Case 1:22-cv-00622-RDA-JFA Document 18 Filed 08/05/22 Page 1 of 24 PageID# 400
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`Alexandria Division
`
`Plaintiff,
`
`v.
`
`Defendant.
`
`
`Case No. 1:22-cv-622 (RDA/TCB)
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`GESTURE TECHNOLOGY PARTNERS, LLC,
`
`
`
`
`
`KATHERINE K. VIDAL, Under Secretary of
`Commerce for Intellectual Property and Director of
`the United States Patent and Trademark Office,
`
`
`
`
`MEMORANDUM OF LAW IN SUPPORT OF DEFENDANT’S MOTION TO DISMISS
`
`Defendant, Katherine K. Vidal, Under Secretary of Commerce for Intellectual Property and
`
`
`
`
`Director of the United States Patent and Trademark Office, by and through her undersigned counsel,
`
`respectfully submits this memorandum of law in support of her motion to dismiss the Complaint
`
`pursuant to Federal Rule of Civil Procedure 12(b)(1) and 12(b)(6).
`
`INTRODUCTION
`
`Plaintiff, Gesture Technology Partners, LLC, asks this Court to intervene in multiple ongoing
`
`administrative proceedings that the United States Patent and Trademark Office (“USPTO”) initiated,
`
`which involve four patents Plaintiff owns. Plaintiff generally maintains that the USPTO erred in
`
`initiating ex parte reexamination proceedings and inter partes review proceedings against the four patents
`
`because each patent had expired before the proceedings were requested. In this respect, Plaintiff seeks
`
`this Court’s judicial review of the USPTO’s preliminary decision to initiate each of the administrative
`
`proceedings under the Administrative Procedure Act (“APA”).
`
`Plaintiff’s request for this Court’s interlocutory review is precluded by binding precedent, and
`
`as such, the Complaint should be dismissed in its entirety. To start, Plaintiff has failed to exhaust the
`
`mandatory administrative remedies Congress created before obtaining judicial review. Under the
`
`1
`
`

`

`Case 1:22-cv-00622-RDA-JFA Document 18 Filed 08/05/22 Page 2 of 24 PageID# 401
`
`Patent Act, Congress created a comprehensive remedial scheme for administrative and judicial review
`
`of USPTO decisions to conduct further review of previously-issued patents. This statutory framework,
`
`be it for ex parte reexamination or inter partes review proceedings, channels all judicial review into a
`
`single court at the conclusion of the proceedings: the United States Court of Appeals for the Federal
`
`Circuit. Binding precedent, namely, Thunder Basin Coal Co. v. Reich, 510 U.S. 200 (1994) and its progeny,
`
`foreclose Plaintiff’s attempt to perform an end run around the detailed statutory scheme Congress
`
`enacted that only permits judicial review at the end of the administrative proceedings. Thus, because
`
`Plaintiff failed to exhaust its administrative remedies, the Court is without jurisdiction.
`
`Plaintiff also fails to present a proper claim under the APA. The APA requires that parties
`
`seek judicial review of final agency action. And yet, despite this clear requirement for all APA claims,
`
`Plaintiff nevertheless challenges a preliminary agency determination. Indeed, the initiation of
`
`administrative proceedings, whether ex parte reexamination or inter partes review, is just that—it marks
`
`the beginning of administrative proceedings and has no effect on the rights and obligations of the
`
`parties. The institution decisions at issue in this case are therefore not final agency action. The Court
`
`should dismiss the action in its entirety for this reason alone.
`
`Next, and unique to Plaintiff’s for review of the inter partes review proceedings, Congress has
`
`precluded judicial review of inter partes review institution decisions pursuant to 35 U.S.C. § 314(d).
`
`Thus, judicial review is not available under the APA, 5 U.S.C. § 701(a)(1), for the claim presented in
`
`Count I of the Complaint. Lastly, as to Plaintiff’s claim under Count II regarding the USPTO’s ex parte
`
`reexamination proceedings, Plaintiff has an adequate remedy at law to present its arguments at the
`
`end of the administrative proceedings. Awaiting Plaintiff at the finish line of any final adverse
`
`administrative decision is the opportunity to obtain judicial review from the Federal Circuit, which
`
`can then hear and address its arguments that expired patents are not eligible for review in those
`
`proceedings.
`
`2
`
`

