ED Va.: Continuations Count as "Original Applications" For the Purposes of the AIPA

Cooper Technologies Co. v. John W. Dudas (1:07cv853) (November 30, 2007)

Cooper sued for infringement on two patents, where one patent (filed in 2003) was the last of a series of continuations dating back to 1994. The defendant filed an inter-partes reexamination request with the PTO, seeking to invalidate the continuation patent.

Cooper argued that, under the American Inventor's Protection Act (AIPA), inter-partes reexamination was not appropriate for the continuation patent, because the "original application" (i.e., the first application from which the continuation stemmed from) was filed prior to the enactment of the AIPA (November 29, 1999). Neither the AIPA nor the legislative history defined the phrase "issues from an original application."

However, the PTO defined the term in an OG publication, and in the MPEP, stating that an "original application" included, among other things, first-filed application and continuation applications. In MPEP 201.04(a), the term is defined as "an application which is not a reissue application."

Cooper sought review of the PTO's definition under the APA, arguing that the PTO's interpretation of the AIPA was arbitrary, capricious, and contrary to law and that its implementation of the AIPA constituted improper rulemaking. Accordingly, Cooper argued that the granting of the inter-partes reexamination was erroneous.

The district court disagreed with Cooper for two reasons. First, the court noted that the original application was abandoned, thus no patent could have "issued from" that application. Also, previous holdings from the CAFC (Bristol-Myers Squibb Co. v. Pharmachemie B.V. 361 F.3d 1343 (Fed. Cir. 2004)) made clear that a continuation application begins "a new proceeding in which all the original claims . . . [are] once again presented for examination."

Second, the court noted that the 5th edition of the MPEP (1983) defined an "original application" as "an application which is not a reissue application. An original application may be a first filing or a continuing application." According to the court:

Given this consistent usage, the Court must presume that the Patent Office's definition in the MPEP has entered the modern parlance of patent law. See Patlex Corp. v. Mossinghoff, 758 F.2d 594, 606 (Fed. Cir. 1985) (noting that the detailed rules and regulations in the MPEP "describe procedures on which the public can rely"). It must also presume that Congress was aware of this definition and that it adopted it in the AIPA. See 2A Sutherland Statutory Construction § 47.29 ("In the absence of legislative intent to the contrary, or other overriding evidence of a different meaning, technical terms or terms of art used in a statute are presumed to have their technical meaning.")

Accordingly, the Court finds that the Patent Office's interpretation of "original application" in the AIPA is fully consistent with the term's established meaning in patent law.

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