United States District Court, D. Columbia.
For POWER INTEGRATIONS, INC., Plaintiff: Andrew Gerald McBride, Thomas R. McCarthy, LEAD ATTORNEYS, Claire J. Evans, WILEY REIN LLP, Washington, DC; Frank E. Scherkenbach, PRO HAC VICE, FISH & RICHARDSON P..C., BOSTON, MA; Howard G Pollack, Michael R. Headley, PRO HAC VICE, FISH & RICHARDSON, Redwood City, CA.
For DAVID KAPPOS, in his official capacity as Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, Defendant: John G. Interrante, LEAD ATTORNEY, U.S. ATTORNEY'S OFFICE, Washington, DC.
BARBARA J. ROTHSTEIN, UNITED STATES DISTRICT JUDGE.
Granting Defendant's Motion to Dismiss
Before the Court is a motion by Defendant David Kappos, Director of the United States Patent and Trademark Office, to dismiss the case for lack of subject matter jurisdiction under Federal Rule of Civil Procedure 12(b)(1) or, in the alternative, for transfer to the United States Court of Appeals for the Federal Circuit. The suit by Plaintiff Power Integrations, a patent owner, asks this Court to review a decision made by the USPTO's Board of Patent Appeals and Interferences (" BPAI" ) in a patent reexamination proceeding. USPTO Director Kappos (hereinafter " USPTO" ) argues that under the Patent Act, patent owners may seek court review only in the Federal Circuit, and not in this Court. Thus, Defendant moves to dismiss the case or, in the alternative, transfer it to the Federal Circuit. Power Integrations has also moved for partial summary judgment, seeking declaratory relief on the jurisdiction question. As explained in further detail below, the 1999 amendments to the Patent Act removed this Court's jurisdiction over Plaintiff's claim, and for that reason Defendant's Motion to Dismiss must be granted.
I. STATUTORY FRAMEWORK
A. The Patent Reexamination Process
Under the Patent Act, patent owners and third parties may initiate a " reexamination" proceeding to confirm or challenge the validity of a previously issued patent. See 35 U.S.C. § § 302-307. 35 U.S.C. § 302 gives " any person at any time" the right to request a reexamination, and describes the requirements for such a request. The Director of the USPTO then determines whether the reexamination request raises a " substantial new question of patentability." 35 U.S.C. § 303. If not, the reexamination request is denied. Id. If a substantial new question of patentability does exist, the Director orders a reexamination
and gives both the owner and (if different) the requester opportunity to weigh in. Id. § 304. At that point, the reexamination goes forward " according to the procedures established for initial examination" - that is, the process undertaken by the USPTO to examine a new patent application. Id. § 305.
Once the patent examiner delivers a final decision, 35 U.S.C. § 306 governs the rights of patent owners to appeal. At all times relevant to this case, section 306 read as follows:
The patent owner involved in a reexamination proceeding under this chapter may appeal under the provisions of section 134 of this title, and may seek court review under the provisions of sections 141 to 145 of this title, with respect to any decision adverse to the patentability of any original or proposed amended or new claim of the patent.
35 U.S.C. § 306 (2006). This case concerns the scope of the right to " seek court review," as explained and expressed in the language of sections 134, 141 and 145. These sections, unlike section 306, have undergone several revisions.
B. The 1999 Amendments to the Patent Act
In 1999, the American Inventors Protection Act (" AIPA" ), Pub. L. No. 106-113, 113 Stat. 1501 (1999) revised sections 134, 141, and 145, among other things. The AIPA left section 306 intact. Congress also created an inter partes reexamination procedure, which supplemented the existing ex parte procedure by providing an alternative route for third parties wishing to participate in the reexamination process and take appeal. See 35 U.S.C. § § 311-19. The salient aspects of these amendments are described below.
i. Section 134
In 1980, when Congress originally created the reexamination procedure and added section 306 to the Patent Act, the appeal provisions of section 134 referred only to patent applicants. Congress left that aspect of the statute unchanged when it created the reexamination procedure in 1980, so from 1980 until 1999, section 134 provided:
An applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Board of Patent Appeals and Interferences, having once paid the fee for such appeal.
35 U.S.C. § 134 (1994). However, in 1999 Congress revised section 134 to add a reference to patent owners, and to separate " patent applicants," " patent owners," and " third parties." After the 1999 amendments, section 134 read:
(a) Patent applicant.--An applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Board of Patent Appeals and Interferences, having once paid the fee for such appeal.
(b) Patent owner.--A patent owner in any reexamination proceeding may appeal from the final rejection of any claim by the primary examiner to the Board of Patent Appeals and Interferences, having once paid the fee for such appeal.
(c) Third-party.--A third-party requester in an inter partes proceeding may appeal to the Board of Patent Appeals and Interferences from the final decision of the primary examiner favorable to the patentability of any original or proposed amended or new claim of a patent, having once paid the fee for such appeal.
35 U.S.C. § 134 (2006).
ii. Section 141
Before 1999, section 141 (like section 134) made no mention of patent owners. It provided, in relevant part:
An applicant dissatisfied with the decision in an appeal to the Board of Patent Appeals and Interferences under section 134 of this title may appeal the decision to the United States Court of Appeals for the Federal Circuit. By filing such an appeal the applicant waives his or her right to proceed under section 145 of this title.
35 U.S.C. § 141 (1994). In 1999, Congress added a sentence dealing explicitly with the appeal rights of patent owners, such that the relevant section, including minimal ...