Belkin Int'l, Inc. v. Kappos

• Citation: 696 F.3d 1379
• Parties: BELKIN INTERNATIONAL, INC., Cisco Linksys L.L.C., D–Link Systems, Inc., and Netgear, Inc., Appellants, v. David J. KAPPOS, Director, United States Patent and Trademark Office, Appellee, and Optimumpath, LLC, Appellee.
• Decision Date: 02 October 2012
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

696 F.3d 1379

BELKIN INTERNATIONAL, INC., Cisco Linksys L.L.C., D–Link Systems, Inc., and Netgear, Inc., Appellants,

v.David J. KAPPOS, Director, United States Patent and Trademark Office, Appellee,andOptimumpath, LLC, Appellee.

United States Court of Appeals,Federal Circuit.

2012–1090.

Reexamination No. 95/001,089.

Oct. 2, 2012.

David L. McCombs, Haynes and Boone, LLP, of Dallas, TX, argued for appellants. With him on the brief was Debra J. McComas.

Scott C. Weidenfeller, Associate Solicitor, United States Patent and Trademark Office, of Alexandria, VA, argued for appellee, United States Patent and Trademark Office. With him on the brief were Raymond T. Chen, Solicitor, and Nathan K. Kelley, Associate Solicitor.

Tony D. Alexander, Technology Legal Counsel, LLC, of Augusta, GA, argued for Appellee, Optimumpath, LLC.

Before RADER, Chief Judge, LOURIE and WALLACH, Circuit Judges.

LOURIE, Circuit Judge.

Belkin International, Inc. (“Belkin”) appeals from the decision of the Board of Patent Appeals and Interferences of the United States Patent and Trademark Office (“PTO”) on inter partes reexamination that it lacked jurisdiction to consider arguments based on three references that the Director had previously determined did not raise a substantial new question of patentability.¹ Because the Board did not err in refusing to consider the issues that the Director found not to raise a substantial new question of patentability, we affirm.

Background

Belkin filed a request for inter partes reexamination of U.S. Patent 7,035,281 (the “'281 patent”), which is directed to a wireless router. The request alleged ten substantial new questions of patentability regarding claims 1–32 of the '281 patent based on four prior art references: (1) Wireless LAN: basic knowledge and application case studies, Transistor Gijutsu, Oct. 1, 1999 (“Transistor Article”); (2) Michael Taht & Greg Retkowski, Wireless Router Howto (1998), http:// www. rage. net/ wireless/ wireless- howto. html (“Howto Guide”); (3) U.S. Patent 6,591,306 (“Redlich”); and (4) U.S. Patent 6,560,217 (“Peirce”). The Director determined that the first three references did not raise a substantial new question of patentability, but that the issue of anticipation by Peirce did raise such a question as to claims 1–3 and 8–10. Accordingly, the Director ordered reexamination of claims 1–3 and 8–10.

Belkin filed a petition pursuant to 37 C.F.R. §§ 1.927 and 1.181 to have the Director review the denial of reexamination of claims 4–7 and 11–32. That petition was denied, and the status of those claims is not part of this appeal. Belkin did not, however, file a petition to review the determination that the issues based on the Transistor Article, the Howto Guide, and Redlich did not raise substantial new questions of patentability concerning claims 1–3 and 8–10.

The examiner then issued an Action Closing Prosecution (“ACP”) in the reexamination addressing only Belkin's proposed rejection of claims 1–3 and 8–10 as anticipated by Peirce. A Right of Appeal Notice (“RAN”) was issued, again addressing only anticipation by Peirce. Belkin appealed to the Board, challenging the examiner's failure to make rejections involving the three references that the Director determined did not raise a substantial new question of patentability.

On appeal, the Board determined that it did not have jurisdiction to decide whether a substantial new question of patentability exists regarding the Transistor Article, the Howto Guide, and Redlich, because that determination was statutorily non-appealable under 35 U.S.C. § 312(c). The Board also held that there had been no final decision on patentability regarding the three references, and thus there was nothing to appeal under 35 U.S.C. § 315(b) and 37 C.F.R. § 41.61. The Board then affirmed the examiner's findings with regard to Peirce. On rehearing, the Board declined to modify its decision and specifically noted that Belkin had failed to file a petition under 37 C.F.R. § 1.927 to review the Director's determination that there was no substantial new question of patentability for the issues based on the three references regarding claims 1–3 and 8–10.

