Digest of Automated Merchandising Sys., Inc. v. LeeNo. 2014-1728 (Fed. Cir. Apr. 10, 2015) (precedential). On appeal from E.D. Va. Before Prost, Taranto, and Fogel.

Procedural Posture: Patentee Automated Merchandising Systems (“AMS”) appealed from the District Court’s decision that the Administrative Procedure Act (“APA”) did not require termination of reexaminations after patentee AMS and accused infringer Crane (which had requested the reexamination) had entered into a consent judgment in the related litigation, which dismissed the infringement suit and stated that the parties stipulated to the validity of the patents. CAFC affirmed based on its finding that the PTO’s refusal to terminate the reexaminations was not a “final agency action” under the APA.

  • Reissue/reexamination: As a threshold matter, the CAFC found that the PTO’s refusal implicated the “final agency action” requirement of the APA, even though the PTO failed to raise the issue at the District Court, because the issue presented a significant question of continuing public concern affecting a range of PTO proceedings in the regular operation of the agency. The CAFC found the PTO’s refusal to terminate the reexaminations was merely interlocutory in nature, rather than a consummation of the PTO’s decision-making process, because an ultimate merits determination regarding the validity of the patent claims at issue had not yet been reached in any of the reexamination proceedings. Nor was the PTO’s refusal “an action by which rights or obligations have been determined,” because AMS had not lost any patent rights from the refusal. Based on its finding that there had been no final agency action, the CAFC held that AMS could not proceed under the APA.