Exela Pharma Sciences, LLC et al. v. Lee, et al., __ F.3d __ (Fed. Cir. Mar. 26, 2015) (Newman, Dyk) (per curiam) (E.D. Va. O’Grady) (2 of 5 stars)

Federal Circuit affirmed dismissal of third-party challenge to PTO revival ruling under the APA.

During prosecution, patent owner missed a statutory deadline to file certain documents with the PTO in compliance with the Patent Cooperation Treaty and its implementing statute.  As a result, the patent application was abandoned, but the patent owner petitioned the PTO to revive the application, which was granted, and the patent issued.  Later, the patent owner brought an infringement suit against Appellant.  Appellant filed a petition challenging the revival of the patent application; however the PTO did not consider the petition.  Appellant sued the PTO under the Administrative Procedure Act, but the district court dismissed the case as time-barred by the statute of limitations.

Federal Circuit framed the issue as “whether a third party may collaterally challenge and obtain judicial review of a PTO revival ruling concerning an unrelated patent application.”  Slip Op. at 8.  It held that PTO revival rulings are not subject to third-party collateral challenge under the APA, because, under the Patent Act’s scheme and framework, such challenges “under the APA is not legislatively intended.”  Id.

Concurrences:  Both Judges filed concurring opinions.  On appeal, Appellant had argued that the only avenue to review the PTO’s action was through APA becauseAristocrat Tech. Australia Pty Ltd. v. Int’l Game Technology, barred challenges to improper revival in district court infringement actions.  543 F. 3d 657 (Fed. Cir. 2008).  Judge Dyk would reconsider Aristocrat en banc because (1) there is now no avenue to review improper revival, (2) improper revival is not a minor procedural error, (3) Morganroth v. Quigg, 885 F.2d 843 (Fed. Cir. 1989) held that PTO refusal to revive is reviewable under APA, and (4) there are numerous non-statutory defenses in infringement actions.  Judge Newman wrote that Aristocrat was correctly decided and that the Patent Act is explicit about defenses available in infringement actions in district courts, and the America Invents Act and PCT do not change the scope of those defenses.