the panel affirmed the holding by the Patent Trial and Appeal Board (PTAB or Board) that Roslin's claims were drawn to unpatentable subject matter under 35 U.S.C. '101.

Roslin's patent application arose out of the successful cloning by Keith Henry Stockman Campbell and Ian Wilmut of Dolly, a sheep. The claims of the application at issue were drawn to the clone itself, a patent on the process of somatic cell nuclear transfer having already been granted. The examiner had found that the claims of the instant application were directed to unpatentable subject matter under 35 U.S.C. '101, as well as being anticipated and obvious under ”102 and 103. The Board affirmed these rejections, and Roslin appealed.

On appeal, the panel reviewed the claims for patentability under '101. The panel found that clones are genetically identical to their nuclear donors, and are not phenotypically different from the nuclear donor in any systematic way that is claimed or disclosed in the specification. Slip op. at 7, 11. Therefore, clones lack “markedly different characteristics from any [farm animals] found in nature” as required by Diamond v. Chakrabarty, 447 U.S. 303, 310 (1980), but rather are analogous to the isolated copies of naturally occurring BRCA1 and BRCA2 DNA, which were found unpatentable in Association for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107 (2013). See, Slip op. at 7'8.

Having found that Roslin's claims were directed to unpatentable subject matter, the Panel did not analyze them under ”102 or 103.

Federal Circuit: PTO's Decision Not to Initiate Inter Partes Review Is Not Appealable

On April 24, 2014, a unanimous panel of the Federal Circuit, made up of Judges Prost, O'Malley and Taranto, issued a unanimous order, authored by Judge Taranto, dismissing the appeal in St. Jude Medical v. Volcano Corp., Case No. 2014-1183.

In 2010, St. Jude brought suit against Volcano on five patents, and Volcano subsequently counterclaimed, asserting infringement of the single patent at issue in the instant appeal. In 2012 the parties stipulated to dismissal of all claims related to that patent. Six months after dismissal, St. Jude filed a petition for inter partes review of the patent. The Patent Trial and Appeal Board denied the petition, explaining that 35 U.S.C. '315(b) bars initiation of an inter partes review if the petition is filed more than a year after the petitioner is served with a complaint alleging infringement. In this case, Volcano's 2010 counterclaim was sufficient to bar St. Jude's petition. St. Jude appealed.

The panel found that it lacked jurisdiction to hear St. Jude's appeal. While the Federal Circuit has jurisdiction to hear appeals from final written decisions of the board under '141(c), there is no statutory authorization for review of non-institution under section 314(a) or (b). See, Slip op. at 4. Further, '314(d) specifically states that the directors determination “whether to institute an inter partes review under this section shall be final and non-appealable.” Id. at 5 (quoting '314 (d)). Accordingly, the panel dismissed St. Jude's appeal.

Jeffrey S. Ginsberg is a Partner and Wyatt Delfino is an Associate in the New York office of Kenyon & Kenyon LLP.

Federal Circuit: Only Patent Owner May Appeal a PTAB Reexamination Decision

On April 24, 2014, a unanimous panel of the Federal Circuit, comprising Chief Judge Rader and Judges Linn and Taranto, issued an opinion in Vaillancourt v. Becton Dickinson and Co., Case No. 2013-1408. The opinion was authored by Chief Judge Rader. In it, the panel dismissed Michael Vaillancourt's appeal of a decision by the Patent Trial and Appeal Board (PTAB or Board) because Vaillancourt no longer owned the patent at issue.

Vaillancourt obtained ownership of the patent at issue in 2005, and in 2010, Becton Dickinson (BD) requested an inter partes reexamination of that patent. During the reexamination, the examiner rejected all of the patent claims, and Vaillancourt appealed the rejection to the Board. While the appeal was pending, Vaillancourt assigned the patent to VLV Associates, Inc. (VLV), which subsequently initiated a suit against BD in the District of New Jersey. In that suit, VLV sued in its own name, and did not join Vaillancourt.

