Vaillancourt v. Becton Dickinson & Company , 749 F.3d 1368 ( 2014 )

United States Court of Appeals
for the Federal Circuit
______________________
MICHAEL J. VAILLANCOURT,
Appellant,
v.
BECTON DICKINSON & COMPANY,
Appellee.
______________________
2013-1408
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Reexamination
No. 95/000,565.
______________________
Decided: April 24, 2014
______________________
DENNIS F. GLEASON, Jardim, Meisner & Susser, P.C.,
of Florham Park, New Jersey, argued for appellant. With
him on the brief was FRANCIS J. HAND, Carella, Byrne,
Cecchi, Olstein, Brody & Agnello, P.C., of Roseland, New
Jersey.
AMY K. WIGMORE, Wilmer Cutler Pickering Hale and
Dorr, LLP, of Washington, DC, argued for appellee. With
her on the brief were WILLIAM MCELWAIN, DAVID
CAVANAUGH, and HEATHER PETRUZZI.
______________________
2 VAILLANCOURT v. BECTON DICKINSON & COMPANY
Before RADER, Chief Judge, LINN and TARANTO, Circuit
Judges.
RADER, Chief Judge.
The Patent Trial and Appeal Board affirmed the re-
jection of all thirty-seven claims of U.S. Patent No.
6,699,221 on appeal from an inter partes reexamination.
Appellant Michael J. Vaillancourt previously owned the
’221 patent, but while the reexamination proceedings
were still pending, he assigned all right, title, and interest
in the patent to VLV Associates, Inc. Vaillancourt, and
not VLV, now appeals the Board decision to this court.
The only cause of action (right to sue) in this court that
Vaillancourt invokes is 35 U.S.C. § 141, but the unambig-
uous language of that provision limits it to the patent
owner. Though the parties in this case have argued about
“standing,” the Supreme Court recently clarified that
some issues often discussed in “standing” terms are better
viewed as interpretations of a statutory cause of action.
See Lexmark Int'l, Inc. v. Static Control Components, Inc.,
134 S. Ct. 1377, 1386-88 (2014). Because the issue here
focuses on § 141, this opinion directly addresses the scope
of that cause of action. As Vaillancourt is not the owner
of the ’221 patent, he cannot bring this appeal before the
court, for lack of a cause of action. Accordingly, this court
dismisses the appeal.
I.
Vaillancourt obtained ownership of the ’221 patent
from his mother through an assignment recorded with the
U.S. Patent and Trademark Office on April 15, 2011. J.A.
1026. Vaillancourt represents that the assignment took
effect November 1, 2005. Id. For the purposes of this
appeal, the court assumes the assignment was proper but
does not make any finding about the timing of the trans-
fer.
VAILLANCOURT v. BECTON DICKINSON & COMPANY 3
On August 12, 2010, Appellee Becton Dickinson &
Company (BD) requested an inter partes reexamination of
the ’221 patent. Id. at 2, 357. During the reexamination
proceedings, Vaillancourt added claims 21 through 37 to
the patent’s original twenty claims. Id. at 443.
The patent examiner rejected all thirty-seven claims
of the ’221 patent. Id. at 510–55. Vaillancourt appealed
these rejections to the Board on April 25, 2011. Id. at
680.
However, on April 24, 2012, while the reexamination
appeal was still pending, Vaillancourt assigned to VLV
“the entire right, title and interest in and to” the ’221
patent, “including full and exclusive rights to sue upon
and otherwise enforce” the patent. Id. at 1029.
Then on April 27, 2012, VLV initiated suit against BD
for infringement of the ’221 patent in the U.S. District
Court for the District of New Jersey. VLV Assocs. v.
Becton Dickinson & Co., No. 12-2476 (D.N.J. 2012). VLV
sued in its own name and did not join Vaillancourt to the
suit.
On June 29, 2012, the Board affirmed all of the exam-
iner’s rejections. J.A. 766. Despite no longer being the
owner of the ’221 patent, Vaillancourt requested a rehear-
ing with the Board in his own name. Id. at 837. The
Board denied Vaillancourt’s request to alter the prior
affirmance of the examiner’s rejections. Id. at 869.
