MICHAEL J. VAILLANCOURT, Appellant,
BECTON DICKINSON & COMPANY, Appellee
Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Reexamination No. 95/000,565.
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.
Before RADER, Chief Judge, LINN and TARANTO, Circuit Judges.
Rader, Chief Judge .
The Patent Trial and Appeal Board affirmed the rejection 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 unambiguous 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, 188 L.Ed.2d 392 (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.
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 transfer.
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 ...