A Post-Lexmark Clarification for Patents
by Pamela Chestek • May 7, 2014 • patent • 0 Comments
Here’s a little soupçon of a decision, a teaching moment from the Federal Circuit. It’s an easy fact pattern: a patent is in an inter partes reexamination, after the case has been fully briefed the patent owner assigns the patent, the Patent Trial and Appeal Board rejects the claims, and the former owner appeals the rejection.
This is the opening paragraph of the opinion, which is all you need:
The only cause of action (right to sue) in this court that Vaillancourt invokes is 35 U.S.C. § 141, but the unambiguous language of that provision limits it to the patent owner. Though the parties in this case have argued about “standing,” the Supreme Court recently clarified that some issues often discussed in “standing” terms are better viewed as interpretations of a statutory cause of action. See Lexmark Int’l, Inc. v. Static Control Components, Inc., 134 S. Ct. 1377, 1386-88 (2014). Because the issue here focuses on § 141, this opinion directly addresses the scope of that cause of action. As Vaillancourt is not the owner of the ‘221 patent, he cannot bring this appeal before the court, for lack of a cause of action.
Ok, got it. Vaillancourt’s missing ownership doesn’t go to “standing,” but it is the “lack of a cause of action.” So now I just have to figure out why the court thought it needed clarification.
For those of you not up-to-the-minute on your Supreme Court false advertising jurisprudence, the Lexmark case says this:
In sum, the question this case presents is whether Static Control falls within the class of plaintiffs whom Congress has authorized to sue under § 1125(a). In other words, we ask whether Static Control has a cause of action under the statute. That question requires us to determine the meaning of the congressionally enacted provision creating a cause of action. In doing so, we apply traditional principles of statutory interpretation. We do not ask whether in our judgment Congress should have authorized Static Control’s suit, but whether Congress in fact did so. Just as a court cannot apply its independent policy judgment to recognize a cause of action that Congress has denied, it cannot limit a cause of action that Congress has created merely because “prudence” dictates.
The Vaillancourt appeal was fully briefed before the Lexmark decision, so I suppose the clarification was for the benefit of the parties, to explain why the opinion went a different direction than what either party had briefed. And now we all know.
Vaillancourt v. Becton Dickinson & Co., No. 2013-1408 (Fed. Cir. April 24, 2014).
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