Sigram Schindler Beteilungsgesellschaft mbH v. Kappos, No. 1:09-cv-935-TSE-IDD (E.D. Va.).

The Sigram Schindler case seeks to clarify the statutory provisions governing appeals from the Board of Patent Appeals and Interferences (“the Board”) in ex parte reexamination.  The statutory provisions governing appeal are ambiguous.  One section appears to allow patent owners to challenge Board decisions in the U.S. District Court for the District of Columbia, while another section appears to only allow appeals from the Board to the United States Court of Appeals for the Federal Circuit (“Federal Circuit”).

More specifically, the statutory basis for appeals to the Federal Circuit for ex parte reexamination is 35 U.S.C. § 306.  Therein, the statute states that the patent owner may seek court review of Board decisions “under the provisions of sections 141 to 145 of this title.”  Sections 141-144 deal with appeals to the Federal Circuit, while Section 145 allows a civil action against the Director in the United States District Court for the District of Columbia.

However, allowing a civil action in ex parte reexamination appears to be inconsistent with Section 141 itself.  Specifically, Section 141 states that “[a] patent owner, or a third-party requester in an inter partes reexamination proceeding, who is in any reexamination proceeding dissatisfied with the final decision in any appeal to the [Board] under section 134 may appeal the decision only to the [Federal Circuit].”  Section 141 thus appears to foreclose any civil action under section 145.  The ambiguity exists because when Congress amended Section 141 in 2001, it appears to have neglected to also amend Section 306.

Sigram Schindler seeks to clarify this statutory ambiguity by challenging the PTO rules implementing the 2001 amendment as unlawful and, according to the Complaint, asking that they “be set aside as having been adopted in excess of the PTO’s statutory authority.”  The vehicle for this regulatory challenge is an ex parte reexamination initiated by Cisco Systems Inc., which challenges Sigram Schindler’s 2005 patent for a telecommunications network data transmission method and related network switch.  The ability to challenge any Board decision under Section 145 could be beneficial to patent owners because of the ability to potentially enter new evidence.

On Oct. 21, the PTO filed a motion for summary judgment to dispose of the case.  The basis for the summary judgment motion is primarily jurisdictional.  The PTO argues in its motion that Sigram Schindler lacks standing because the BPAI has not yet ruled on the reexamination.  The PTO also believes that allowing challenges to Board decisions of ex parte reexaminations under Section 145 would “eliminate or outright ignore the unequivocal statutory language Congress specifically placed into the Patent Act.”  As noted above however, the statutory provisions are not entirely clear.

As a final matter, we note that the statutory basis for appeals to the Federal Circuit for inter partes reexamination is 35 U.S.C. § 315.  Unlike the ex parte reexamination appeal statute, Section 315 states that the patent owner and the third party requester “may appeal under the provisions of sections 141-144.”  Thus, there is no ambiguity for inter partes reexamination and appeals from the Board may only be taken to the Federal Circuit.