536 F.3d 1330 (Fed. Cir. 2008), 2008-1130, Cooper Technologies Co. v. Dudas

CourtUnited States Courts of Appeals. United States Court of Appeals for the Federal Circuit
Citation536 F.3d 1330,87 U.S.P.Q.2d 1705
Date19 August 2008
PartiesCOOPER TECHNOLOGIES COMPANY, Plaintiff-Appellant, v. Jon W. DUDAS, Director, United States Patent and Trademark Office, Defendant-Appellee, and Thomas & Betts Corporation, Defendant-Appellee.
Docket Number2008-1130.

Page 1330

536 F.3d 1330 (Fed. Cir. 2008)

87 U.S.P.Q.2d 1705

COOPER TECHNOLOGIES COMPANY, Plaintiff-Appellant,

v.

Jon W. DUDAS, Director, United States Patent and Trademark Office, Defendant-Appellee,

and Thomas & Betts Corporation, Defendant-Appellee.

No. 2008-1130.

United States Court of Appeals, Federal Circuit.

August 19, 2008

Page 1331

R. Ted Cruz, Morgan, Lewis & Bockius L.L.P., of Houston, TX, argued for plaintiff-appellant. On the brief were Paul E. Kreiger and James L. Beebe. Of counsel was Robert S. Harrell, Fulbright & Jaworski L.L.P., of Houston, TX.

Nathan K. Kelley, Associate Solicitor, Office of the Solicitor, United States Patent and Trademark Office, of Arlington, VA, argued for defendant-appellee, Jon W. Dudas, Director, United States Patent and Trademark Office. With him on the brief were William LaMarca and Raymond T. Chen, Associate Solicitors.

Alan M. Fisch, Kaye Scholer LLP, of Washington, DC, argued for defendant-appellee Thomas & Betts Corporation. With him on the brief were Jason F. Hoffman, Coke M. Stewart, R. William Sigler, and Kevin W. Jakel.

Before MICHEL, Chief Judge, LOURIE and LINN, Circuit Judges.

LINN, Circuit Judge.

In this case, we are called upon to determine which patents are subject to inter partes reexamination. Congress established the inter partes reexamination procedure as part of the American Inventors Protection Act of 1999, Pub.L. No. 106-113, §§ 4001-4808, 113 Stat. 1501, 1501A-552 to -591 (“AIPA" ). Pursuant to section 4608 of the AIPA, the inter partes reexamination procedure is available for “any patent that issues from an original application filed in the United States on or after" November 29, 1999-the date of the enactment of the AIPA. Id. § 4608, 113 Stat. at 1501A-572 (emphasis added). The United States Patent and Trademark Office (“Patent Office" ) has interpreted the phrase “original application" in section 4608 “to encompass utility, plant and design applications, including first filed applications, continuations, divisionals, continuations-in-part, continued prosecution applications and the national stage phase of international applications." Rules to Implement Optional Inter Partes Reexamination Proceedings, 65 Fed.Reg. 76,756, 76,757 (Dec. 7, 2000). Appellant contends that, contrary to the determination of the Patent Office and the district court, “original application" refers to the first application in a chain of applications from which priority is claimed.

Page 1332

We conclude that the Patent Office's interpretation is reasonable and is entitled to Chevron deference. See Chevron U.S.A., Inc. v. Natural Res. Def. Council, Inc., 467 U.S. 837, 104 S.Ct. 2778, 81 L.Ed.2d 694 (1984). For this reason, we affirm the judgment of the district court.

I. BACKGROUND

The AIPA created the inter partes reexamination procedure to allow third parties to have an expanded role in the reexamination of issued patents. See Optional Inter Partes Reexamination Procedure Act of 1999, Pub.L. No. 106-113, §§ 4601-08, 113 Stat. at 1501A-567 to -572 (codified as amended at 35 U.S.C. §§ 311-18); see also 145 Cong. Rec. S13259 (Oct. 27, 1999) (statement of Sen. Hatch) (remarking that AIPA was designed to “make reexamination a viable, less-costly alternative to patent litigation by giving third-party requesters the option of inter-partes reexamination procedures" in which they are “afforded an expanded, although still limited, role in the reexamination process" ). Unlike an ex parte reexamination proceeding, an inter partes reexamination proceeding allows the third-party requester to participate in the reexamination by submitting written comments addressing issues raised in the patent owner's response to an office action, appealing a decision in favor of patentability, and participating as a party to an appeal taken by the patent owner. See generally 35 U.S.C. §§ 314-15 (2000).

The inter partes reexamination subtitle of the AIPA includes a provision establishing its effective date:

Subject to subsection (b), this subtitle and the amendments made by this subtitle shall take effect on the date of the enactment of this Act and shall apply to any patent that issues from an original application filed in the United States on or after that date.