`

`Case 1:22-cv-00622-RDA-JFA Document 18 Filed 08/05/22 Page 3 of 24 PageID# 402
`
`Accordingly, the Court should dismiss the Complaint in its entirety for lack of subject matter
`
`jurisdiction or for failure to state a claim for which relief can be granted.
`
`STATUTORY AND REGULATORY BACKGROUND
`
`
`
`The Patent Act currently provides a number of avenues through which an individual or entity
`
`can obtain “another look” at the USPTO’s decision to issue a patent. See, e.g., Return Mail, Inc. v. USPS,
`
`139 S. Ct. 1853, 1860 (2019); SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1353 (2018) (describing the
`
`administrative remedies available to challenge issued patents).1 Relevant to this action are ex parte
`
`reexamination proceedings and inter partes review proceedings.
`
`
`
`Although the propriety of the USPTO decisions to initiate ex parte reexamination and inter
`
`partes review proceedings are not at issue in this motion, it is nevertheless important initially to
`
`understand the comprehensive scheme for administrative and judicial review that Congress created.
`
`1. Patent Examination
`
`At the outset, an individual who seeks a patent on a particular invention must file an
`
`application with the USPTO that contains a specification describing the invention, claims that define
`
`the scope of the protection sought, and an oath by the applicant to the effect that she or he believes
`
`that she or he is the original inventor of the invention at issue. See 35 U.S.C. §§ 111(a); 115. A USPTO
`
`patent examiner thereafter reviews the application and determines whether the application presents
`
`claims that are patentable. See id. § 131. If “it appears that the applicant is entitled to a patent under
`
`the law,” the USPTO “shall issue a patent.” Id.
`
`
`
`If, however, the assigned patent examiner believes that the applicant is not entitled to a patent,
`
`she or he will issue written “rejections” containing the reasons for which the examiner finds the claims
`
`
`1As the Federal Circuit recently acknowledged, individuals or entities can (and often will) pursue more
`than one of these review mechanisms simultaneously; e.g., by challenging the validity of a given patent
`as a defense to a civil action brought against them in federal district court for infringement, and at the
`same time, commencing an administrative process at the USPTO. See In re Vivint, Inc., 14 F.4th 1342,
`1345-46 (Fed. Cir. 2021).
`
`3
`
`

`

`Case 1:22-cv-00622-RDA-JFA Document 18 Filed 08/05/22 Page 4 of 24 PageID# 403
`
`do not satisfy the statutory requirements for patentability. Id. § 132. Once proposed patent claims have
`
`“been twice rejected,” the applicant may notice an appeal of the examiner’s final decision to the Patent
`
`Trial and Appeal Board (“PTAB”), id. § 134, which is an administrative appellate tribunal within the
`
`USPTO, see id. § 6(a). And if the applicant remains dissatisfied after the PTAB has issued a final
`
`decision in the administrative appeal, the applicant is entitled to seek Article III judicial review, which
`
`Congress has channeled into two particular courts: (1) an appeal to the United States Court of Appeals
`
`for the Federal Circuit, see id. §§ 141-44; or (2) a civil action filed in the United States District Court
`
`for the Eastern District of Virginia, see id. § 145.
`
`2. Ex Parte Reexamination (35 U.S.C. §§ 302-307)
`
`Until approximately 1980, individuals or entities seeking to challenge the validity of an issued
`
`patent were without any real administrative recourse. See Patlex v. Mossinghoff, 758 F.2d 594, 601 (Fed.
`
`Cir. 1985). Congress concluded that this gap forced many to file costly and time-consuming challenges
`
`to patent validity in the federal court system, when the same challenge “could be conducted with a
`
`fraction of the time and cost of formal legal proceedings,” in a USPTO proceeding. See H.R. Rep. No.
`
`96-1307, at 3 (Sept. 9, 1980), reprinted in 1980 U.S.C.C.A.N. 6460, 6462. Congress therefore created an
`
`administrative alternative to federal court litigation known as “ex parte reexamination,” which
`
`authorized the patent owner2 or third parties to request that the USPTO reexamine “the substantive
`
`patentability” of an issued patent..
`
`a.
`
`Congress provided that “[a]ny person at any time may” commence the ex parte
`
`reexamination process by filing “in writing” a “request for reexamination by the [USPTO] of any claim
`
`of a patent” based on prior art3 that the requester believes may bear on the validity of that patent
`
`
`2A patent owner may request reexamination to amend (by narrowing) particular patent claims in an
`effort to avoid a judgment in federal district court that the patent is invalid. See, e.g., TC Tech. LLC v.
`Sprint Corp., 2021 WL 4521045, at *6 n.3 (D. Del. Oct. 4, 2021).
`3As a general matter, “prior art” consists of other patents or printed publications that were “available
`to the public before the effective filing date of the claimed invention,” 35 U.S.C. § 102(a)(1), and thus
`
`4
`
`

