Federal Circuit Finds Appellant Patentee Lacks Standing In An Appeal From An Inter Partes Review Finding Unpatentable A Claim Previously Cancelled In Ex Parte Reexamination
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  • Federal Circuit Finds Appellant Patentee Lacks Standing In An Appeal From An Inter Partes Review Finding Unpatentable A Claim Previously Cancelled In Ex Parte Reexamination

    On August 29, 2022, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion in a consolidated appeal relating to two inter partes reexamination (“IPR”) decisions from the Patent Trial and Appeal Board (“PTAB”) finding all challenged claims of United States Patent 6,393,096 unpatentable.  Best Medical Int’l., Inc. v. Elekta Inc., Nos. 2021-2099, 2021-2100 (Fed. Cir. Aug. 29, 2022).  The CAFC held, inter alia, that Appellant patentee lacked standing to appeal the PTAB’s IPR unpatentability decision with respect to a claim that Appellant previously had canceled in an ex parte reexamination (“reexamination”).

    Appellee filed two IPR petitions collectively challenging claims 1, 43, 44, and 46 of the ’096 patent, which patent relates to determining an optimized beam arrangement for applying radiation to a tumor while minimizing radiation to surrounding areas.  The PTAB instituted an IPR on both petitions.

    After institution of the IPRs, an examiner in a parallel reexamination rejected claim 1 based on statutory and obviousness-type double patenting.  Rather than arguing the merits of the Examiner’s rejection, in November 2020, Appellant patentee canceled claim 1 in that reexamination “without prejudice or disclaimer.”

    In April 2021, the PTAB issued its final written decisions in Appellee’s IPRs, finding all challenged claims unpatentable.  In one of those decisions, the PTAB acknowledged that patentee had canceled claim 1 during the parallel reexamination but concluded that claim 1 had not yet been canceled by any final action.  Therefore, the PTAB considered the merits of petitioner’s patentability challenge for all four challenged claims, including claim 1.

    Appellant patentee then filed notices of appeal, first with respect to the reexamination on June 9, 2021, and then with respect to the IPRs on June 25, 2021.  In its notice of appeal with respect to the reexamination, patentee did not challenge the examiner’s rejections of claim 1.

    In its appeal to the CAFC, patentee argued, inter alia, that the PTAB lacked authority to decide the patentability of claim 1, because claim 1 was cancelled prior to any final written decision.

    In finding otherwise, the CAFC observed that Appellant patentee’s “cancellation” of claim 1 during ex parte reexamination was “without prejudice or disclaimer,” and that no statutory disclaimer under 35 U.S.C. § 253(a) had been filed.  Accordingly, cancellation was not final at the time of the IPR final written decisions, and the PTAB had authority to address claim 1.

    Appellee petitioner argued that—because patentee never appealed the result of the ex parte reexamination with respect to claim 1—claim 1 was effectively cancelled and Appellant patentee lacked standing to bring its IPR appeal with respect to claim 1.  Appellant countered that it had suffered an injury in fact based on collateral estoppel effects resulting from the PTAB’s claim 1 unpatentability determination in the IPR.  In particular, Appellant pointed to a statement by an examiner—in a reexamination of one of patentee’s other patents—that he was bound by the reasoning expressed in the PTAB’s IPR decision with respect to claim 1 of the ’096 patent.  Appellant’s argument was essentially that, because the examiner would not have been able to take such a position based on Appellant’s reexamination, in which appellant cancelled claim 1 “without prejudice or disclaimer,” Appellant should be able to appeal the IPR decision with respect to claim 1.

    The CAFC agreed with Appellee petitioner.  Although the CAFC concluded that Appellant patentee’s initial “cancellation” of claim 1 in the reexamination was not final at the time the PTAB decided Appellee’s IPRs, patentee conceded at oral argument that the cancellation did become final when patentee filed its notice of appeal with respect to the reexamination without challenging the examiner’s rejections of claim 1.  The Court held that, because that notice of appeal was filed before patentee filed its notices of appeal regarding the IPRs, there was no case or controversy regarding claim 1’s patentability for the CAFC to resolve.  As for Appellant’s argument regarding collateral injuries it did or could suffer, the CAFC found both that patentee could separately appeal any negative collateral outcomes in other examinations or reexaminations and that, in any event, the “the potential for collateral consequences” is insufficient on its own to confer standing.  Therefore, the CAFC did not reach the merits of the patentability of claim 1.

    The CAFC then turned to patentee’s appeal relating to the PTAB’s finding that claims 43, 44, and 46 are unpatentable for obviousness, and affirmed.