AIPA § 4608, 113 Stat. at 1501A-572 (emphasis added).1 The AIPA was enacted on November 29, 1999. Id., 113 Stat. at 1501.

On April 6, 2000, the Patent Office published a notice of proposed rulemaking concerning the Patent Office's implementation of inter partes reexamination proceedings. See Rules To Implement Optional Inter Partes Reexamination Proceedings, 65 Fed.Reg. 18,154, 18,154 (Apr. 6, 2000). In that notice, the Patent Office acknowledged that determining “[t]he effective date of the statute with respect to the optional inter partes reexamination proceedings ... is complex" and stated that “for inter partes reexaminations, the effective date language (in section 4608 of S.1948) limits the applicability of the new inter partes reexamination Chapter 31 of 35 U.S.C.... to any patent that issues from an original application filed in the United States on or after November 29, 1999." Id. at 18,155. In its proposed rules, the Patent Office also proposed adding “Subpart H-Inter Partes Reexamination of Patents." Id. at 18,177. Included in that subsection was proposed regulation 37 C.F.R. § 1.913, which read:

Except as provided for in § 1.907, any person other than the patent owner or its privies may, at any time during the period of enforceability of a patent which issued from an original application filed in the United States on or after November 29, 1999, file a request for inter partes reexamination by the Office of any claim of the patent on the

Page 1333

basis of prior art patents or printed publications cited under § 1.501.

Id. at 18,178 (emphases added).

Five days later, the Patent Office published a notice in its Official Gazette interpreting the term “original application" as used in the AIPA. The notice stated:

The phrase “original application" is interpreted to encompass utility, plant and design applications, including first filed applications, continuations, divisionals, continuations-in-part, continued prosecution applications (CPAs) and the national stage phase of international applications. This interpretation is consistent with the use of the phrase in 35 U.S.C. 251 and the federal rules pertaining to reexamination. In addition, section 201.04(a) of the Manual of Patent Examination and Procedure (MPEP) defines an original application as “... an application which is not a reissue application." Section 201.04(a) of the MPEP further states that “[a]n original application may be a first filing or a continuing application." Therefore, the Optional Inter Partes Reexamination Procedure is applicable to patents which issue from all applications (except for reissues) filed on or after November 29, 1999.

U.S. Patent and Trademark Office, Guidelines Concerning the Implementation of Changes to 35 USC 102(g) and 103(c) and the Interpretation of the Term “Original Application" in the American Inventors Protection Act of 1999, 1233 Official Gazette 54, 56 (Apr. 11, 2000) (alterations in the original).

On December 7, 2000, the Patent Office issued its final rules following its earlier notice of proposed rulemaking. See Rules to Implement Optional Inter Partes Reexamination Proceedings, 65 Fed.Reg. 76,756, 76,756 (Dec. 7, 2000). In the “Discussion of General Issues Involved" section of those rules, the Patent Office referred to its earlier interpretation in its Official Gazette, and repeated its interpretation of “original application" :

The phrase “original application" is interpreted to encompass utility, plant and design applications, including first filed applications, continuations, divisionals, continuations-in-part, continued prosecution applications and the national stage phase of international applications. Therefore, the optional inter partes reexamination [proceeding] ... is applicable to patents which issue from all applications (except for reissue applications) filed on or after November 29, 1999.

Id. at 76,757. In the section of the notice entitled “Discussion of Specific Rules and Response to Comments," the Patent Office adopted in part a comment that “note[d] that the effective date of the statute with respect to optional inter partes reexamination is complex, and it would be helpful to practitioners and those considering inter partes reexamination if they are clearly advised of what patents are subject to such proceedings." Id. at 76,763. In response to the comment, the Patent Office amended the title of Subpart H (37 C.F.R. §§ 1.902 to 1.997), to add the parenthetical notation “Applicable to any Patent that Issues from an Original Application Filed in the United States on or after November 29, 1999." Id.

In addition, in response to a comment concerning proposed section 1.913, the Patent Office removed the language “other than the patent owner or its privies" from the regulation, “solely for the purpose of more closely following the language of the statute." Id. at 76,765. Responding to the comment, the Patent Office noted that, in its view, the AIPA had “inadvertently" included language that suggested that a patent owner could request inter partes reexamination of its own patent, “even though an inter partes procedure is clearly inappropriate for a reexamination initiated

Page 1334

by a patent owner." Id. The Patent Office suggested that this was an error that resulted because the “statute was re-drafted at the last moment." Id. Two years later, Congress amended 35 U.S.C. § 311, making clear that-as the Patent Office had suggested-a patent owner could not request inter partes reexamination of its own patent. See Intellectual Property and High Technology Technical Amendments Act of 2002, Pub.L. 107-273, § 13202, 116 Stat. 1758, 1901.

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