Michael J. Vaillancourt v. Becton Dickinson & Company


Docket No. 2013-1408

RADER, LINN, TARANTO
April 24, 2014

Brief Summary: The appeal was dismissed because the Appellant was not the patent owner. The patent was assigned to a one-person corporation during reexamination and decision was appealed in the name of the individual / previous owner which is not allowed under § 141 (providing the right to “[a] patent owner…in an inter partes reexamination proceeding” to appeal a PTAB decision to the FC).

Summary: Appellant Mr. Vaillancourt appealed PTAB decision affirming all 37 claims of US 6,669,221 appealed from an inter partes reexamination. However, during the reexamination proceeding, on April 24, 2012, he assigned the patent (“‘including full and exclusive rights to sue upon and otherwise enforce’ the patent”) to VLV Associates, Inc. (of which he is the sole owner). On April 27, 2012, VLV filed suit in its own name without joining Mr. Vaillancourt against Beckton Dickinson (BD). On June 29, 2012, the PTAB affirmed all of the rejections and Mr. Vaillancourt requested a rehearing (in his own name) that was denied. Mr. Vaillancourt appealed the decision, “identifying himself in the notice of appeal as both the patent owner and appellant”, and BD moved to dismiss it for lack of jurisdiction. That motion was denied and BD was told to make its jurisdictional arguments in a brief, which it did. In this opinion, the FC panel determined that Mr. Vaillancourt could “not bring his case under § 141 because he is no longer the patent owner” (§ 141 providing the right to “[a] patent owner…in an inter partes reexamination proceeding” to appeal a PTAB decision to the FC). Mr. Vaillancourt argued that he retained rights to “continue with all related proceedings including further appeals” for VLV (e.g., suggesting “§ 141 allows a patent owner to delegate to a third party its authority to bring an appeal”). The FC panel concluded that “the unambiguous language of § 141” only allows the actual patent owner to bring an appeal. As Mr. Vaillancourt is not the patent owner, the appeal was dismissed. 

This entry was posted in Appeal, Assignment / Ownership. Bookmark the permalink.

Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out / Change )

Twitter picture

You are commenting using your Twitter account. Log Out / Change )

Facebook photo

You are commenting using your Facebook account. Log Out / Change )

Google+ photo

You are commenting using your Google+ account. Log Out / Change )

Connecting to %s