`

`Case 1:22-cv-00622-RDA-JFA Document 18 Filed 08/05/22 Page 5 of 24 PageID# 404
`
`claim. 35 U.S.C. § 302; see also id. § 301. Within three (3) months of the filing of such a written request,
`
`the USPTO – through an assigned examiner – must “determine” whether the request “raise[s]” a
`
`“substantial new question of patentability affecting any claim of the patent” at issue. 35 U.S.C. § 303(a);
`
`see also 37 C.F.R. § 1.515(a). If there is a “substantial new question of patentability,” the Director orders
`
`“reexamination of the patent for resolution of [that] question.” 35 U.S.C. § 304.4
`
`
`
`The patent owner has no right to respond to a request for ex parte reexamination before it is
`
`determined whether a “substantial new question of patentability” exists. See 37 C.F.R. § 1.530
`
`(providing that the agency will not consider any statement or response to the request submitted by the
`
`patent owner before the substantial-new-question determination is made). After the Director orders
`
`reexamination to commence, the patent owner is provided with at least two (2) months within which
`
`to file a statement on the “substantial new question of patentability” for the examiner’s consideration.
`
`See 35 U.S.C. § 304; see also 37 C.F.R. § 1.525(a). The third-party requester is then provided a single
`
`opportunity to file a further statement in reply to that of the patent owner; after this, the third-party
`
`requester has no further involvement in the reexamination process. See 35 U.S.C. § 304; see also 37
`
`C.F.R. §§ 1.535; 1.550(g).
`
`
`
`b.
`
`After these responses are received, ex parte reexamination proceeds exactly like the
`
`initial examination process – with a “back and forth” between the examiner and the patent owner
`
`about the validity of the relevant patent claims. See 35 U.S.C. § 305; see also 37 C.F.R. § 1.550(a).
`
`Accordingly, once the examiner issues a final rejection of any of the patent claims at issue, the patent
`
`
`serves as one basis on which the USPTO (or a federal court) determines whether a patent application
`discloses subject-matter that is sufficiently innovative as to be patentable, see id. §§ 102-03. An ex parte
`reexamination request is limited to “prior art consisting of patents or printed publications.” 35 U.S.C.
`§ 301(a)(1).
`4Importantly, however, the USPTO does not need a written request from either a patent owner or an
`interested third-party to commence the ex parte reexamination process. Rather, Congress provided
`USPTO with the authority to commence ex parte reexamination sua sponte, whenever it learns of prior
`art that raises a “substantial new question of patentability” concerning a given patent. See id. § 303(a);
`see also 37 C.F.R. § 1.520.
`
`5
`
`

