Syntex (U.S.A.) Inc. v. U.S. Patent & Trademark Office

• Decision Date: 15 August 1989
• Docket Number: No. 88-1652,88-1652
• Citation: 11 USPQ2d 1866,882 F.2d 1570
• Parties: , 11 U.S.P.Q.2d 1866 SYNTEX (U.S.A.) INC., Plaintiff-Appellant, v. U.S. PATENT & TRADEMARK OFFICE, Defendant-Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1570

882 F.2d 1570

58 USLW 2163, 11 U.S.P.Q.2d 1866

SYNTEX (U.S.A.) INC., Plaintiff-Appellant, v. U.S. PATENT & TRADEMARK OFFICE, Defendant-Appellee.

No. 88-1652.

United States Court of Appeals Federal Circuit.

Aug. 15, 1989.

David A. Lowin, Syntex (U.S.A.) Inc., Palo Alto, Cal., argued for plaintiff-appellant. With him on the brief was Tom M. Moran. Also on the brief were Harold C. Wegner and Douglas P. Mueller, Wegner & Bretschneider, Washington, D.C., of counsel.

John C. Hoyle, Dept. of Justice, Washington, D.C., argued for defendant-appellee. With him on the brief were John R. Bolton, Asst. Atty. Gen., Henry E. Hudson, U.S. Atty. and John F. Cordes. Also on the brief were Fred E. McKelvey, Solicitor, John C. Martin, Nancy C. Slutter and Richard E. Schafer, Associate Solicitors, Patent & Trademark Office, Arlington, Va.

Before NIES and BISSELL, Circuit Judges, and BALDWIN, Senior Circuit Judge.

NIES, Circuit Judge.

Syntex (U.S.A.) Inc. appeals from the final order of the United States District Court for the Eastern District of Virginia, Syntex (U.S.A.) Inc. v. Quigg [United States Commissioner of Patents and Trademarks], No. 88-0527-A, slip op. (E.D.Va. July 22, 1988) (Hilton, J.), dismissing Syntex's complaint on jurisdictional grounds. Syntex brought suit against the United States Patent and Trademark Office (PTO), alleging violation of its alleged rights as the requester of reexamination of another's patent, and sought to compel the PTO either to revoke the Reexamination Certificate and reopen the reexamination proceedings upon which that Certificate had been issued or, alternatively, to refund the fee Syntex had paid for reexamination. Upon a motion by the PTO asserting that the district court lacked subject matter jurisdiction over the suit and that Syntex lacked standing, the district court dismissed the case. We affirm.

I BACKGROUND

In 1983 the PTO issued United States Patent No. 4,423,244 ('244), which claims a process for preparing the chemical compound naproxen, and that patent was assigned to Alfa Chemicals Italiana S.p.A. In 1986, Syntex filed Reexamination Request No. 90/001,017 ('017 Reexamination) pursuant to 35 U.S.C. Sec. 302 (1982), ¹ citing three principal references. The PTO determined that Syntex's references raised "a substantial new question of patentability affecting" the patent claims, 35 U.S.C. Sec. 303 (1982); 37 C.F.R. Secs. 1.515, 1.525 (1988), and granted Syntex's request.

Once the PTO has ordered reexamination of a patent, the patent statute allows the patentee to file a statement addressing the new question of patentability, including any proposed amendments to the patent. 35 U.S.C. Sec. 304 (1982); 37 C.F.R. Sec. 1.530 (1988). Alfa did so. Syntex responded by filing a reply to Alfa's statement, as permitted by statute and implementing regulation. 35 U.S.C. Sec. 304; 37 C.F.R. Sec. 1.535 (1988). On April 2, 1987, the PTO issued a notice of its intent to issue a Reexamination Certificate. That notice prompted Syntex to file a petition to the Commissioner of Patents and Trademarks seeking to have the matter reconsidered because of certain procedural irregularities which Syntex alleged occurred during the '017 Reexamination. ²

In its petition, Syntex alleged that: (1) the PTO conducted telephone interviews with Alfa before the first Office Action, contrary to 37 C.F.R. Sec. 1.560(a) (1988); (2) Alfa failed to file, or to serve on Syntex, summaries of the interviews as required by 37 C.F.R. Sec. 1.560(b) and by the PTO's Manual of Patent Examining Procedure Sec. 2281 (5th ed. 1983 & 1987 rev. 6) [hereinafter "MPEP"]; ³ (3) the PTO considered Alfa's "Reply to Requester's Statement" before beginning reexamination, contrary to 37 C.F.R. Sec. 1.540 (1988); (4) Alfa's "Reply" directed the PTO to amend claim 1, which the PTO did, but the "Reply" was untimely under 37 C.F.R. Sec. 1.530(b) (1988); (5) Alfa's "Reply" was not served on Syntex as required in a reexamination proceeding, 37 C.F.R. Sec. 1.550(e) (1988); and (6) the PTO failed to issue any substantive office action evaluating patentability, contrary to the directive of MPEP Secs. 2260, 2262.

