Digest of Agilent Technologies, Inc. v. Waters Technology Corp., No. 2015-1280 (Fed. Cir. Jan. 29, 2016) (precedential). On appeal from P.T.A.B. in No. 95/001,947. Before Moore, O’Malley, and Taranto.

Procedural Posture: Third party Agilent Technologies, Inc. appealed the Board’s denial of an inter partes reexamination requested by Aurora SFC Systems, Inc. with respect to U.S. Patent No. 6,648,609. CAFC dismissed Agilent’s appeal for lack of standing.

  • Reissue/reexamination – Standing: CAFC held that Agilent did not have a cause of action to appeal the denial of an inter partes reexamination because Agilent was not the third-party requester of the reexamination; Aurora was the third-party requester of the reexamination. Because Agilent was merely a privy of Aurora, CAFC held that Agilent did not have a cause of action under 35 U.S.C. § 141, which is limited to a “third-party requester.” Similarly, under 35 U.S.C. § 100(e), only Aurora would be the proper “third-party requester” here. Agilent did not become a third-party requester merely by acquiring substantially all the assets of Aurora. Agilent did not establish that it is, in fact, Aurora’s successor-in-interest, so that CAFC did not have to decide whether a successor-in-interest becomes a third party requester under §§ 100(e) or 141.