In Agilent Technologies, Inc. v. Waters Technologies Corp., Appeal No. 2015-1280, the Federal Circuit dismissed Agilent’s appeal of an inter partes reexamination for lack of standing.

Waters sued Aurora SFC Systems, Inc. for patent infringement. Aurora filed an inter partes reexamination request citing new prior art. Shortly thereafter, Agilent acquired “substantially all” of Aurora’s assets, but did not disclose this to the PTO. Approximately a month after the asset purchase the examiner issued its Action Closing Prosecution and rejected all claims over the new prior art. Waters filed its response, and Aurora submitted third-party comments. The examiner then issued a Right of Appeal Notice rejecting all remaining claims of the patent. Waters filed a notice of appeal to the Board and Aurora filed a cross-appeal. After filing the cross-appeal, Aurora filed a request to change the real party in interest from Aurora to Agilent, but Aurora did not withdraw its counsel from the reexamination proceeding. The Board reversed all of the examiner’s claim rejections. The Board listed Aurora as the third-party requester in the caption of the decision. 

Agilent appealed the Board’s decision. Waters moved to dismiss the appeal, arguing that Agilent was not a third-party requestor under 35 U.S.C. § 315(b) and therefore lacked standing to appeal. Agilent argued that it qualified as a third-party requester because it was Aurora’s privy and successor-in-interest. 

The Federal Circuit held that privies do not have standing to appeal reexamination decisions because privies are not explicitly mentioned in 35 U.S.C. § 141 or 35 U.S.C. § 315(b), whereas other sections of the patent laws specifically reference privies. The court then declined to address whether a successor-in-interest qualifies as a third-party requestor because Agilent did not prove that it was in fact Aurora’s successor-in-interest. The Federal Circuit reasoned that Aurora had continued to participate in the reexamination after its assets were acquired by Agilent and that Aurora was still a party to the related litigation. The Federal Circuit also pointed out that, in the litigation, Aurora had opposed Waters’ motion to amend its complaint to add Agilent as a party.  Because Aurora was still a party to the litigation, the Federal Circuit held that Agilent had not properly “stepped into the shoes of Aurora” to be deemed a successor-in-interest.