The Federal Circuit reversed the decision of the PTAB holding that, in an inter partes reexamination proceeding, it lacked jurisdiction to hear Airbus’s cross-appeal of the PTO’s refusal to adopt obviousness rejections of newly-added claims on the grounds that the prior art did not raise any substantial new question of patentability.  The court held that the PTAB did not lack jurisdiction to hear Airbus’s appeal, because the question of a substantial new question of patentability only applies during the initial decision of whether to accept or deny the request for reexamination; it does not apply to newly added claims.  Further, Section 314(a) of the patent act limits the requester to citing additional prior art “which is necessary to rebut a response of the patent owner.”

Airbus S.A.S. v. Firepass Corporation, Case No. 2014-1808 (July 17, 2015); Opinion by: Lourie, joined by Dyk and Moore; Appealed From: District Court for the Eastern District of Texas, Davis, J. Read the full opinion here.

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