A potential infringer cannot sue the Patent Trademark Office under the Administrative Procedure Act to attack the validity of an issued patent.
A competitor in the air-filled packaging cushion industry brought an action against Free-Flow Packaging Int’l, Inc., in the District Court for the Eastern District of Virginia, seeking a declaratory judgment of non-infringement and invalidity. The competitor, Pregis Corp., also sued the Patent and Trademark Office, the PTO’s director, and defendant Free-Flow under the Administrative Procedure Act (“APA”), 5 U.S.C. §§ 701-706, to prevent issuance of two pending patent applications.
The district court dismissed the APA claims for lack of subject matter jurisdiction. At trial, the jury returned a verdict, finding several of the asserted claims invalid for obviousness, and the remaining claims not infringed. Defendant moved for judgment as a matter of law as to infringement, willful infringement, validity, and damages. The district court denied the motion. Defendant appealed the denial of its motions for judgment as a matter of law as to validity and infringement, and Plaintiff cross-appealed the dismissal of its APA claims.
The Federal Circuit affirmed the district court’s denial of the motions for judgment as a matter of law. The Court held that there were substantial facts the jury could have relied on in determining that the asserted patents were invalid as obvious, and that Defendant had failed to show the nexus between commercial success and the claimed subject matter.
On the cross-appeal, the Federal Circuit reaffirmed its long-standing precedent that a potential infringer cannot sue the PTO under the APA to attack the validity of an issued patent. See Syntex (U.S.A.)Inc. v. United States Patent & Trademark Office, 882 F.2d 1570, 1576 (Fed. Cir. 1989) (“a potential infringer may not sue the PTO seeking retraction of a patent issued to another by reason of its improper allowance by the PTO.”); Animal Legal Defense Fund v. Quigg, 932 F.2d 920, 938 (Fed. Cir. 1991) (“[t]he structure of the Patent Act indicates that Congress intended only the remedies provided therein to ensure that the statutory objectives would be realized.”). In this case, a competitor was not entitled under the APA to judicial review of the PTO’s decision to grant the patents-in-suit. The Federal Circuit held that the legislature has established, and the U.S. Supreme Court has affirmed, a statutory scheme for persons to challenge the validity of a patent, along with proper mechanisms through which a party may challenge a decision of the PTO. That statutory scheme, and the burdens, relief, and judicial review proscribed therein, cannot be circumvented by suing for judicial review under the APA. Accordingly, the Federal Circuit affirmed the district court’s dismissal of Plaintiff’s APA claims for a lack of subject matter jurisdiction.
A copy of the opinion can be found here.