# United States **Court of Appeals**  **for the Federal Circuit**

______________________ AIRBUS S.A.S., Appellant

v.

FIREPASS CORPORATION , Appellee

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2014

- 1808

______________________ Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. 95/001,555.

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Decided: July 17, 2015

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M ATTHEW B ERKOWITZ , Kenyon & Kenyon LLP, New York, NY, argued for appellant. Also represented by W ALTER E. H ANLEY , J R

. , A LOYSIUS A NTONY P FEFFER

.

E RIC S HUMSKY , Orrick, Herrington & Sutcliffe LLP, Washington, DC, argued for appellee. Also represented by A NDREW S. O NG , Menlo Park, CA ; R OBERT M. I SACKSON , New York, NY.

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Before L OURIE , D YK , and M OORE , Circuit Judges.AIRBUS S

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L OURIE , Circuit Judge

. Airbus S.A.S. (“ Airbus ”) appeals from the decision of the United States Patent and Trademark Office (“PTO ”) Patent T rial 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

. B ACKGROUND 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

c la ims of the ’752 patent. In February 2011 , Airbus filed a request for inter partes reexamination of the ’752 p atent. In its request, Airbus proposed that each of original claims 1, 2, 4, 7, and 8 w as 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

* The Leahy

- Smith America Invents Act amended the inter partes reexamination provisions of the Patent Act. See Leahy

- Smith America Invents Act, Pub. L. No. 112

- 29, § 6, 125 Stat. 284, 299

– 305 (2011) (“AIA”). As those amendments do not apply here because the request for inter partes reexamination in this case was filed before the date of enactment, September 16, 2 011, i d. , we e xpress no opinion on the applicability of the AIA provisions to the current case.AIRBUS S

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Co., “Vulnerability Methodology and Protective Measures for Aircraft Fire and Explosion Hazards,” Final Report AFWALT R- 85

- 2060 (1986) (“AFWAL 2060”); and (2) T.C. Knigh t 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 K otliar 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 mean time stayed its litigation pending resolution of Airbus’s reexamination request.

Durin g reexamination, Firepass added independent clai m 91 and dependent claims 9 2– 94 . Claim 91 was based on original claim 1, and “includes both the limit ations set forth in [c]laim 1 . . . , as well as additional narrowing limitations.” Appellee’s Br. 11. In response to the new claims, Airbus proposed th e following obviou sness 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 ordin ary skill in the art. The Exa miner, however, found that the proposed rejections based on AFWAL 2060 and Knight did not present a substantial new question of patentability. Nevertheless, t he Exami ner 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 t he Board then dismissed Airbus’s cross

- appeal relating to the same claims, fin ding that “the statutory authority for third

- party requester appeals is

. . . expres s-AIRBUS S

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ly 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 su bstantial 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)). Accor dingly, 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 rev iew 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 su bsequent, 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 juri sdiction pursuant to 28 U.S.C. § 1295(a)(4)(A).

D ISCUSSIO N We review the Board’s legal determination s, 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 review de novo

. In re Kathawala , 9 F.3d 942, 945 (Fed. Cir. 1993).
Inter partes reexamination is a two

- step process. First, “ after the filing of a request for inter partes reexa m-AIRBUS S

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ination under section 311, the Director shall determine whether a substantial new question of patentability affecting any claim of the patent concerned is raised by the request .” 35 U.S.C. § 312( a ) (2006). After the Dire ctor has determined that there is a substantial new que stion of patentability affecting a claim, the Director orders

“ inter partes reexamination of the patent for resolution of the question.” Id. § 31 3.