`

`Case 1:22-cv-00622-RDA-JFA Document 18 Filed 08/05/22 Page 6 of 24 PageID# 405
`
`owner may notice an administrative appeal to the PTAB. See 35 U.S.C. §§ 134(b); 306; see also 37 C.F.R
`
`§ 41.31(a)(3). And if the patent owner remains dissatisfied “with respect to any [PTAB] decision
`
`adverse to the patentability of any original or proposed amended or new claims of the patent,” she or
`
`he may seek Article III judicial review in the Federal Circuit. Unlike initial examination that has access
`
`to an alternative § 145 action, for reexamination, Congress has channeled all judicial review ex parte
`
`reexamination into a single Article III court – an appeal to the Federal Circuit from “the final decision
`
`in an appeal to the [PTAB].” See 35 U.S.C. §§ 141-44; 306.
`
`3. Inter Partes Review (35 U.S.C. §§ 311-319)
`
`After creating the ex parte reexamination mechanism, Congress subsequently enacted
`
`provisions for inter partes proceedings (including inter partes review) specifically with the purpose of
`
`providing a greater role for third-party requesters in the administrative proceedings.5 35 U.S.C. §§ 311-
`
`319; see also Regents of Univ. of Minn. v. LSI Corp., 926 F.3d 1327, 1334-36 (Fed. Cir. 2019). Like ex parte
`
`reexamination, inter partes review “allows a third party to ask the [USPTO] to reexamine the claims.”
`
`Cuozzo Speed Techs., LLC v. Lee, 579 U.S. 261, 265 (2016). Inter partes review proceeds in two phases.
`
`When a petition for inter partes review is filed under 35 U.S.C. § 311(a), the USPTO first must
`
`determine whether to institute inter partes review. 35 U.S.C. § 314(a). See also SAS Inst., Inc., 138 S. Ct.
`
`at 1353 (describing requirements for inter partes review petitions).6 The institution decision is made on
`
`the basis of the petition and any response that is filed by the patent owner, and it must be made within
`
`three months after the USPTO receives the patent owner’s response, or if no response is filed, “the
`
`
`5 The current inter partes review regime came about in 2011 when Congress enacted the Leahy-Smith
`America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011). Inter partes review replaced the “inter
`partes reexamination” provisions that Congress had enacted in 1999 to increase third-party
`participation. See Cuozzo, 579 U.S. at 266-67; Regents, 926 F.3d at 1334-35.
`6 Similar to an ex parte reexamination request, supra n.3, a petition for inter partes review is limited to
`“prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b).
`
`6
`
`

`

`Case 1:22-cv-00622-RDA-JFA Document 18 Filed 08/05/22 Page 7 of 24 PageID# 406
`
`last date on which such response may be filed.” 35 U.S.C. § 314(b). The Director of the USPTO has
`
`delegated this responsibility to the PTAB. 37 C.F.R. § 42.4(a).
`
`The statute does not require the agency to grant inter parties review in any circumstance, but it
`
`identifies certain circumstances in which the agency may not institute such review. Cuozzo, 579 U.S. at
`
`267-68, 272-73. The USPTO may not institute review unless the agency determines that “there is a
`
`reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims
`
`challenged in the petition,” 35 U.S.C. § 314(a). The determination “whether to institute an inter partes
`
`review” is “final and nonappealable.” 35 U.S.C. § 314(d).
`
`If the PTAB institutes inter partes review proceedings, the PTAB then conducts a trial-like
`
`proceeding to determine the patentability of the claims at issue. See U.S.C. § 316; 37 C.F.R. Pt. 42,
`
`Subpt. A. During this second phase, both parties are entitled to take limited discovery, 35 U.S.C.
`
`§ 316(a)(5); to file affidavits and declarations, 35 U.S.C. § 316(a)(8); to request an oral hearing, 35
`
`U.S.C. § 316(a)(10); and to file written memoranda, 35 U.S.C. § 316(a)(8) and (13). See also Synopsys, Inc.
`
`v. Matal, 280 F. Supp. 3d 823, 826 (E.D. Va. 2017). At the end of the proceeding (unless the matter
`
`has been dismissed), the PTAB must “issue a final written decision with respect to the patentability of
`
`any patent claim challenged by the petitioner.” 35 U.S.C. § 318(a). A party aggrieved by the PTAB’s
`
`final written decision may appeal that decision to the Federal Circuit. 35 U.S.C. §§ 141(c), 319.
`
`As such, compared to the ex parte reexamination scheme, “[t]he new inter partes review regime
`
`looks a good deal more like civil litigation.” SAS Inst., Inc., 138 S. Ct. at 1353.
`
`FACTUAL BACKGROUND
`
`Plaintiff, Gesture Technology Partners, is an Ohio limited liability company and the sole owner
`
`of the four patents implicated in this case: U.S. Patent No. 7,933,431; No. 8,533,079; No. 8,194,924;
`
`and No. 8,878,949. Compl. ¶¶ 3-9. Although the expiration dates of each patent differ, each of the
`
`patents has now expired—the last of which occurred on July 7, 2020. Compl. ¶¶ 10-13. About a year
`
`7
`
`