Discussion

We review the Board's legal conclusions, including whether the Board possessed jurisdiction, de novo.In re Gartside, 203 F.3d 1305, 1315 (Fed.Cir.2000). Statutory interpretation is a question of law that we likewise review de novo. In re Kathawala, 9 F.3d 942, 945 (Fed.Cir.1993). “When statutory interpretation is at issue, the plain and unambiguous meaning of a statute prevails in the absence of clearly expressed legislative intent to the contrary.” In re Donaldson Co., 16 F.3d 1189, 1192–93 (Fed.Cir.1994) (en banc). We also afford substantial deference to the PTO's interpretation of its own regulations unless that interpretation is plainly erroneous or inconsistent with the regulation in situations of ambiguity. In re Lovin, 652 F.3d 1349, 1353 (Fed.Cir.2011).

Belkin argues that the Board has jurisdiction to consider on reconsideration prior art found not to raise a substantial new question of patentability on inter partes reexamination when reexamination is subsequently granted for the same claim on another reference. Belkin views reexamination as a two-step procedure: (1) determining whether a substantial new question of patentability exists; and (2) if so, determining whether the claims are patentable over all prior art. Belkin concedes that the first step is not appealable under § 312(c). But Belkin contends that once a substantial new question of patentability affecting a claim is found, all prior art must be considered, including prior art found previously not to raise a substantial new question of patentability.

The Director responds that § 312(c) bars the Board from considering prior art not found to raise a substantial new question of patentability even though a substantial new question of patentability was found with regard to another reference. In support of that position, the Director argues that reexamination is ordered only “for resolution of the question” identified by the Director as a substantial new question of patentability, not those questions raised by the requester that have been determined not to rise to that level. As Peirce was the only reference found to raise a substantial new question of patentability, the Director argues that the resulting reexamination was properly limited to that question.

We agree with the Director that the Board did not err in not considering issues that the Director had found not to raise a substantial new question of patentability concerning claims 1–3 and 8–10. Such an issue is non-appealable.

At the outset, an inter partes reexamination is a two-step process. First, the Director must make a determination “whether a substantial new question of patentability affecting any claim of the patent is raised by the request [under § 311], with or without consideration of other patents or printed publications.” 35 U.S.C. § 312(a). The statute is clear that that decision is “final and non-appealable.” § 312(c).

Second, after the Director has determined that there is a substantial new question of patentability affecting a claim with respect to prior art, an inter partes reexamination is ordered “for resolution of the question.” 35 U.S.C. § 313. The question to be resolved is the substantial new question of patentability determined by the Director. If the Director determines that there is no substantial new question of patentability, no reexamination is conducted. The issue in this appeal is whether a prior determination that an argument based on a given reference does not raise a substantial new question of patentability as to a claim when such a question was raised with respect to certain other prior art is appealable to the Board and to this court. To answer that question, we first turn to the language of the statute.

The statute requires the Director to order reexamination “for resolution of the question.” § 313. The statute is clear that that “question” is the same substantial new “question” of patentability found by the Director under § 312(a). The statutory framework thus requires that an issue must raise a “substantial new” question of patentability, as determined by the Director, with respect to cited prior art before it can be considered during inter partes reexamination. Accordingly, an issue that has been determined by the Director not to raise a substantial new question of patentability with respect to certain other prior art cannot later be considered by the examiner and ultimately the Board. Instead, if a requester disagrees with the Director's determination that no substantial new question of patentability with respectto certain prior art has been raised, 37 C.F.R. § 1.927 permits the requester only to file a petition to the Director for review of that decision. Belkin did not file such a petition here with respect to claims 1–3 and 8–10.

Inter partes reexamination is not totally limited to those issues suggested by the requester that present a substantial new question of patentability. Indeed, the PTO may make any new rejection, as long as that rejection also meets the substantial new question of patentability requirement. See35 U.S.C. § 303(a) (“On his own initiative, and any time, the Director may determine whether a substantial new question of patentability is raised by patents and publications discovered by him....”). Thus, the scope of reexamination may encompass those issues that raise a substantial new question of patentability, whether proposed by the requester or the Director, but, unless it is raised by the Director on his own initiative, it only includes issues of patentability raised in the request under § 311 that the Director has determined raise such an issue. It otherwise may not include other prior art than what constituted the basis of the Director's determination of a substantial question of patentability.

In ...