No Cause of Action for New Party to Reexamination

Author: Shawn S. Chang
Editor: Amanda K. Murphy Ph.D.

CAFC Decision: Agilent Technologies, Inc. v. Waters Technologies Corp., No. 15-1280 (Fed. Cir. January 29, 2016)

Background: During an inter partes reexamination requested by Aurora, Agilent acquired “substantially all” of Aurora’s assets and agreed to be bound by the outcome of the reexamination and the underlying patent infringement litigation.

Issue: Under 35 U.S.C. § 141, should Agilent be considered a third-party requester for purposes of appealing the final decision issued by the Patent Trial and Appeal Board in the inter partes reexamination?

Outcome: The Federal Circuit held that Agilent lacked a cause of action to appeal because it is not an appropriate party under 35 U.S.C. § 141.  Reviewing the relevant statutes (35 U.S.C. § 141 and 35 U.S.C. § 315(b)), the Court noted that “these two provisions thus appear, on their face, to confer the right to appeal an adverse reexamination decision only on patent owners and third-party requesters.”  Slip op. at 7.  In addressing the question of whether privies have a cause of action to appeal, the Court noted that 35 U.S.C. § 317 explicitly stops privies from requesting or maintaining certain inter partes reexaminations against the same patent.  According to the Court, the fact that § 141 does not contain similar language indicates that Congress recognized the difference between the third-party requester and its privies. “Because Congress explicitly provided for appeals of reexaminations by third-party requesters but not privies,” the Court concluded that “mere privies lack a cause of action to appeal.” Slip op. at 9.  The Court declined to decide whether a successor-in-interest becomes a third-party requester for purposes of appeal because Agilent failed to establish itself as Aurora’s successor-in-interest.  The Court found that Agilent’s acquisition of “substantially all” of Aurora’s assets does not mean “all.”  Slip op. at 11.  Further, the Court found that even after the transaction, Aurora remained “a distinct, ongoing entity” during the reexamination and “a party to the underlying district court litigation.” Id. Accordingly, the Federal Circuit found that because Agilent did not request the reexamination and failed to establish itself as Aurora’s successor-in-interest, Agilent lacked a statutory cause of action to appeal the reexamination decision.

Prosecution Takeaway:  New parties to reexamination proceedings should be joined by the third-party requesters to have a cause of action for appeal.


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