After institution , § 314(a) provides that “reexamin ation shall be conducted according to the procedures esta blished for initial examination under the provisions of sections 132 and 133.” Id. § 31 4(a). T he patentee is “permitted to propose any amendment to the patent and a new claim or claims, except that no proposed amended or new claim enlarging the scope of the claims of the patent shall be permitted.” Id. In a ddition, a fter institution , a third

- party requester is limited to citing certain additio nal prior art : (1) which is necessary to rebut a finding of fact by the examiner; (2) which is necessary to rebut a response of the p atent owner ; or (3) which for the first time became known or available to the third party requester after the fi ling of the request for inter partes reexamination proceeding. Prior art submitted under paragraph (a)(3) of this section must be accompanied by a statement as to when the prior art first became known or available to the third party requester and must include a discussion of the pertinency of each reference to the patentability of at least one claim. 37 C.F.R. § 1.948(a) (emphasis added). Airbus argues that the Board erred in dismissing the

cross

- appeal relating to the Examiner’s refusal to considerAIRBUS S

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proposed rejections to new claims because of a deemed lack of a substantial new question of patentability . A ccording to Airbus, Knight and AFWAL 2060 were properly cited under § 1. 948(a)(2) , and the determination of a substantial new question of patenta bility is irrelevant to new claims proposed by a patentee during the course of

an inter partes reexamination. Airbus contends that the determination of a substantial new question of patentabi lity is only applicable to arguments made by a requester in

an inter partes reexamination request prior to institution

. Airbus also argues that, in the alternative, an examiner’s decision that a proposed rejection raises no substantial new questi on of patentability is appealable because it is a decision favorable to patentability.

Fi rep ass responds that the Board correctly dismissed Airbus’s cross

- appeal because Airbus may not appeal from an examiner’s decision that a proposed rejection raises no substantial new question of patentability

. Firepass
asserts that § 312(a) obligates the Director to determine whether a substantial new question of patentability has been raised with respect to “any claim of the patent” that a third

- party requester asks t he PTO to review. Firepass argues that the relevant statutory framework

, PTO regulations , and the Manu a l of Patent Examining Proc edure (“MPEP”) do not distinguish bet ween original and added claims. Therefore, Firepass contends that the substantial new question of patentability test was prope rly applied to new claims 91

– 94.

W e agree with Firepass that a party may not appeal from an e xaminer’s decision that a proposed rejection fails to raise a substantial new question o f patentability on the ground that such a decision is one favorable to patentabi lity. Belkin , 696 F.3d at 1383. Such a decision is not a patentability decision, favorable or otherwise; it is a substantial new question decision. Thus, that argument of Airbus’s fails.AIRBUS S

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However, the provision requiring a determination of a substantial new question of patentability was not appl icable to the case once the Director already had ordered reexamination on the ground that other prior art raised a substantial new que stion of patentability

. We therefore agree with Airbus that the Board erred in dismissing the

cross

- appeal for lack of jurisdiction because the Examiner incorrectly refused to consider proposed rejections to

new ly

- added claims after reexamination had been inst ituted.
Once reexamination has been instituted, it is only 37 C.F.R. § 1.948(a)(2) that limits the prior art that can be raised by the third

- party requester in proposed rejections to newly

- added or amended claims

. Although § 312( a ) requires the Director to “ determine whether a substantial new question of patentability affecting any claim of the patent concerned is raised by the request ,” the stat ute notably does not contain the same requirement for pr oposed rejections to claims added or amended a fter instit ution of the reexamination. 35 U.S.C. § 312(a) (2006). Section 312 is expressly limited to the pre

- institution request from the third party. Id.

Section 314 governs the conduct of inter partes ree xamination proceedings, and it provides that “reexamin ation shall be conducted according to the procedures established for initial examination under the provision s of sections 132 and 133 .” Id. § 314(a)

. Sections 132 and 133, in turn, discuss the initial prosecution of an application. See id. § 132 ( titled “Notice of rejection; reexamination”); id. § 133 ( titled “Time for prosecuting application”). N one of those sections require s an examiner to evaluate pr oposed rejections to new claims added during reexamin ation for a substantial new question of patentability ; instead , the statute only directs the examiner to follow “the procedures established for initial examination.” Id. § 314(a)

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In addition to the framework established by § 314 for the conduct of reexamination proceedings

, PTO reg ul ations explicitly restrict the prior art that can be raised by the third

- party requester once the Director has order ed inter partes reexamination. 37 C.F.R. § 1.948(a)(2) limits a third

- party requester to use of additional prior art that

, inter alia

, “is necessary to rebut a respon se of the patent owner.” The language, “is necessary to rebut,” provides a gate keeping function to control the additional prior art that a third

- party requester may bring into the reexam ination. Section 1.948(a)(2) thus limits the third

- party’s ability to cite additional prior art against a newly

- added or amended claim with respect to limitations for which the prior art ha s already been considered either during original prosecution or in the request for reexamination.

