Abbott Diabetes Care, Inc. v. Patent of Dexcom, Inc.

Informative decision only: persuasive authority, not binding precedent. When an examiner in an inter partes reexamination determines that a proposed rejection based on a particular reference does not raise a substantial new question of patentability (SNQ), the Board lacks jurisdiction on appeal to review that determination, because under 35 U.S.C. § 312(c) the SNQ determination is "final and non-appealable." The requester's remedy is a timely petition, and a finding of an SNQ on other rejections does not permit the requester to pursue, on appeal, rejections that were not found to raise an SNQ. No prior Board precedent is named as being overruled. The decision follows and applies the expanded panel decision in Belkin International, Inc. et al v. Optimumpath, LLC, Appeal 2011-003697 (BPAI March 29, 2011), which the text describes as holding that an SNQ attaches to a particular rejection. For the third-party requester, a reexamination order on some grounds does not open the door to appellate review of other references the examiner found raised no SNQ, so the requester must petition promptly or lose those grounds. For the patent owner, the decision confirms it can resist a requester's cross-appeal on non-adopted, no-SNQ rejections on jurisdictional grounds. The Board relied on the statutory text of 35 U.S.C. § 312(c) and, for claim construction, on In re ICON Health and Fitness, Inc., 496 F.3d 1374 (Fed. Cir. 2007), and In re Suitco Surface, Inc., 603 F.3d 1255 (Fed. Cir. 2010). LEGAL TEST OR STANDARD: Under 35 U.S.C. § 312(c), the Director's determination in an inter partes reexamination on the existence of a substantial new question of patentability is "final and non-appealable." Following Belkin, an SNQ attaches to a particular rejection, so an SNQ finding on one rejection does not carry other proposed rejections along with it, even if they are directed to the same claims. The Board therefore lacks jurisdiction over appeals of no-SNQ determinations, which are petitionable matters. TRIGGERING FACTS: The Examiner, under delegated authority, found that proposed Rejection VI (Say) did not raise an SNQ because there was no evidence Say was considered in a different light than during prosecution. Reexamination had otherwise been ordered on other references. The Requester cross-appealed the non-adoption of that rejection, argued that once any SNQ is found the focus shifts to the proposed rejections, and did not identify any petition to the Director (FF 1). KEY QUOTE: "In essence, Belkin held that an SNQ attaches to a particular rejection." (Paper N/A, p. 12) PRIOR PRECEDENT AFFECTED: Follows Belkin International, Inc. et al v. Optimumpath, LLC, Appeal 2011-003697 (BPAI March 29, 2011) (expanded panel), which held that the Board lacked jurisdiction to decide an appeal on whether an SNQ exists. The decision also cites Clarification on the Procedure for Seeking Review of a Finding of a Substantial New Question of Patentability in Ex Parte Reexamination Proceedings, 75 Fed. Reg. 36,357, 36,358 (June 25, 2010). PRACTICE TIP: If an examiner refuses to adopt a proposed rejection for lack of an SNQ, file a timely petition to the Director instead of relying on a cross-appeal, and be ready to identify that petition in your appeal brief. Patent owners should raise the jurisdictional bar in the respondent brief.