Digest of Exela Pharmsci Inc. v. Lee, No. 2013-1206 (Fed. Cir. Mar. 26, 2015) (precedential). On appeal from E.D.V.A. Before Newman and Dyk (per curiam).

Procedural Posture: Plaintiff-Appellant Exela appealed the district court’s dismissal of its complaint seeking to challenge the revival of an abandoned patent application for failing to meet the statute of limitations under the Administrative Procedure Act (“APA”). CAFC affirmed.

  • APA Challenge: Appellant argued that its challenge of the PTO’s revival of Intervenor Cadence’s nationalized patent application was not time barred under the APA’s six-year statute of limitation, because Exela sought to challenge an agency determination, not a regulation. The Federal Circuit disagreed and ruled that “PTO revival actions are not subject to third party challenge under the APA” in the first instance. Accordingly, the Federal Circuit affirmed the dismissal of Exela’s complaint.

Dyk, concurring:

  • APA Challenge: Since the Federal Circuit’s ruling in Aristocrat Tech. Australia Pty Ltd. v. Int’l Game Tech., 543 F.3d 657 (Fed. Cir. 2008) barring review of improper revival as a defense in an infringement action, the only available route to review is under the APA. The Federal Circuit’s opinion in Aristocrat warrants review because (i) the Aristocrat opinion did not discuss the presumption of review of an agency determination, (ii) revival of an abandoned application is not a minor issue, (iii) the Aristocrat opinion failed to cite earlier precedent permitting review of the PTO’s revival of a patent application, and (iv) non-listed defenses have been recognized in several related areas of law. En banc reconsideration of Aristocrat may be appropriate.

Newman, concurring:

  • APA Challenge: Taking issue with Judge Dyk’s concurrence, Judge Newman does not believe the Federal Circuit’s opinion in Aristocrat was wrongly decided. Non-traditional defenses have been recognized when such defenses relate to substantive issues, not missed deadlines as is the case in a revival determination.