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This case involves an appeal to the Federal Circuit of the PTO’s decision in an inter partes reexamination.  The third party requesting the inter partes reexamination was Aurora.  During the pendency of the reexamination, Agilent purchased substantially all of the assets of Aurora and agreed to be bound by the outcome of the pending reexamination.  After the purchase by Agilent, however, Aurora remained an ongoing company and Aurora filed a response in the reexamination. 

The Federal Circuit dismissed Agilent’s appeal, holding that Agilent lacks a cause of action to bring the appeal, because Aurora, not Agilent, is the third party requestor and, under 35 U.S.C. § 141, only the patent owner or the third-party requestor can bring an appeal.  The court further rejected Agilent’s arguments that it was the successor-in-interest to Aurora, because it failed to prove that it in fact was the successor-in-interest, particularly because Aurora remaining an ongoing entity after the transaction and Aurora submitted comments to the PTO after the Agilent transaction.  Further, Agilent only submitted a redacted copy of the transfer agreement, which prevented the court from verifying Agilent’s claims.  Because Agilent failed to demonstrate that it is Aurora’s successor-in-interest, the court did not need to reach whether a successor-in-interest can qualify as a third-party requestor for the purposes of appealing the decision in an inter partes reexamination. 

Agilent Technologies, Inc. v. Waters Technologies Corporation, Case No. 2015-1280 (January 29, 2016); Opinion by: O’Malley, joined by Moore and Taranto; Appealed From: United States Patent Trial and Appeal Board.  Read the full opinion here.

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