In re Teles AG Informationstechnologien & Sigram Schindler Beteiligungsgesellschaft MBH, 2012–1297.

• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
• Writing for the Court: DYK
• Citation: 747 F.3d 1357
• Parties: In re TELES AG INFORMATIONSTECHNOLOGIEN and Sigram Schindler Beteiligungsgesellschaft MBH.
• Docket Number: No. 2012–1297.,2012–1297.
• Decision Date: 14 July 2014

747 F.3d 1357

In re TELES AG INFORMATIONSTECHNOLOGIEN and Sigram Schindler Beteiligungsgesellschaft MBH.

No. 2012–1297.

United States Court of Appeals,
Federal Circuit.

April 4, 2014.
Rehearing En Banc Denied July 14, 2014.^*

[747 F.3d 1359]

Michael D. Kaminski, Foley & Lardner LLP, of Washington, DC, argued for appellants. With him on the brief were Howard N. Shipley, George E. Quillin, and Ryan A. Schmid.

Amy J. Nelson, Associate Solicitor, Office of the Solicitor, United States Patent and Trademark Office, of Arlington, Virginia argued for appellee. With her on the brief was Nathan K. Kelley, Deputy Solicitor. Of counsel was Scott C. Weidenfeller, Associate Solicitor.

Frank E. Scherkenbach, Fish & Richardson, P.C., of Boston, Massachusetts for amicus curiae. Of counsel on the brief was Craig E. Countryman, of San Diego, California; and Howard G. Pollack and Michael R. Headley, of Redwood City, California.

Before DYK, MOORE, and WALLACH, Circuit Judges.

DYK, Circuit Judge.

Teles AG Informationstechnologien and Sigram Schindler Beteiligungsgesellschaft MBH (collectively, “Teles”) own all substantial rights in U.S. Patent No. 6,954,453 (“the '453 patent”) on a method and apparatus for transmitting data in a telecommunications network. The Patent and Trademark Office (“PTO”) conducted an ex parte reexamination of the '453 patent and rejected claims 34–36 and 38 as obvious under 35 U.S.C. § 103. The Board of Patent Appeals and Interferences (“Board”) affirmed. Teles brought suit in the United States District Court for the District of Columbia, challenging the Board's decision pursuant to 35 U.S.C. § 145 (2006). We agree with the district court that it lacked subject matter jurisdiction, and hold that the version of § 145 in effect at the time did not authorize a patent owner in an ex parte reexamination to bring suit in district court challenging the Board's action. But we hold that the district court erred in dismissing the case and instead should have transferred the case as it attempted to do after the dismissal. We treat the case as having been transferred to this court and consider it as an appeal from the Board's decision. We affirm the Board's rejection of claim 35 as obvious under § 103.

Background I

In 1980, Congress established a system of ex parte reexamination that allowed patent

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owners and third parties to ask the PTO to reexamine claims of issued patents in view of prior art. See An Act to Amend the Patent and Trademark Laws, Pub.L. No. 96–517, 94 Stat. 3015 (1980) (codified at 35 U.S.C. §§ 302–07 (1986)). We have recognized the “important public purpose” behind reexamination as “part of a larger effort to revive United States industry's competitive vitality by restoring confidence in the validity of patents issued by the PTO.” Patlex Corp. v. Mossinghoff, 758 F.2d 594, 601 (Fed.Cir.1985); see alsoH.R.Rep. No. 96–1307(I), at 3 (1980), reprinted in 1980 U.S.C.C.A.N. 6460, 6462 (describing the goal of “strengthen[ing] investor confidence in the certainty of patent rights by creating a system of administrative reexamination of doubtful patents”).

Section 145 has long authorized patent applicants to challenge the Board's adverse examination decisions in district court instead of directly appealing to this court pursuant to 35 U.S.C. § 141. See Kappos v. Hyatt, –––U.S. ––––, 132 S.Ct. 1690, 1694, 182 L.Ed.2d 704 (2012). After the reexamination statute was enacted, we allowed patent owners to challenge adverse ex parte reexamination decisions in district court pursuant to § 145. See Joy Techs., Inc. v. Manbeck, 959 F.2d 226, 227 (Fed.Cir.1992). In 1999, Congress amended § 145 and related provisions. This case raises the question of whether § 145 civil actions remained available to patent owners seeking to challenge adverse reexamination decisions after Congress amended the statute in 1999 and before 2011, when Congress amended the statute to clarify that § 145 review was not available to patent owners.

II

Teles is the owner of the '453 patent, which issued on October 11, 2005. '453 patent, at [45]. The '453 patent recites a “method for transmitting data in a telecommunications network and switch for implementing said method.” Id. at [54]. In August 2007, a third party filed a request that the PTO conduct an ex parte reexamination of the '453 patent. The examiner rejected claims 34–36 and claim 38 under 35 U.S.C. § 103 as obvious over U.S. Patent No. 6,069,890 (“White”) combined with either U.S. Patent No. 6,137,792 (“Jonas”) or U.S. Patent No. 4,996,685 (“Farese”). Teles appealed the rejections to the Board, which affirmed. Teles then sought review of the Board's decision in the United States District Court for the District of Columbia pursuant to § 145. The district court dismissed the case for lack of subject matter jurisdiction, holding that, after the 1999 amendments, § 145 proceedings could not be maintained by patent owners.