`

`Case 1:22-cv-00622-RDA-JFA Document 18 Filed 08/05/22 Page 8 of 24 PageID# 407
`
`after each patent’s expiration, various entities (e.g., Unified Patents LLC; Apple, Inc.) petitioned for
`
`inter partes review of the patents. Compl. ¶¶ 14-18. The PTAB subsequently initiated inter partes review
`
`for each challenged patent. Compl. ¶¶ 14-18, 19 (Table).7 Around the same time, on November 11,
`
`2021, a requester requested that USPTO initiate ex parte examination proceedings of each of the four
`
`patents. Compl. ¶¶ 20-23. The USPTO subsequently initiated ex parte reexamination proceedings over
`
`each of the four patents. Compl. ¶ 24 (Table). In short, each of the four patents are now expired and
`
`each are subject to both ex parte reexamination proceedings and inter partes review proceedings, which
`
`are presently ongoing in the USPTO.
`
`About five or six months into these administrative proceedings, Plaintiff commenced this civil
`
`action. See generally Compl. (Dkt. 1). Invoking the APA, Plaintiff brings two counts for relief, each of
`
`which generally challenge the USPTO’s decisions to initiate the administrative proceedings: (1) Count
`
`I for the USPTO’s inter partes review institution decisions; and (2) Count II for the USPTO’s ex parte
`
`reexamination orders. In short, Plaintiff seeks review of these institution decisions and reexamination
`
`orders under the theory that the USPTO lacked the authority to issue them because the patents were
`
`expired at the time of the USPTO’s decisions. Compl. ¶¶ 28, 31.
`
`ARGUMENT
`
`
`
`The gravamen of Plaintiff’s Complaint is that the USPTO erred in granting ex parte
`
`reexamination and inter partes review of Plaintiff’s expired patents, and thus the Court should judicially
`
`intervene to halt those proceedings. Plaintiff thus requests that the Court prematurely insert itself into
`
`the ongoing ex parte reexamination and inter parties review proceedings, thereby circumventing
`
`Congress’s desired system for administrative and judicial review. However, for the three reasons
`
`
`7 Per statute, the USPTO must issue a final decision no “later than 1 year after the date on which the
`Director notices the institution” unless good cause exists to extend that time period by six months. 35
`U.S.C. § 316(a)(11); 37 C.F.R. § 42.100(c). Applying those deadlines here, and absent good cause, the
`last of Plaintiff’s inter partes review proceedings will conclude on December 13, 2022 (the earliest is
`November 22, 2022).
`
`8
`
`