“ The MPEP [is] commonly relied upon as a guide to patent attorneys and patent examiners on procedural
matters

. . . .” Litton Sys., Inc. v. Whirlpool Corp. , 728 F.2 d 1423 , 1439 (Fed. Cir. 1984). Although the MPEP does not have the force of law, it is enti tled to judicial notice “ so far as it is an official interpretation of statutes or regulations with which it is not in conflict .” Id. Here, the MPEP is consistent with the statutory scheme and § 1.948(a)(2). MPEP § 2666.05, titled “Third Party Co mments After Patent Owner Response,” pertains to § 1.948(a)(2) and the limitations on submission of prior art by the third

- party requester after the order for inter partes reexamination. According to § 2666.05 , “ any such

new proposed rejection stands on the same footing as a proposed rejection presented with the request for reexa mina tion.” MPEP § 2666.05 (2008). Section 26 66.05 co ntinues

, citing MPEP § 2617 for “the required discussion of the pertinency of each reference ,” and directing that “[a] n explanation pursuant to the requirements of 35 U.S.C. [§] 311 of how the art applies is no less important at this stage of the prosecution , tha n it is when filing the r equest .” Id.AIRBUS S

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Section 2617 , in turn, provides guidelines for apply ing prior art in the request for inter partes reexamination, and states that the request “must ‘set forth the pertinency and manner of apply ing cited prior art to ever y claim for which reexamination is requested.’” Id. § 2617 ( quoting 35 U.S.C. § 311(b)(2) (2006) )

. Citing PTO regulations, § 2617 requires a statement pointing out each substantial

new ques tion of patentability , but th at requirement only extends to the request for reexamination. Id. (citing 37 C.F.R. § 1.915(b)(3)). Consequently

, neither § 2617 nor § 2666.05 explicitly or implicitly directs an examiner to determine whether a proposed rejection presents a su bstantial new question of patentability with respect to a new or amended claim. Section 2617 only directs the third

- party requester to present an explanation of how the proposed rejections apply to each of the claims , which

, in the case of a request, entails a discussion of a substa ntial new question of patentability

. In this case, Airbus’s proposed citation of prior art is well within § 1.948(a)’s permission to cite prior art “which is necessary to rebut a response of the patent owner .” That response that Airbus is entitled to rebut was the addition of new claims 91

– 94

. Whether it rebuts those cla ims is a question for the Examiner on remand.
Firepass’s additional reliance on Belkin is misplaced. In Belkin we considered whether the Board has jurisdi ction to decide if a substantial new question of patentabi lity exists with respect to a prior art ref erence before institution of inter partes reexamination. Belkin , 696 F.3d at 1382. We concluded that the “Director’s determ ination that an issue does not raise a substantial new question of patentability is not a decision favorable to patentability.” Id

. at 1383. We explicitly declined, ho wever, to “reach the issue of what prior art references the PTO may or may not consider during reexamination in response to an amended or substituted claim.” Id. at 1384 n.2. Thus, Belkin does not inform our understanding ofAIRBUS S

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the availability of prior art in a proposed rejection after reexamination has been instituted.

T he Board erred here because it premised its dismi ssal of Airbus’s cross

- appeal on the Examiner’s de cision not to conside r Airbus’s proposed rejections because of a lack of a substantial new question of patentability. But, o nce the Director ordered inter partes reexamination it was § 1.948(a)

, not a determination of a substantial new question of patentability

, that governed the limitations on Airbus’s submission of prior art

. Thus

, the Examiner erred in evaluating Knight and AFWAL 2060 for a su bstantial new question of patentability , when his evalu ation should have been conducted under § 1.948(a)(2)

. We have considered Firepass ’s remaining arguments and find them unpersuasive.

C ONCLUSION

B ecause the Board erred in dismissing Airbus’s cross

appeal for lack of jurisdiction, we vacate and remand for further proceedings consistent with this opinion.

VACATED AND REMANDED

C OSTS
Costs to Airbus.