Power Integrations, Inc. v. Kappos

• Decision Date: 18 November 2013
• Docket Number: Civil Action No. 11–cv–01254 (BJR)
• Citation: 6 F.Supp.3d 11
• Parties: Power Integrations, Inc., Plaintiff, v. Hon. David Kappos, Under Secretary of Commerce for Intellectual Property and Director, United States Patent and Trademark Office, Defendant.
• Court: U.S. District Court — District of Columbia

6 F.Supp.3d 11

Power Integrations, Inc., Plaintiff,

v.Hon. David Kappos, Under Secretary of Commerce for Intellectual Property and Director, United States Patent and Trademark Office, Defendant.

Civil Action No. 11–cv–01254 (BJR)

United States District Court, District of Columbia.

November 18, 2013

Andrew Gerald McBride, Thomas R. McCarthy, Claire J. Evans, Wiley Rein LLP, Washington, DC, Frank E. Scherkenbach, Fish & Richardson P.C., Boston, MA, Howard G Pollack, Michael R. Headley, Fish & Richardson, Redwood City, CA, for Plaintiff.

John G. Interrante, U.S. Attorney's Office, Washington, DC, for Defendant.

MEMORANDUM OPINION

Granting Defendant's Motion To Dismiss

BARBARA J. ROTHSTEIN, UNITED STATES DISTRICT JUDGE

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. ¹ 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 FRAMEWORKA. 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. See35 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 reexaminationand 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. See35 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 amendments in 2000 and 2002, read as follows:

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. A patent owner, or a third-party requester in an inter partes reexamination proceeding, who is in any reexamination proceeding dissatisfied with the final decision in an appeal to the Board of Patent Appeals and Interferences under section 134 may appeal the decision only to the United States Court of Appeals for the Federal Circuit.

35 U.S.C. § 141 (2006).

iii. Section 145

Section 145 provides, as an alternative to a Federal Circuit appeal, the right to bring a “civil action” in district court to establish patent rights following an unsatisfactory decision by the BPAI. Unlike an appeal under section 141, the district court in a section 145 can admit new evidence and “must make its own findings de novo.” Kappos v. Hyatt, ––– U.S. ––––, 132 S.Ct. 1690, 1696, 182 L.Ed.2d 704 (2012). The extent to which this alternative route is available to patent owners lies at the heart of this dispute. Prior to 1999, section 145 provided, in relevant part:

An applicant dissatisfied with the decision of the Board of Patent Appeals and Interferences in an appeal under section 134 of this title may unless appeal has been taken to the United States Court of Appeals for the Federal Circuit, have remedy by civil action against the Commissioner in the United States District Court for the District of Columbia if commenced within such time after such decision, not less than sixty days, as the Commissioner appoints.

35 U.S.C. § 145 (1994). In 1999, Congress revised section 145 to replace the reference to “section 134” with “section 134(a).” Thus, after enactment of the AIPA in 1999, section 145 refers specifically to part (a) of section 134, which authorizes BPAI appeals for “patent applicant [s].” See35 U.S.C. § 134(a) (2006).

iv. Inter Partes Procedure

Because the reexamination at issue in this case was ex parte, the only element of the inter partes procedure at issue in this case is the appeal provision, originally codified at 35 U.S.C. § 315.² The AIPA provided that the owner of a patent that was challenged in an inter partes proceeding “may appeal under the provisions of section 134 and may appeal under the provisions of sections 141 through 144, 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. § 315 (2006). This appeal provision is separate from the appeal provisions governingpatent owners in ex parte proceedings, described above.

C. The 2011 Amendments to the Patent Act

On September 16, 2011, Congress passed the Leahy–Smith America Invents Act (AIA), Pub.L. No. 112–29, 125 Stat. 284 (2011), which made changes to sections 134, 141, 145, and 306 of Title 35, as well as to the jurisdiction statute governing the Federal Circuit.

The 2011 amendments to the relevant portions of section 134 and section 145 were minimal. In section 134, Congress replaced “any reexamination with “a reexamination.” SeePub.L. No. 112–29 § 7(b), 125 Stat. 284, 313–14 (2011). Congress also replaced this Court with the United States District Court for the Eastern District of Virginia in a technical amendment to section 145, leaving that section otherwise unchanged. Id. § 9(a), 125 Stat. at 316.

Section 141, which authorizes appeals to the Federal Circuit, was reorganized...