Vaillancourt appealed to this court, identifying him-
self in the notice of appeal as both the patent owner and
appellant. Id. at 871. Shortly thereafter, BD moved to
dismiss the appeal for lack of jurisdiction. Id. at 971. On
October 30, 2013, this court denied BD’s motion without
prejudice, noting that BD should make its jurisdictional
arguments in its brief before the merits panel. Id. at
1044.
4 VAILLANCOURT v. BECTON DICKINSON & COMPANY
BD renewed its jurisdictional argument in its respon-
sive brief. After consideration of the parties’ arguments,
this court determines that Vaillancourt may not bring
this case under § 141 because he is no longer the patent
owner.
II.
Statutory interpretation focuses on the language of
the statute itself. See Wyeth v. Kappos, 591 F.3d 1364,
1369 (Fed. Cir. 2010) (quoting United States v. Hohri, 482
U.S. 64, 68 (1987)). A statute’s unambiguous language
“must ordinarily be regarded as conclusive.” Id. (quoting
Consumer Prod. Safety Comm’n v. GTE Sylvania, Inc.,
447 U.S. 102, 108 (1980)) (internal quotation marks
omitted).
The applicable version of § 141 states, in pertinent
part: “[a] patent owner . . . in an inter partes reexamina-
tion proceeding . . . dissatisfied with the final decision in
an appeal to the Board. . .may appeal the decision only to
the United States Court of Appeals for the Federal Cir-
cuit.”
The unambiguous language of § 141 provides that a
patent owner alone can appeal a final decision in an inter
partes reexamination to this court. Thus, the statute
itself sets the requirements for bringing an appeal here.
The statute requires the patent owner to initiate any
appeal.
III.
Vaillancourt concedes, as he must, that he is not the
owner of the ’221 patent and that VLV, the actual owner,
does not appear before this court in the appeal. Appellant
Reply Br. 4; Oral Arg. at 2:52–3:40, available at
http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20
13-1408.mp3. He therefore cannot bring this case under
§ 141.
VAILLANCOURT v. BECTON DICKINSON & COMPANY 5
Nevertheless, Vaillancourt claims in an affidavit that
despite his assignment of the entire right, title, and
interest in the ’221 patent to VLV, he was “authorized to
continue with all related proceedings including further
appeals” in connection with the reexamination. J.A. 1027.
With this purported retention of rights, and because he is
apparently the sole owner of VLV, Vaillancourt asserts
that he is authorized to proceed with this appeal on behalf
of VLV. Appellant Reply Br. 8.
In essence, Vaillancourt suggests that § 141 allows a
patent owner to delegate to a third party its authority to
bring an appeal to this court. Appellant Reply Br. 4.
Beyond the assertion of this concept, Vaillancourt offers
no further support for his interpretation of the statute.
Id. Instead, he states that while the unambiguous lan-
guage of § 141 does not explicitly provide for such delega-
tion, the section does not explicitly bar it either. Id. This
assertion carries no weight in the face of a statutory
requirement. The statute also does not forbid a patent
owner’s travel agent from filing an appeal, but that hardly
justifies interpreting the statute to extend to such unmen-
tioned categories. Section 141 grants a procedural right
to the patent owner to appeal decisions from the PTAB.
This court sees no reason—and Vaillancourt provides
none—to extend that procedural right beyond what is
clearly set forth in § 141.
VLV is indisputably the owner of the ’221 patent, and
held all right, title, and interest to the patent when Vail-
lancourt filed the notice of appeal with this court. Even if
all of Vaillancourt’s assertions are taken as true, it never-
theless remains that VLV did not bring this appeal and
has made no appearance before the court.
Under the unambiguous language of § 141, Vaillan-
court, the sole appellant here, has no cause of action to
bring this appeal. Therefore, this court dismisses the
appeal.
6 VAILLANCOURT v. BECTON DICKINSON & COMPANY
DISMISSED