Belkin Int’l, Inc. v. OptimumPath, LLC

Informative decision only: persuasive authority, not binding precedent. When the Director (or, on petition under 37 C.F.R. § 1.927, the Director's decision) determines that no substantial new question of patentability is raised for particular claims or references in an inter partes reexamination request, the Board lacks jurisdiction to hear a third-party requester's appeal of that determination. Under 35 U.S.C. § 312(c) the determination is "final and non-appealable," no reexamination is ordered under § 313, and so there is no "final decision favorable to the patentability" of those claims that can be appealed under 35 U.S.C. § 315(b) or 37 C.F.R. § 41.61. No prior precedent directly addressed this issue, as far as the decision's text shows. For requesters, the only review of a denied substantial new question is a timely petition to the Director under 37 C.F.R. § 1.927, and arguments about it cannot be raised on appeal to the Board. Here the petition was denied and the Board refused to decide the question, so reference-based challenges rejected at the order stage were lost. For patent owners, the decision means that claims for which no substantial new question was found stay outside the reexamination and outside Board review, and a requester's appeal brief that argues those references can be disregarded. The decision rests on the statutes and regulations (35 U.S.C. §§ 312, 313, 314, 315(b); 37 C.F.R. §§ 1.927, 41.61), and the text cites no Federal Circuit, CCPA or Supreme Court authority for the jurisdiction point. LEGAL TEST OR STANDARD: The Board asked whether it has jurisdiction to consider whether the examiner erred in finding no substantial new question of patentability. Under 35 U.S.C. § 312(c) the Director's determination is final and non-appealable. Under § 313 reexamination is ordered only if a substantial new question is found. Under § 315(b) and 37 C.F.R. § 41.61 a requester may appeal only a final decision favorable to the patentability of claims. If no reexamination occurred, there can be no such final decision, favorable or unfavorable. TRIGGERING FACTS: The requester proposed nine substantial new questions. The examiner found a substantial new question only as to Peirce for claims 1-3 and 8-10, and found none as to the Transistor Article, Howto Guide or Redlich. The requester's petition under 37 C.F.R. § 1.927 to the Director was timely filed and denied. The requester then appealed that denial to the Board after the examiner confirmed claims 1-3 and 8-10 over Peirce. The record showed no Director order withdrawing the determination or ordering reexamination on those references. KEY QUOTE: "Thus, we do not have jurisdiction to decide an appeal on the non-appealable issue of whether a substantial new question of patentability exists." (Appeal 2011-003697, p. 11) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. PRACTICE TIP: As a requester, build the substantial new question showing in the request itself and, if the examiner denies it, file a timely petition to the Director under 37 C.F.R. § 1.927. Do not spend appeal-brief pages arguing the existence of a substantial new question, because the Board will not reach it, and a petition denial ends review.