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IN RE: Lakshmi ARUNACHALAM, Appellant

United States Court of Appeals for the Federal Circuit2016-05-27No. 2016-1560
824 F.3d 987

Summary

Holding. The Federal Circuit dismissed the appeal for lack of jurisdiction because the examiner's rejection was not a final Board decision and the patent owner failed to exhaust administrative remedies by appealing to the Board before filing a Federal Circuit appeal.

Dr. Arunachalam appealed directly to the Federal Circuit from a patent examiner's final rejection issued during reexamination proceedings, bypassing the Patent Trial and Appeal Board. The examiner's rejection came after the Board had previously affirmed earlier claim rejections and designated a new ground of rejection, prompting Dr. Arunachalam to reopen prosecution.

The Federal Circuit dismissed the appeal for lack of jurisdiction. Federal Circuit jurisdiction over Patent Office decisions requires finality, and an examiner's rejection during reexamination is not final until the patent owner exhausts the administrative appeal process. Patent owners facing examiner rejections in reexamination must first appeal to the Board before seeking Federal Circuit review.

Summary generated by law.co from the public-domain opinion. The opinion text itself is public domain.

Key issues

  • Whether Federal Circuit has jurisdiction over appeals from non-final Patent Office decisions
  • Finality requirement for judicial review of patent examination rejections
  • Proper appellate procedure in patent reexamination proceedings

Procedural posture

Dr. Arunachalam appealed directly to the Federal Circuit from an examiner's final rejection issued during patent reexamination, without first appealing to the Patent Trial and Appeal Board.

Authorities cited

No cited authorities resolved to law.co cases yet.

Opinion

majority opinion

ORDER

HUGHES, Circuit Judge.

Dr. Lakshmi Arunaehalam owns U.S. Patent No. 5,778,178, which has been undergoing reexamination since November 2008. In September 2014, the Patent Trial and Appeal Board affirmed the rejection of claims 9-16, but designated a new ground of rejection for claim 16. Dr. Arunaehalam elected to reopen prosecution of the claims, after which the examiner issued a final rejection in June 2015. Rather than appeal the examiner’s final rejection to the Board, Dr. Arunaehalam filed the instant appeal. Because we lack jurisdiction to consider non-final appeals from the Patent Office, we dismiss for lack of jurisdiction.

Under 28 U.S.C. § 1295(a)(4)(A), we have exclusive jurisdiction over an appeal from a “decision” of the Board. “We have held that § 1295(a)(4) should be read to incorporate a finality requirement.” Loughlin v. Ling, 684 F.3d 1289, 1292 (Fed.Cir.2012) (citing Copelands’ Enters., Inc. v. CNV, Inc., 887 F.2d 1065, 1067-68 (Fed.Cir.1989) (en banc)). Our adoption of a finality rule “finds strong support both in the tradition of the federal courts system and in sound public policy.” Copelands’ Enters., 887 F.2d at 1067 (citations omitted). “As indicated by the Supreme Court, requiring a party to await a final decision and to raise all claims of error in a single appeal ‘emphasizes the deference that appellate courts owe to the trial judge,’ ‘avoid[s] the obstruction to just claims that would come from permitting the harassment and cost of a succession of separate appeals;’ and- ‘promotes] efficient judicial administration.’ ” Id. (quoting Firestone Tire & Rubber Co. v. Risjord, 449 U.S. 368, 374, 101 S.Ct. 669, 66 L.Ed.2d 571 (1981)). Thus, we lack jurisdiction to hear a non-final appeal from the Patent Office.

Here, there can be no doubt that the Patent Office’s actions are non-final for the purposes of judicial review and that Dr. Arunachalam’s appeal is premature. A patent owner dissatisfied with an examiner’s rejection of a claim in reexamination may proceed with a two-step appeals process. First, pursuant to 35 U.S.C. § 134(b) (2002), “[a] patent owner in any reexamination proceeding may appeal from the final rejection of any claim by the primary examiner to [the Board].... ” Second, if the patent owner is dissatisfied with the Board’s final decision, the patent owner may appeal the decision to this court. 35 U.S.C. § 141 (2002) (“A patent owner ... who is in any reexamination proceeding dissatisfied with the final decision in an appeal to the Board ... under section 134 may appeal the decision only to the United States Court of Appeals for the Federal Circuit.”).

A new ground of rejection, however, is not a final decision for the purposes of judicial review. See 37 C.F.R. § 41.50. After a new ground of rejection, the patent owner can either (1) reopen prosecution and, if the rejection cannot be traversed, again appeal to the Board or (2) pursue rehearing at the Board, after which an appeal to this court may be filed. See id. Here, Dr. Arunaehalam elected to reopen prosecution and the examiner issued a final rejection. Pursuant to § 134(b), Dr. Arunaehalam may appeal the examiner’s decision to the Board. And only after the Board issues a final decision can we exercise jurisdiction to review the Board’s decision.

Accordingly,

It Is ORDERED That:

(1) The appeal is dismissed for lack of jurisdiction.

(2) All pending motions are denied as moot.