`

`Case 1:22-cv-00622-RDA-JFA Document 18 Filed 08/05/22 Page 9 of 24 PageID# 408
`
`described below, the Court should dismiss Plaintiff’s Complaint.
`
`I.
`
`STANDARD OF REVIEW
`
`Rule 12(b)(1): A motion to dismiss pursuant to Federal Rule of Civil Procedure 12(b)(1)
`
`challenges a court’s jurisdiction over the subject matter of the suit. The motion may either attack the
`
`court’s subject matter jurisdiction by asserting “that a complaint simply fails to allege facts upon which
`
`subject matter jurisdiction can be based,” Adams v. Bain, 697 F.2d 1213, 1219 (4th Cir. 1982), or may
`
`assert that as a factual matter, the plaintiff cannot meet his burden of establishing a jurisdictional basis
`
`for this suit, id. Under the latter approach, this Court “may consider evidence outside the pleadings”
`
`to determine whether subject matter jurisdiction exists. In re KBR, Inc., 744 F.3d 326, 333 (4th Cir.
`
`2014) (quoting Velasco v. Gov’t of Indon., 370 F.3d 392, 398 (4th Cir. 2002)). Moreover, “[i]t is to be
`
`presumed that a cause lies outside” a federal court’s limited jurisdiction, and thus the “burden of
`
`establishing the contrary rests upon” the plaintiff. Kokkonen v. Guardian Life Ins. Co. of Am., 511 U.S.
`
`375, 377 (1994) (citations omitted).
`
`Rule 12(b)(6): A motion pursuant to Federal Rule 12(b)(6) serves to test the legal sufficiency
`
`of the plaintiff’s complaint in relation to the factual averments she or he puts forward. Although a
`
`court must accept all well-pled allegations in adjudicating such a motion, it need not credit allegations
`
`that are merely conclusory. See Ashcroft v. Iqbal, 556 U.S. 662, 675 (2009). In Iqbal, the Supreme Court
`
`held as follows with respect to the proper standard of review:
`
`To survive a motion to dismiss, a complaint must contain sufficient factual matter,
`accepted as true, to “state a claim to relief that is plausible on its face.” A claim has
`factual plausibility when the plaintiff pleads factual content that allow the court to
`draw the reasonable inference that the defendant is liable for the misconduct alleged.
`
`Id. at 678 (quoting Twombly, 550 U.S. at 570). Accordingly, although (as before) a court is required to
`
`adjudge the factual averments contained within a complaint against the substantive law governing the
`
`9
`
`

`

`Case 1:22-cv-00622-RDA-JFA Document 18 Filed 08/05/22 Page 10 of 24 PageID# 409
`
`claim, now “where the well-pleaded facts do not permit the court to infer more than the mere possibility
`
`of misconduct,” the complaint fails. Id. at 679 (emphasis added).8
`
`II.
`
`THIS COURT LACKS JURISDICTION TO ENTERTAIN ARGUMENTS OF ERROR OUTSIDE OF
`THE SPECIFIC JUDICIAL REVIEW SCHEME THAT CONGRESS ENACTED (COUNT I AND
`COUNT II)
`It is a fundamental tenet of administrative law “that no one is entitled to judicial relief for
`
`supposed or threatened injury until the prescribed administrative remedy has been exhausted.” Thetford
`
`Props. IV L.P. v. HUD, 907 F.2d 445, 448 (4th Cir. 1990) (observing that this is a “long settled rule of
`
`judicial administration”); see also Meyers v. Bethlehem Shipbuilding Corp., 303 U.S. 41, 50-51 (1938). Though
`
`the exhaustion of administrative remedies is often considered a prudential doctrine, see Volvo GM
`
`Heavy Truck Corp. v. Department of Labor, 118 F.3d 205, 211-12 (4th Cir. 1997), it transforms into a
`
`jurisdictional mandate where Congress has implemented an exclusive system for administrative and
`
`judicial review within a particular context. See also, e.g., Abuirshaid v. Johnson, 155 F. Supp. 3d 611, 617-
`
`18 (E.D. Va. 2015).
`
`Where Congress has created a streamlined review scheme that channels judicial review into a
`
`single Article III forum, challenges—even those of a constitutional nature—must be presented to that
`
`forum at the conclusion of administrative proceedings. In analyzing the administrative scheme created
`
`under the Mine Act, the Supreme Court observed that the statute’s “comprehensive enforcement
`
`scheme, combined with the legislative history’s clear concern with channeling and streamlining the
`
`enforcement process, establishes a ‘fairly discernible’ intent to preclude district court review in the
`
`present case.” Thunder Basin Coal Co. v. Reich, 510 U.S. 200, 215 (1994). To hold otherwise the Supreme
`
`
`8 Because the Federal Circuit, which is binding in this Court in this context, has expressed doubts as
`to whether the requirements for judicial review under the APA, 5 U.S.C. § 704, are jurisdictional, see
`Automated Merchandising Systems, Inc. v. Lee, 782 F.3d 1376, 1379 (2105), Defendant moves for dismissal
`under Rule 12(b)(6) as well. By contrast, however, the Fourth Circuit has held that the requirements
`for judicial review under the APA are jurisdictional as they set the conditions for the United States’
`waiver of sovereign immunity. See, e.g., Nat’l Veterans Legal Servs. Program v. U.S. Dep’t of Def., 990 F.3d
`834, 839 (4th Cir. 2021).
`
`10
`
`

