Automated Merchandising Systems, Inc. v. Michelle K. Lee (USPTO)

Docket No. 2014-1728

April 10, 2015

Brief Summary: Consent judgment found not to require PTO to terminate reexamination of litigated patents; not appealable as PTO decision not to terminate is not a “final decision” under the APA (“[i]f AMS receives an adverse ruling from the PTO…[it] will at that time have an ‘adequate remdedy in a court’”).

Summary: AMS petitioned USPTO to terminate four pending inter partes reexaminations of its patents that were the subject of an infringement suit between AMS and Crane Co. AMS and Crane entered into a consent judgment and AMS argued to the PTO that it must stop the reexaminations since that judgment was a “final decision”; that argument was denied. The DC held that Administrative Procedure Act (APA) § 317(b) did not require the PTO to terminate the proceedings. The FC concluded AMS’s challenge cannot proceed, not under § 317(b) but because “the refusal is not a ‘final agency action’ under the APA, 5 U.S.C. § 704.” The FC found “[t]he PTO’s refusal [to be] anything but the ‘consumation of the [PTO’s] decisionmaking process’; it was, instead, ‘interlocutory’ in nature” (“as far from final, as the run-of-the-mill district-court denial of a motion to dismiss…The PTO’s refusal to terminate simply permits each reexamination to reach such a final disposition-nothing more.”) The opinion also explained “AMS has lost no patent rights from the refusal to terminate…[a]ny loss of patent rights…will not occur until completion of the relevant reexamination”, and “[i]f AMS receives an adverse ruling from the PTO…[it] will at that time have an ‘adequate remdedy in a court’” (citing Copper, FC 2008 (not precedential as it did not discuss the APA)). It also noted that mandamus relief was unavailable since “AMS has an adequate remedy and its only present harm is the burden of participating in the proceedings at issue”, as is relief under the Declaratory Judgment Act which “should not be used to circumvent the usual progression of administrative determination and judicial review” (Abbott, US 1967; Lane, 8th Cir., 1999). Thus, the FC concluded the DC did not err in granting SJ in favor of the PTO.

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