Teles appealed the district court's dismissal for lack of subject matter jurisdiction to this court pursuant to 28 U.S.C. § 1295(a)(1). Teles did not appeal the Board's decision to this Court.

Discussion I

We address initially the question of jurisdiction. While we have jurisdiction to review the district court's dismissal pursuant to § 1295(a)(1), the question is whether we also have jurisdiction to review the Board's action (if the district court lacked jurisdiction). After the district court granted the motion to dismiss, it also purported to transfer the case to this court pursuant to 28 U.S.C. § 1631. A transfer “is not proper when combined with a dismissal.” HollyAnne Corp. v. TFT, Inc., 199 F.3d 1304, 1307 (Fed.Cir.1999); see

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also Christianson v. Colt Indus. Operating Corp., 486 U.S. 800, 818, 108 S.Ct. 2166, 100 L.Ed.2d 811 (1988). Once the district court dismissed the case for lack of jurisdiction, it “was without authority to transfer the case.” Tootle v. Sec'y of Navy, 446 F.3d 167, 173 (D.C.Cir.2006).

But we hold that the district court erred in dismissing the case rather than transferring it. Once the district court held that it lacked jurisdiction, it should have transferred the case pursuant to § 1631. See Paul v. I.N.S., 348 F.3d 43, 47 (2nd Cir.2003); see also Kolek v. Engen, 869 F.2d 1281, 1283–84 (9th Cir.1989). Here, as in Paul and Kolek, the statutory deadline for filing an appeal to this court had passed, and no evidence suggested bad faith in Teles' filing with the district court. Under these circumstances, it was in the interest of justice to transfer the case pursuant to § 1631, and we “treat [Teles'] petition for review, which was timely filed with the district court, as if it had been properly transferred” to this court rather than dismissed. Paul, 348 F.3d at 47 (citing Miller v. Hambrick, 905 F.2d 259, 262 (9th Cir.1990) (district court correctly determined that it lacked jurisdiction but abused its discretion in failing to consider whether transfer was in the interest of justice)); see also Kolek, 869 F.2d at 1284 (treating dismissal as transfer where appellate court had exclusive jurisdiction and timely filing deadline had passed); In re McCauley, 814 F.2d 1350, 1352 (9th Cir.1987) (reviewing merits of dismissed appeal as if properly transferred to appellate court).

In reviewing the case as though the district court had transferred the case, we address (1) the district court's jurisdiction, and (2) if the district court lacked jurisdiction, the Board's decision on the merits. We review both the district court's dismissal for lack of jurisdiction and the question of statutory interpretation underlying that dismissal de novo. Mudge v. United States, 308 F.3d 1220, 1224 (Fed.Cir.2002) (citing Strickland v. United States, 199 F.3d 1310, 1313 (Fed.Cir.1999) and Muniz v. United States, 972 F.2d 1304, 1309 (Fed.Cir.1992)). We review the Board's decisions de novo for errors of law and for substantial evidence as to questions of fact. In re Enhanced Sec. Research, LLC, 739 F.3d 1347, 1351 (Fed.Cir.2014) (citing In re Baxter Int'l, Inc., 678 F.3d 1357, 1361 (Fed.Cir.2012)).

II

On its face, even before the 1999 amendments, § 145 only provided for district court actions brought by patent “applicants.” Nonetheless, in Joy Technologies, we construed § 145 as applicable to a “patent owner” involved in an ex parte reexamination. 959 F.2d at 229. This construction of the statute was continued in later cases. See Takeda Pharm. Co., Ltd. v. Doll, 561 F.3d 1372 (Fed.Cir.2009); In re Lueders, 111 F.3d 1569, 1577, n. 14 (Fed.Cir.1997); Boeing Co. v. Comm'r of Patents & Trademarks, 853 F.2d 878, 881 (Fed.Cir.1988).

In 1999, Congress amended the Patent Act to create a system of inter partes reexamination that allowed third parties who had requested the reexamination to participate actively in the PTO reexamination process.¹ When Congress created the inter partes reexamination system, it

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changed the text of existing statutory provisions, including §§ 134, 141, and 145. The district court concluded that these changes made § 145 unavailable to patent owners (as opposed to patent applicants).

First, Congress amended § 141, which provided for appeals of Board decisions to this court, by inserting an express limitation on the appeal rights of patent owners in any reexamination proceeding: “A patent owner in any reexamination proceeding dissatisfied with the final decision in an appeal to the Board of Patent Appeals and Interferences under section 134may appeal the decision only to the United States Court of Appeals for the Federal Circuit.” 35 U.S.C. § 141 (2000) (emphases added).

Second, Congress changed the substance and structure of § 134, governing appeals to the Board. Before 1999, § 134 mentioned only patent applicants: “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...