Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. 95/001,555.
MATTHEW BERKOWITZ, Kenyon & Kenyon LLP, New York, NY, argued for appellant. Also represented by WALTER E. HANLEY, JR., ALOYSIUS ANTONY PFEFFER.
ERIC SHUMSKY, Orrick, Herrington & Sutcliffe LLP, Washington, DC, argued for appellee. Also represented by ANDREW S. ONG, Menlo Park, CA; ROBERT M. ISACKSON, New York, NY.
Before LOURIE, DYK, and MOORE, Circuit Judges.
Lourie, Circuit Judge.
Airbus S.A.S. (" Airbus" ) appeals from the decision of the United States Patent and Trademark Office (" PTO" ) Patent Trial and Appeal Board (" Board" ) in an inter partes reexamination dismissing Airbus's cross-appeal for lack of jurisdiction.[*] See Airbus S.A.S. v. Firepass Corp., No. 95/001,555, 2013 WL 5866589 (P.T.A.B. Oct. 29, 2013) (" Board Decision " ), reh'g denied, 2014 WL 2121080 (P.T.A.B. May 19, 2014) (" Rehearing Decision " ). Because the Board erred in dismissing the appeal, we vacate its decision and remand.
Firepass Corporation (" Firepass" ) owns U.S. Patent 6,418,752 (the " '752 patent" ), which is directed to using hypoxic compositions for preventing and extinguishing fires. In October 2009, Firepass brought suit against Airbus in the District Court for the Eastern District of New York alleging infringement of, inter alia, several claims of the '752 patent. In February 2011, Airbus filed a request for inter partes reexamination of the '752 patent. In its request, Airbus proposed that each of original claims 1, 2, 4, 7, and 8 was anticipated under 35 U.S.C. § 102 by U.S. Patent 5,799,652 (" Kotliar" ). J.A. 171. Airbus also proposed that claims 1, 2, 4, and 7 were anticipated under § 102 by (1) Boeing Military Airplane Co., " Vulnerability Methodology and Protective Measures for Aircraft Fire and Explosion Hazards," Final Report AFWALTR-85-2060 (1986) (" AFWAL 2060" ); and (2) T.C. Knight et al., " The AH-64A Nitrogen Inerting System," AIAA-84-2480 (1991) (" Knight" ). J.A. 174, 178. The PTO granted Airbus's request in part, finding that Kotliar presented a substantial new question of patentability, but also found that Knight and AFWAL 2060 did not present a substantial new question of patentability. In July 2011, the district court in the meantime stayed its litigation pending resolution of Airbus's reexamination request.
During reexamination, Firepass added independent claim 91 and dependent claims 92-94. Claim 91 was based on original claim 1, and " includes both the limitations set forth in [c]laim 1 . .., as well as additional narrowing limitations." Appellee's Br. 11. In response to the new claims, Airbus proposed the following obviousness rejections under 35 U.S.C. § 103: (1) claims 91-93 over Kotliar in view of AFWAL 2060; (2) claim 94 over Kotliar in view of AFWAL 2060 and Knight; and (3) claim 94 over Kotliar in view of AFWAL 2060 and the knowledge of one of ordinary skill in the art. The Examiner, however, found that the proposed rejections based on AFWAL 2060 and Knight did not present a substantial new question of patentability. Nevertheless, the Examiner ultimately rejected claims 91-94 under 35 U.S.C. § 112, ¶ 1 for lack of written description.
Firepass appealed from the rejection of claims 91-94 under § 112, ¶ 1, and Airbus cross-appealed from the Examiner's refusal to adopt the proposed obviousness rejections of claims 91-94. Board Decision at *1. The Board first reversed the Examiner's rejection of claims 91-94 under § 112, ¶ 1, finding that the claims were supported by an adequate written description. Id. at *11. But the Board then dismissed Airbus's cross-appeal relating to the same claims, finding that " the statutory authority for third-party requester appeals is . . . expressly limited to the review of examiner final decisions that are 'favorable to the patentability' of a claim." Id. at *12 (quoting 35 U.S.C. § § 134(c), 315(b) (2002)). The Board concluded that the " determination of a '[l]ack of a substantial new question of patentability is not a favorable decision on patentability.'" Id. (quoting Belkin Int'l, Inc. v. Kappos, 696 F.3d 1379, 1383 (Fed. Cir. 2012)). Accordingly, the Board dismissed Airbus's cross-appeal for lack of jurisdiction. Id.
Airbus requested rehearing, but the Board denied the request. Rehearing Decision at *1. The Board wrote that § § 134(c) and 315(b) and 37 C.F.R. § 41.61(a)(2) only provide for the Board to review a decision favorable to the patentability of any claim, including new claims. Id. at *2. The Board again concluded that the Examiner's finding of no substantial new question of patentability was not a decision favorable to patentability. Id. (citing Belkin, 696 F.3d at 1383). The Board also confirmed that it did not dismiss the cross-appeal because the Examiner had found no substantial new question of patentability with respect to the original claims, but it did so based on the Examiner's subsequent, independent determination that Airbus's proposed rejections of new claims 91-94 raised no substantial new question of patentability. Id.
Airbus timely appealed to this court. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A).
We review the Board's legal determinations, including whether the Board possessed jurisdiction in a case before it, de novo. In re Gartside, 203 F.3d 1305, 1315 (Fed. Cir. 2000). Statutory interpretation is a question of law that we likewise ...