Cooper Cameron v. SAFOCO Inc., Nos. 2009-1435, -1459 (Federal Circuit) Reexamination Nos. 95/000,015 and 95/000,017

The SAFOCO Inc. inter partes reexaminations are believed to be the first inter partes reexaminations to reach the United States Court of Appeals for the Federal Circuit.  The third party requester Cooper Cameron brought the appeal from the Board of Patent Appeals and Interferences (“the Board”).  The appeal was docketed on July 8, 2009, and styled by the Federal Circuit as Cooper Cameron v. SAFOCO Inc., as is normal in inter partes cases, such as interferences.

However, on July 14, the Patent and Trademark Office Solicitor Raymond Chen sent a letter to the Clerk of the Federal Circuit asking that the USPTO be a party to the case and that the official caption be revised accordingly.  In support, the Solicitor noted that such an appeal is conducted under the provisions of 35 U.S.C. § 143.  Section 143 states that “[i]n any ex parte case or any reexamination case, the Director shall submit to the court in writing the grounds for the decision of the [USPTO], addressing all the issues involved in the appeal.”  Therefore, according to the Solicitor’s letter, “the Director [of the USPTO] is a party to this appeal, just as in an ex parte appeal.”

On July 21, 2009, the patent owner Safoco filed a notice of intent to participate in the appeal.  However, as of August 21, 2009, the Federal Circuit has not acted on the Solicitor’s letter and the current official caption simply lists the parties to the reexamination proceeding.  For the time being, it appears as if the only parties to the appeal will be the third party requester (appellant) and the patent owner (appellee).

Read the revised official caption here: Revised Official Caption

Read the PTO solicitor letter here: PTO Solicitor Letter (2009-1435)