The PTO returned Syntex's petition, citing 37 C.F.R. Sec. 1.550(e) ("The active participation of the reexamination requester ends with the reply pursuant to Sec. 1.535, and no further submissions on behalf of the reexamination requester will be acknowledged or considered."), and issued a Reexamination Certificate to Alfa. That certificate confirmed the patentability of certain claims as originally issued and of other claims as amended, and canceled two claims as unpatentable. Upon issuance of the Reexamination Certificate, Syntex filed this action in the district court against the PTO. The patent owner, Alfa, is not a party to the litigation.

By various counts in its complaint, Syntex asserted a right to have the PTO conduct a "proper" reexamination and asked the court to order the PTO to vacate the issuance of the Reexamination Certificate, to reopen the reexamination process at the point in the process immediately after Syntex filed its "Reply" to Alfa's initial statement, to assign the reexamination to a new examiner (asserting that the original examiner cannot serve as a neutral, disinterested arbiter), and to complete the reexamination in accord with PTO regulations. In the alternative, Syntex requested a refund of all or part of its reexamination fee ($1,770). Syntex framed counts under the Administrative Procedure Act, 5 U.S.C. Sec. 702 (1982) (APA); U.S. Const. Amend. V; the Tucker Act, 28 U.S.C. Sec. 1346(a)(2) (1982); the Declaratory Judgment Act, 28 U.S.C. Secs. 2201-2202 (1982); and the mandamus statute, 28 U.S.C. Sec. 1361 (1982). The PTO moved to dismiss the action on jurisdictional grounds.

The district court granted the PTO's motion for reasons stated from the bench. The court was unconvinced that Syntex had a right to judicial review of the challenged reexamination decision. Syntex's rights under the statute and regulations, the court held, included only the rights to initiate reexamination and to respond to the patent owner's initial statement, if any. The court found that Syntex had no right to challenge how the PTO conducts a reexamination, regardless of the manner in which the claim was pleaded. Accordingly, the district court dismissed the complaint on the dual jurisdictional grounds that it lacked subject matter jurisdiction and that Syntex had no standing to bring the suit. On appeal, Syntex challenges both rulings. Our jurisdiction is found in 28 U.S.C. Sec. 1295(a) (1982).

II

OPINION

Under the patent statute, the patent owner is given a right to review of an examiner's final reexamination decision, 35 U.S.C. Sec. 306 (1982), first before the PTO Board of Patent Appeals and Interferences under section 134, and then either by direct appeal of the board's decision to this court under section 141, or by suit against the PTO in district court with a right of appeal to this court under section 145. Syntex acknowledges that no specific right is provided in the patent statute for a third-party requester to seek review of an examiner's final decision either before the board or in the courts. Indeed, this suit followed the Commissioner's refusal to accept Syntex's petition; no error is asserted in the Commissioner's action, however, and that action is not appealed. Syntex asks that we treat the Commissioner's rejection of its petition as pursuit of its administrative remedy challenging the examiner's final decision. With that route exhausted, Syntex argues that it now has a right to review in the district court.

We need not analyze the jurisdictional basis asserted for each of Syntex's claims, because all are dependent on Syntex's theory, which we reject, that the patent statute impliedly grants Syntex, as a third-party requester, a right to review of the PTO's final decision at least in instances where it is alleged that the reexamination proceeding was not conducted in accordance with PTO regulations and established procedures. ⁴ As support for its theory Syntex urges that this court recognized a comparable right in Ethicon v. Quigg, 849 F.2d 1422, 7 USPQ2d 1152 (Fed.Cir.1988), thus establishing as precedent that the district court has jurisdiction of a third-party requester's suit and that such requester has standing.

The government urges that an analysis of the statutory provisions shows that Congress precluded judicial review of a final reexamination decision at the behest of a third-party requester. To permit such a requester to obtain judicial review is inconsistent, per the government, with the essentially ex parte nature of reexamination. Alternatively, the government relies on the decision of this court in Boeing Co. v. Commissioner of Patents and Trademarks, 853 F.2d 878, 7 USPQ2d 1487 (Fed.Cir.1988), as controlling on the question of Syntex's standing. In Boeing, a third-party requester was found to lack standing in this court because its allegations of injury were deficient. The government asserts that Syntex has also failed to allege the type of injury sufficient to confer standing.

Whether one looks at the question raised here as a matter of subject matter jurisdiction or lack of standing, the result is the same. In cases, such as this one, where a plaintiff asserts a procedural entitlement from a federal statute or implementing regulations, the District of Columbia Circuit has advised:

[T]he standing and reviewability inquiries tend to merge. A plaintiff cannot claim standing based on violation of an asserted personal statutorily-created procedural right when Congress intended to grant that plaintiff no such right.

Banzhaf v. Smith, 737 F.2d 1167, 1170 n. * (D.C.Cir.1984). We agree with that conclusion and find it particularly applicable here.

The question of jurisdiction (subject matter or standing) requires a focus on the legal rights or interests which devolve from the...