Automated Merchandising Sys. Inc. v. Lee, ___ F.3d ___ (April 10, 2015) (Prost, TARANTO, Fogel) (E.D. Va.: Trenga) (3 of 5 stars)

Federal Circuit affirms summary judgment rejecting patentee’s challenge to PTO’s refusal to terminate pending inter partes reexaminations in light of the settlement.

Final Agency Action:  The patentee could not challenge the PTO’s refusal to terminate the reexamination proceedings under the Administrative Procedure Act because the refusal did not constitute a “final agency action” subject to challenge under 5 U.S.C. § 704.  Instead, the ruling was “‘interlocutory’ in nature,” comparable to a “run-of-the-mill district-court denial of a motion to dismiss,” that did not address the merits of validity.  Slip op. at 8.  The patentee “has lost no patent rights from the refusal to terminate the proceedings” and “the only direct consequence that flows from the PTO’s refusal to stop the proceedings is that [the patentee] must continue to participate in the reexaminations to preserve its interests,” a burden which is “not enough to render that action final.”  Id. at 9.  The patentee could seek review of the refusal to terminate on direct appeal from a merits decision in the reexamination but not through either mandamus or the declaratory judgment act.

No Forfeiture:  The court disposed of the case on this ground even though the PTO had not raised the issue below because (1) the issue was a pure question of law and did not involve the merits of the patentee’s argument under pre-AIA § 317(b); (2) the issue “presents a significant question of continuing public concern, affecting a range of PTO proceedings in the regular operation of the agency,” and (3) the issue was fully briefed.