Federal Circuit Sustains USPTO in Inter Partes Reexamination "Original Application" Controversy

Holding:

The U.S. Court of Appeals for the Federal Circuit held that the U.S. Patent and Trademark Office ("USPTO") was justified in subjecting a Cooper Technologies, Inc. patent to inter partes re-examination that found the patent invalid. In this regard, the Federal Circuit sustained the interpretation given by the USPTO to the term "original application" under the provisions on inter partes reeaxamination of the American Inventors Protection Act of 199( ("AIPLA). Cooper contended that, contrary to the determination of the USPTO and the U.S. District Court for the Eastern District of Virginia, “original application” refers only to the first application in a chain of applications from which priority is claimed. Hence, it argued that USPTO should terminate the inter partes proceeding on the ground that its patent did not issue from an original application. Applying court precedent, the Federal Circuit however found this view incorrect, holding that the USPTO's definition of "original application" that includes a "continuation" was permissible, and therefore entitled to deference. On the basis of the foregoing, the Federal Circuit upheld the denial of Cooper's petition to discontinue the inter partes reexamination proceedings.

Detailed Summary:

In this case, the Federal Circuit determined which patents are subject to inter partes reexamination. Congress established the inter partes reexamination procedure as part of the AIPA, Pub. L. No. 106-113, §§ 4001-4808, 113 Stat. 1501, 1501A-552 to -591. Pursuant to section 4608 of the AIPA, the inter partes reexamination procedure is available for “any patent that issues from an original application filed in the United States on or after” November 29, 1999—the date of the enactment of the AIPA. Opinion, pp. 1-2, citing AIPA § 4608, 113 Stat. at 1501A-572.

The USPTO interpreted the phrase “original application” in section 4608…

More Updates