« Vacuum Suction | Main | MPEP E8r7 »

August 19, 2008


In a shocking, unprecedented ruling, one branch of government stands up for another. Cooper Technologies had a continuation patent subjected to inter partes reexamination. Cooper carped that wasn't kosher, as the original (first) application was filed in 1993, and the law stated that "the inter partes reexamination procedure is available for "any patent that issues from an original application filed in the United States on or after" November 29, 1999." Apparently paid by the word, the CAFC reminded Cooper that "original" was just a word, subject to interpretation, and government agencies, such as the USPTO, have interpretation presumption on their side.

Cooper Technologies v. Jon W. Dudas, Director, USPTO, and Thomas & Betts (CAFC 2008-1130)

In this case, Thomas & Betts Corporation ("T&B") requested that the Patent Office initiate inter partes reexamination of U.S. Patent No. 6,984,791 (the "'791 patent"), owned by Cooper Technologies Company ("Cooper"). The '791 patent issued from Application No. 10/412,683 (the "'683 application"), which was filed on April 14, 2003. The '683 application is a continuation of Application No. 10/198,963 (filed July 22, 2002), which is a continuation of Application No. 08/821,760 (filed March 20, 1997), which is a continuation of Application No. 08/262,460 (filed June 20, 1994) (the "'460 application"), which is a continuation-in-part of Application No. 08/038,335 (filed on March 10, 1993). See '791 patent at (63).

Congress established the inter partes reexamination procedure as part of the American Inventors Protection Act of 1999, Pub. L. No. 106-113, §§ 4001-4808, 113 Stat. 1501, 1501A-552 to -591 ("AIPA"). Pursuant to section 4608 of the AIPA, the inter partes reexamination procedure is available for "any patent that issues from an original application filed in the United States on or after" November 29, 1999--the date of the enactment of the AIPA. Id. § 4608, 113 Stat. at 1501A-572 (emphasis added). The United States Patent and Trademark Office ("Patent Office") has interpreted the phrase "original application" in section 4608 "to encompass utility, plant and design applications, including first filed applications, continuations, divisionals, continuations-in-part, continued prosecution applications and the national stage phase of international applications." Rules to Implement Optional Inter Partes Reexamination Proceedings, 65 Fed. Reg. 76,756, 76,757 (Dec. 7, 2000). Appellant contends that, contrary to the determination of the Patent Office and the district court, "original application" refers to the first application in a chain of applications from which priority is claimed.

The AIPA created the inter partes reexamination procedure to allow third parties to have an expanded role in the reexamination of issued patents.

Under 35 U.S.C. § 2, the Patent Office has authority to establish regulations to "govern the conduct of proceedings in the Office." 35 U.S.C. § 2(b)(2)(A); see also Animal Legal Def. Fund v. Quigg, 932 F.2d 920, 930 (Fed. Cir. 1991).

We have also previously held that 35 U.S.C. § 2(b)(2) does not authorize the Patent Office to issue "substantive" rules. See Merck & Co. v. Kessler, 80 F.3d 1543, 1549-50 (Fed. Cir. 1996). "A rule is 'substantive' when it 'effects a change in existing law or policy' which 'affect[s] individual rights and obligations.'" Animal Legal Def. Fund, 932 F.2d at 927 (quoting Cubanski v. Heckler, 781 F.2d 1421, 1426 (9th Cir.1986), vacated as moot sub nom., Bowen v. Kizer, 485 U.S. 386 (1988)). "In contrast, a rule which merely clarifies or explains existing law or regulations is 'interpretative.'" Id. In this case, the Patent Office's interpretation of "original application" does not effect any change in existing law or policy; rather, it is a prospective clarification of ambiguous statutory language regarding a matter of procedure. It is therefore "interpretive"--rather than "substantive"--under the definitions put forward in Animal Legal Defense Fund. We conclude that the Patent Office had the authority under 35 U.S.C. § 2 to interpret section 4608, because that interpretation both governs the conduct of proceedings in the Patent Office, not matters of substantive patent law, and is a prospective clarification of ambiguous statutory language.

The Chevron deference is government agency ability to fill-er-up with any fuel of choice when Congress does its de rigueur legislative sloppy sausage making. In a word, "hotdog."

Because the Patent Office is specifically charged with administering statutory provisions relating to "the conduct of proceedings in the Office," 35 U.S.C. § 2(a)(2)(A), we give Chevron deference to its interpretations of those provisions. See Lacavera, 441 F.3d at 1383 ("Because the PTO is specifically charged with administering this statute, we analyze a challenge to the statutory authority of its regulations under the Chevron framework."); see also Bender v. Dudas, 490 F.3d 1361, 1368 (Fed. Cir. 2007) (applying Chevron framework to Patent Office regulations for the conduct of proceedings in the Patent Office); Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1425 (Fed. Cir. 1988) (same).

Under the familiar two-step Chevron analysis, "[w]e always first determine 'whether Congress has directly spoken to the precise question at issue.'" Hawkins v. United States, 469 F.3d 993, 1000 (Fed. Cir. 2006) (quoting Chevron, 467 U.S. at 842). "We do so by employing the traditional tools of statutory construction; we examine the statute's text, structure, and legislative history, and apply the relevant canons of interpretation." Delverde, SrL v. United States, 202 F.3d 1360, 1363 (Fed. Cir. 2000). "If we find 'that Congress had an intention on the precise question at issue, that intention is the law and must be given effect . . . .'" Hawkins, 469 F.3d at 1000 (quoting Chevron, 467 U.S. at 843 n.9.) If we conclude that "Congress either had no intent on the matter, or that Congress's purpose and intent is unclear," Delverde, 202 F.3d at 1363, then we proceed to step two, in which we ask "whether the agency's interpretation is based on a permissible construction of the statutory language at issue," Hawkins, 469 F.3d at 1000.


The longwinded CAFC ruling will dry your eyes, hurt your head, and make you reach for your favorite bottle in the liquor cabinet. Save yourself the trouble and reach away.

Posted by Patent Hawk at August 19, 2008 11:13 AM | The Patent Office


Longwinded, but perhaps foreboding of things to come in the GSK case. Let's hope not.

Posted by: kk at August 19, 2008 6:40 PM


The issue in the Cooper Technologies case is quite different from that in GSK/Tafas. In Cooper Technologies, we're dealing with when a procedure is applicable (inter partes reexam) that no court, including the Federal Circuit, had spoken to. Note also that the Federal Circuit stressed that the interpretation of "original" by the USPTO came out soon after the legislation was enacted and wasn't changed by subsequent Congressional amendment.

GSK/Tafas is an entirely different animal. What the USPTO has done in interpreting 35 USC 120 is long after that statute came into being, and is inconsistent with prior interpretations of this section by both the Federal Circuit and the USPTO. The USPTO is also affecting a substantive right of the applicant, and the Federal Circuit has repeatedly said the USPTO has no such authority. You won't see the Federal Circuit giving the USPTO Chevron deference in GSK/Tafas.

Posted by: EG at August 20, 2008 4:12 AM