06/09/14

Vaillancourt v. Becton Dickson & Co.: No Delegation of Right to Reexamination Appeal

Category: Post-Grant Proceedings  
 
 
 
 By: John Kirkpatrick, Contributor 
 
TitleVaillancourt v. Becton Dickson & Co., No. 2013-1408 (Fed. Cir. April 24, 2014).
IssueVaillancourt claims [...] that despite his assignment of the entire right, title, and interest in [U.S. Patent No. 6,699,221] to VLV [during reexamination], he was “authorized to continue with all related proceedings including further appeals” in connection with the reexamination.
Vaillancourt at *5, (text added, internal citation removed).
HoldingThe unambiguous language of [35 U.S.C.] § 141 provides that a patent owner alone can appeal a final decision in an inter partes reexamination to this court.
Id. at *4 (text added).
 
 
 

Procedural HistoryAppellee Becton Dickinson & Company (BD) requested an inter partes reexamination of the ’221 patent. [...] Vaillancourt appealed [the examiner's] rejections to the Board [...]. However, [...] while the reexamination appeal was still pending, Vaillancourt assigned to VLV “the entire right, title and interest in and to” the ’221 patent, “including full and exclusive rights to sue upon and otherwise enforce” the patent. [...] Vaillancourt appealed [the Board's affirmation of the examiner] to [the Federal Circuit], identifying himself in the notice of appeal as both the patent owner and appellant.
Vaillancourt at *3 (text added, internal citations removed).
 
 
 
Legal Reasoning (Rader, Linn, Taranto)
Background
Legal StandardA statute's unambiguous language "must ordinarily be regarded as conclusive." Vaillancourt at *4.
A Patent Owner Alone Can AppealThe applicable version of § 141 states, in pertinent part: “[a] patent owner . . . in an inter partes reexamination proceeding . . . dissatisfied with the final decision in an appeal to the Board. . .may appeal the decision only to the United States Court of Appeals for the Federal Circuit.” The unambiguous language of § 141 provides that a patent owner alone can appeal a final decision in an inter partes reexamination to this court. Thus, the statute itself sets the requirements for bringing an appeal here. Id.
Analysis
No Delegation of Authority to AppealVaillancourt claims [...] that despite his assignment of the entire right, title, and interest in the ’221 patent to VLV, he was “authorized to continue with all related proceedings including further appeals” in connection with the reexamination. [...] In essence, Vaillancourt suggests that § 141 allows a patent owner to delegate to a third party its authority to bring an appeal to this court. [...] [H]e states that while the unambiguous language of § 141 does not explicitly provide for such delegation, the section does not explicitly bar it either. [...] This assertion carries no weight in the face of a statutory requirement. The statute also does not forbid a patent owner’s travel agent from filing an appeal, but that hardly justifies interpreting the statute to extend to such unmentioned categories.
Vaillancourt at *5 (text added, internal citations removed).
Conclusion
The only cause of action (right to sue) in this court that Vaillancourt invokes is 35 U.S.C. § 141, but the unambiguous language of that provision limits it to the patent owner. [...] As Vaillancourt is not the owner of the ’221 patent, he cannot bring this appeal before the court, for lack of a cause of action. Accordingly, this court dismisses the appeal.
Vaillancourt at *2 (text added).
 
 
 Image Attribution Statement: George Hodan, “Old Key,” available as a public domain image by author, http://www.publicdomainpictures.net/view-image.php?image=62977&picture=old-key (last visited June 9, 2014) (image modified).
 
 
 
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