Intellectual Property – PTO Reg Challenge

A plaintiff company undergoing an ex parte reexamination appeal, at the behest of Cisco Systems Inc., of plaintiff’s patent issued in 2005, cannot challenge a regulation of the U.S. Patent and Trademark Office that regulates the appeal process in these circumstances, as an Alexandria U.S. District Court says that plaintiff’s request is not ripe for a court to decide.

In this dec action, plaintiff SSBG, a patent owner in the midst of an ex parte reexamination appeal to the Board of Patent Appeals & Interferences, challenges a PTO regulation – 37 C.F.R. §1.303 – as being “in excess of its statutory jurisdiction, authority or limitations or short of statutory right.” According to plaintiff, although 35 U.S.C. §§141 and 306 allow a patent owner aggrieved by an adverse BPAI reexamination decision the option of appealing to the Court of Appeals for the Federal Circuit or filing a civil action for review in the D.C. District Court, the challenged regulation impermissibly limits a patent owner to a Federal Circuit appeal.

Plaintiff’s request for a judgment declaring the validity or invalidity of the challenged regulation is unripe because 1) the BPAI has not yet rendered an adverse decision that would allow SSBG to seek court review of that determination, making the purported hardship contingent and speculative; 2) plaintiff has not demonstrated that the challenged regulation create an immediate, direct and significant hardship altering its day-to-day activities; and 3) any hardship is remediable by 28 U.S.C. §1631. Plaintiff does not present a justiciable case or controversy, and there is no jurisdiction to reach the merits of whether the regulation at issue contravenes 35 U.S.C. §306.

Sigram Schindler Beteiligungsgesellschaft MbH v. Kappos (Ellis, J.) No. 1:09cv935, Dec. 18, 2009; USDC at Alexandria, Va. VLW 010-3-012, 22 pp.