Vaillancourt v. Becton Dickinson & Co.

Addressing a patent owner’s standing under 35 U.S.C. § 141 to appeal decisions from the United States Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (PTAB) in an inter partes reexamination proceeding, the U.S. Court of Appeals for the Federal Circuit dismissed an appeal brought by an assignor of all right, title and interest in a patent, finding that a cause of action only lies for the patent owner. Vaillancourt v. Becton Dickinson & Co., Case No. 13-1408 (Fed. Cir. Apr. 24, 2014) (Rader, C.J.).

Appellant Michael Vaillancourt appealed from a PTAB ruling dismissing his request for rehearing of the Board’s earlier decision to affirm the examiner rejections of the claims in an inter partes reexamination. Vaillancourt was the owner of the patent when Becton Dickinson & Company requested an inter partes reexamination. The reexamination resulted in rejections of claims of the patent. Villancourt appealed the rejections to the Board. Approximately one year later, while the reexamination appeal was still pending, Vaillancourt assigned “the entire right, title and interest in the patent “including full and exclusive rights to sue upon and otherwise enforce” to VLV. VLV initiated a lawsuit against Becton Dickinson for infringement of the patent. Although Vaillancourt was the sole owner of VLV, it was indisputable that he was no longer an owner of the patent. Eventually, the PTAB affirmed all of the examiner’s rejections. Despite the fact that he was no longer the owner of the patent, Vaillancourt requested a rehearing with the PTAB in his own name. The PTAB denied Vaillancourt’s request to alter the prior affirmance of the examiner’s rejections. Vaillancourt appealed, identifying himself in the notice of appeal as both the patent owner and appellant.

The Federal Circuit dismissed the appeal for lack of a cause of action. The Court found that, under § 141, only a patent owner “dissatisfied with the final decision in an appeal to the Board . . . may appeal the decision only to the United States Court of Appeal for the Federal Circuit.”

Vaillancourt acknowledged that he had assigned his entire right, title, and interest in the patent to VLV, but claimed that he was the sole owner of VLV and therefore was authorized to file the appeal. The Federal Circuit rejected this argument, noting that it carried no weight in the face of the statutory requirement. The owner of the patent was VLV, which did not bring the appeal or appear before the court. Vaillancourt had no cause of action, the Court dismissed his appeal.