`

`Case 1:22-cv-00622-RDA-JFA Document 18 Filed 08/05/22 Page 11 of 24 PageID# 410
`
`Court held, “would be inimical to the structure and the purposes of the Mine Act.” Id. Put simply,
`
`allowing a litigant to circumvent Congress’s deliberatively-crafted review scheme would both defeat
`
`the purpose behind the streamlined system and merely “duplicate” the specific judicial review that
`
`congress provided. See, e.g., Sturm Ruger & Co. v. Herman, 300 F.3d 867, 876 (D.C. Cir. 2002) (“Our
`
`obligation to respect the review process established by Congress bars us from permitting Sturm Ruger
`
`to make this end run [around Congress’s review scheme], and requires dismissal of its district court
`
`complaint.”). As the Supreme Court has more recently concluded, “the appropriate inquiry” is
`
`“whether it [was] fairly discernible” from the statutory scheme that Congress intended litigants “to
`
`proceed exclusively through the statutory review process.” Elgin v. Dep’t of Treasury, 567 U.S. 1, 10-11
`
`(2012); accord Berkley v. Mountain Valley Pipeline, LLC, 896 F.3d 624, 629 (4th Cir. 2018).
`
`Applying these fundamental jurisdictional principles to the Patent Act’s legislative scheme for
`
`administrative and judicial review, it is clear that Plaintiff’s APA claims are precluded. To start, both
`
`the Fourth Circuit and Federal Circuit have recognized that the Patent’s Act scheme for initial
`
`examination of patent applications serves as “carefully balanced framework . . . for how, when, where,
`
`and by whom [USPTO] patentability determinations may be challenged.” Pregis Corp. v. Kappos, 700
`
`F.3d 1348, 1359 (Fed. Cir. 2012); Animal Legal Def. Fund v. Quigg, 932 F.2d 920, 938 (4th Cir. 1991)
`
`(“The structure of the Patent Act indicates that Congress intended only the remedies provided therein
`
`to ensure that the objectives would be realized.”). The Federal Circuit has aptly described the Patent
`
`Act’s intricacies as follows:
`
`The applicant must first bring an administrative appeal to the Board of Patent Appeals
`and Interferences (the “Board”).[9] The applicant may then appeal the Board’s decision
`in this court under 35 U.S.C. § 141, or may file suit against the PTO in the United
`States District Court for the District of Columbia under 35 U.S.C. § 145.
`
`
`
`
`9 Before Congress established the PTAB in 2011, the Board of Patent Appeals and Interferences was
`the administrative appellate tribunal within the USPTO. See, e.g., United States v. Arthrex, Inc., 141 S. Ct.
`1970, 1985 (2021).
`
`11
`
`

