Pre-AIA Statute Did Not Give Patent Owner in an Ex Parte Reexamination the Right to Bring an Action in District Court

by McDermott Will & Emery

In re Teles AG Informationstechnologien

Addressing whether a patent owner involved in a pre-America Invents Act (AIA) ex parte reexamination, could challenge an adverse reexamination decision in a district court action under 35 U.S.C. § 145, the U.S. Court of Appeals for the Federal Circuit affirmed a district court’s ruling that it lacked subject matter jurisdiction, finding that § 145 does not authorize a patent owner, in a pre-AIA ex parte reexamination, to bring suit in a district court challenging the Board’s action. In re Teles AG Informationstechnologien, Case No. 12-1297 (Fed. Cir., Apr. 4 2014) (Dyk, J.).

Teles owned a patent directed to a method for transmitting data in a telecommunications network and switch for implementing said method. In 2007, prior to the enactment of the AIA, a third party submitted a petition for ex parte reexamination. During reexamination, the examiner rejected the claims as being obvious over a combination of prior art references. Teles appealed the rejection to the Board of Patent Appeals and Interferences (the Board). The Board affirmed the examiner’s rejection. Teles sought review of the Board’s decision in the United States District Court for the District of Columbia pursuant to § 145. The district court dismissed the case for lack of subject matter jurisdiction, noting that Teles was a patent owner, not a patent applicant, and at the same time transferred the case to the Federal Circuit. Teles appealed.

As an initial matter, the Federal Circuit determined that the district court erred by dismissing the case and then transferring it. After a dismissal, there was nothing to transfer. Regardless, the Federal Circuit reviewed the case as if it had been transferred properly.

Turning to the legislative history of § 145, the Federal Circuit noted the statue was amended in 1999 to state that an applicant dissatisfied with the decision of the Board may, unless appeal has been taken to the Federal Circuit, have remedy by civil action against the Director in the United States District Court for the District Court of Columbia. The Court also noted that, at that same time, Congress (for the first time) amended § 134 to distinguish between “a patent applicant,” “a patent owner,” and “a third party.” Congress also amended § 141 to state “[a] patent owner in any reexamination proceeding dissatisfied with the final decision in an appeal to the Board… under section 134 may appeal the decision only to the United States Court of Appeals for the Federal Circuit.” The Federal Circuit concluded these amendments on their face precluded a patent owner from appealing the Board’s decision to the district court under § 145. Only the Federal Circuit is a proper venue for such an appeal.

The Federal Circuit rejected Teles’ argument that an action to district court by the patent owner was permitted because such an action was not an “appeal.” The Court further rejected the argument that an action in district court was available to a patent owner because another pre-AIA statute, § 306, stated that a patent owner had recourse under § 145 in district court, finding that the § 306 language was a drafting error. Finally, the Federal Circuit noted that during the legislative history of the AIA, Congress recognized the error in § 306 and corrected it in the implementation of the AIA.

The Federal Circuit then turned to the Board’s rejection of Teles’s claims as being obvious. The Court rejected Teles’ argument that the Board’s decision rests on an incorrect claim interpretation. In interpreting the claims, the Board construed the claim recitation “means to produce the control signal” under § 112 ¶ 6 and further agreed with the examiner that the function of producing the control signal requires monitoring factors related to demands of quality. The Board refused to limit those factors to only a bandwidth quality as suggested by Teles.

Teles argued that Board’s claim construction is incorrect in view of the inventive concept defined by the inventor (monitoring the bandwidth of a particular transfer). To this end, Teles argued that the Supreme Court’s decision in Mayo requires that the “inventive concept” of the application be used in the claim construction. The Federal Circuit disagreed, explaining that the Supreme Court in Mayo referred to “inventive concept” only in analyzing whether the claims are directed toward a patentable subject matter and not whether the claims are novel and nonobvious.


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© McDermott Will & Emery | Attorney Advertising

Written by:

McDermott Will & Emery

McDermott Will & Emery on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at:

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.