Patent Assignors Do Not Retain A Right Of Appeal Under 35 U.S.C. § 141

In Vaillancourt v. Becton Dickinson & Co., No. 13-1408 (Fed. Cir. Apr. 24, 2014), the Federal Circuit held that there is no cause of action for an appeal in a reexamination proceeding under 35 U.S.C. § 141 where the appellant has assigned the entire right, title, and interest to the appealed patent.

Michael Vaillancourt was the holder of U.S. Patent No. 6,699,221 ("the '221 patent").  On August 12, 2010, Becton Dickinson & Company requested an inter partes reexamination of the '221 patent.  During reexamination, the patent examiner rejected all claims of the '221 patent.  Vaillancourt appealed this decision to the Board on April 25, 2011.  During the pendency of the appeal, on April 24, 2012, Vaillancourt assigned "the entire right, title, and interest in and to" the '221 patent to VLV Associates, Inc. ("VLV"), of which Vaillancourt is the sole owner.  Slip op. at 3 (citation omitted).  The Board affirmed the examiner's rejections on June 29, 2012, and subsequently denied Vaillancourt's request to alter this affirmance.  Vaillancourt then appealed to the Federal Circuit, citing a cause of action under 35 U.S.C. § 141, and identifying himself in the notice of appeal as both the patent owner and appellant.

"Section 141 grants a procedural right to the patent owner to appeal decisions from the PTAB.  This court sees no reason . . . to extend [the] procedural right beyond what is clearly set forth in § 141."  Slip op. at 5.

On appeal, the Federal Circuit dismissed Vaillancourt's appeal, finding that, "[u]nder the unambiguous language of § 141, Vaillancourt, the sole appellant here, has no cause of action to bring this appeal." 

Id. at 5.  The Court noted that "[t]he unambiguous language of § 141 provides that a patent owner alone can appeal a final decision in an inter partes reexamination to this court," and, therefore, the statute itself "requires the patent owner to initiate any appeal."  Id. at 4.

Vaillancourt argued that despite his assignment of rights in the '221 patent, he was authorized to proceed with the appeal on behalf of VLV based in part on being the sole owner of VLV.  The Court found that such an argument suggested that § 141 allows a patent owner to delegate to a third party its authority to bring an appeal, but the Court noted that Vaillancourt provided no support for this interpretation of the statute, and instead only argued that the language of § 141 does not explicitly bar such delegation.  The Court dismissed Vaillancourt's argument, noting that the statute grants a procedural right to the patent owner, and the statute's failure to forbid unmentioned classes of appellants does not justify interpreting the statute to extend rights of appeal to such unmentioned classes.

Accordingly, the Federal Circuit dismissed Vaillancourt's appeal as lacking a cause of action to bring the appeal.

This article previously appeared in Last Month at the Federal Circuit, May 2014.

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