Patentee May Not Challenge The Result Of An Ex Parte Reexamination In District

In In re Teles AG Informationstechnologien, No. 12-1297 (Fed. Cir. Apr. 4, 2014), the Federal Circuit held that the United States District Court for the District of Columbia ("D.D.C.") lacked subject matter jurisdiction over a patent owner's appeal of a Board decision in an ex parte reexamination, but erred in dismissing rather than transferring the case to the Court. Treating the case as properly transferred, the Court affirmed the Board's rejection of claim 35 of U.S. Patent No. 6,954,453 ("the '453 patent") as obvious.

Teles AG Informationstechnologien and Sigram Schindler Beteiligungsgesellschaft MBH (collectively "Teles") own all substantial rights in the '453 patent, which is directed to a method and apparatus for transmitting data in a telecommunications network. Following a third-party request, the PTO conducted an ex parte reexamination of the '453 patent and rejected certain claims 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, and the Board affirmed. Teles then sought review of the Board's decision in the D.D.C. pursuant to 35 U.S.C. § 145. The D.D.C. dismissed the case for lack of subject matter jurisdiction, concluding that after the 1999 amendments to the Patent Act, § 145 proceedings could not be maintained by patent owners. The D.D.C. then attempted to transfer the case to the Federal Circuit pursuant to 28 U.S.C. § 1631.

The Federal Circuit first held that the D.D.C. erred in dismissing the case since a transfer is not proper when combined with a dismissal, but held that it would review the case as though properly transferred. According to the Court, because the statutory deadline for filing an appeal to the Court had passed and there was no evidence suggesting bad faith in Teles's filing with the district court, it was in the interest of justice to transfer the case.

"Amendments intended to clarify statutory language do not indicate that the original language should be construed to mean the opposite of the clarifying language. The 2011 amendments do not manifest Congress' intent to preserve the availability of § 145 in the earlier version of the section." Slip op. at 13-14 (citation omitted).

The Federal Circuit then held that the district court lacked jurisdiction over a patent owner's appeal under § 145 following the 1999 American Inventors Protection Act. The Court explained that when Congress amended...