The Board eventually affirmed the rejection of all claims, and Vaillancourt appealed to the Federal Circuit, identifying himself as the patent owner and appellant. On appeal, the panel looked to the text of 35 U.S.C. '141, and held that that “[t]he unambiguous language of '141 provides that a patent owner alone can appeal a final decision in an inter partes reexamination to [the Federal Circuit].” Slip op. at 4. The panel went on to find that because Vaillancourt had transferred his rights in the patent to VLV, he had no standing to appeal the decision of the PTAB. Id. at 5. Further, the panel disagreed with Vaillancourt's assertion that VLV could and did authorize him to continue the appeal, dismissing the argument and stating “[Vaillancourt] states that while the unambiguous language of '141 does not explicitly provide for [the] delegation [of the right to appeal], the section does not explicitly bar it either ' . The statute also does not forbid a patent owner's travel agent from filing an appeal, but that hardly justifies interpreting the statute to extend to such unmentioned categories.” Id. (internal quotations omitted). Finding that Vaillancourt had no standing, the panel dismissed the appeal.

Federal Circuit: Clones Not Patentable Subject Matter

On May 8, 2014, a unanimous panel of the Federal Circuit, made up of Judges Dyk, Moore and Wallach, issued an opinion in In re Roslin Institute, Case No. 2013-1407. The opinion was authored by Judge Dyk. In it, the panel affirmed the holding by the Patent Trial and Appeal Board (PTAB or Board) that Roslin's claims were drawn to unpatentable subject matter under 35 U.S.C. '101.

Roslin's patent application arose out of the successful cloning by Keith Henry Stockman Campbell and Ian Wilmut of Dolly, a sheep. The claims of the application at issue were drawn to the clone itself, a patent on the process of somatic cell nuclear transfer having already been granted. The examiner had found that the claims of the instant application were directed to unpatentable subject matter under 35 U.S.C. '101, as well as being anticipated and obvious under ”102 and 103. The Board affirmed these rejections, and Roslin appealed.

On appeal, the panel reviewed the claims for patentability under '101. The panel found that clones are genetically identical to their nuclear donors, and are not phenotypically different from the nuclear donor in any systematic way that is claimed or disclosed in the specification. Slip op. at 7, 11. Therefore, clones lack “markedly different characteristics from any [farm animals] found in nature” as required by Diamond v. Chakrabarty, 447 U.S. 303, 310 (1980), but rather are analogous to the isolated copies of naturally occurring BRCA1 and BRCA2 DNA, which were found unpatentable in Association for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107 (2013). See, Slip op. at 7'8.

Having found that Roslin's claims were directed to unpatentable subject matter, the Panel did not analyze them under ”102 or 103.

Federal Circuit: PTO's Decision Not to Initiate Inter Partes Review Is Not Appealable

On April 24, 2014, a unanimous panel of the Federal Circuit, made up of Judges Prost, O'Malley and Taranto, issued a unanimous order, authored by Judge Taranto, dismissing the appeal in St. Jude Medical v. Volcano Corp., Case No. 2014-1183.

In 2010, St. Jude brought suit against Volcano on five patents, and Volcano subsequently counterclaimed, asserting infringement of the single patent at issue in the instant appeal. In 2012 the parties stipulated to dismissal of all claims related to that patent. Six months after dismissal, St. Jude filed a petition for inter partes review of the patent. The Patent Trial and Appeal Board denied the petition, explaining that 35 U.S.C. '315(b) bars initiation of an inter partes review if the petition is filed more than a year after the petitioner is served with a complaint alleging infringement. In this case, Volcano's 2010 counterclaim was sufficient to bar St. Jude's petition. St. Jude appealed.

The panel found that it lacked jurisdiction to hear St. Jude's appeal. While the Federal Circuit has jurisdiction to hear appeals from final written decisions of the board under '141(c), there is no statutory authorization for review of non-institution under section 314(a) or (b). See, Slip op. at 4. Further, '314(d) specifically states that the directors determination “whether to institute an inter partes review under this section shall be final and non-appealable.” Id. at 5 (quoting '314 (d)). Accordingly, the panel dismissed St. Jude's appeal.

Jeffrey S. Ginsberg is a Partner and Wyatt Delfino is an Associate in the New York office of Kenyon & Kenyon LLP.