`

`Case 1:22-cv-00622-RDA-JFA Document 18 Filed 08/05/22 Page 12 of 24 PageID# 411
`
`Pregis Corp. v. Kappos, 700 F.3d 1348, 1359 (Fed. Cir. 2012) (citations omitted). As noted above,
`
`Congress explicitly duplicated this very same process for the conduct of both ex parte reexamination
`
`proceedings, with only one exception—a single avenue for Article III judicial review through a direct
`
`appeal in the Federal Circuit. See 35 U.S.C. § 141(b) (direct appeal to Federal Circuit from final PTAB
`
`patentability determination); id. § 306 (direct appeal to Federal Circuit after ex parte reexamination
`
`proceedings). And a similarly intricate process for inter partes review proceedings exists under the
`
`statutory framework: the inter partes review proceedings proceed in a very structured manner and all
`
`avenues for Article III judicial review are channeled to a direct appeal to the Federal Circuit at the
`
`conclusion of those proceeds. See 35 U.S.C. § 319 (direct appeal to Federal Circuit after inter partes
`
`review proceedings).
`
`
`
`Consistent with this binding authority, other Eastern District jurists have repeatedly applied
`
`the above authority to preclude district court challenges to the USPTO’s decision to institute
`
`administrative proceedings, including those involving patent reexamination and inter partes review
`
`proceedings. In Cooper v. Lee, 86 F. Supp. 3d 480, 489 (E.D. Va. 2015), for example, Judge Lee held
`
`that he could not entertain plaintiff’s challenge to the institution decision of inter partes review
`
`proceedings. Id. at 489, summarily aff’d on other grounds at Appellant’s request, No. 16-1071 (Fed. Cir. 2016).
`
`There, plaintiffs were patent owners in ongoing inter partes review proceedings before the USPTO, and
`
`like the challenge presented here, argued that USPTO lacked authority to institute the inter partes review
`
`proceedings. Id. at 482. Because inter partes review proceedings provide a single avenue for judicial
`
`review (akin to ex parte reexamination proceedings), Cooper held that the court was without jurisdiction
`
`to adjudicate the challenge to the institution of inter partes review proceedings, reasoning that the PTAB
`
`must conduct the review in the first instance and the Federal Circuit could then hear plaintiff’s
`
`challenge at the conclusion of the administrative proceedings “as the administrative processes under
`
`[the Patent Act] would [then] be exhausted.” Id. at 489.
`
`12
`
`

`

`Case 1:22-cv-00622-RDA-JFA Document 18 Filed 08/05/22 Page 13 of 24 PageID# 412
`
`Judge O’Grady reached a similar conclusion in Elms 3DS Innovations, LLC v. Lee, 2016 WL
`
`8732315, at *4 (E.D. Va. Dec. 2, 2016), which involved a challenge to the USPTO’s authority to extend
`
`filing deadlines for inter partes review proceedings by declaring certain dates as federal holidays. In
`
`dismissing the claim for want of jurisdiction, Judge O’Grady reasoned that “[c]ollateral APA attacks
`
`in the district court on ongoing [inter partes review] proceedings improperly contravene the
`
`Congressional intent to confer [inter partes review] jurisdiction solely on the Federal Circuit.” Id. (emphasis
`
`added);10 see also Synopsys, Inc. v. Lee, 2014 WL 5092291 (E.D. Va. Oct. 9, 2014), opinion vacated as moot,
`
`812 F.3d 1076 (Fed. Cir. 2016) (holding that the court did not have jurisdiction to review “a USPTO
`
`decision to institute ‘partial’ inter partes review proceedings . . . because Congress vested exclusive
`
`jurisdiction over such judicial review in the United States Court of Appeals for the Federal Circuit”).
`
`Based on this authority, it is clear that the Court is without jurisdiction over Plaintiff’s challenge (i.e.,
`
`Count I) and that Plaintiff must exhaust and follow the administrative and judicial review process
`
`prescribed by Congress.
`
`
`
`While the above authorities address inter partes review proceedings, their logic and reasoning
`
`equally extend to ex parte reexamination proceedings. Cf. Versata Dev. Corp. v. Rea, 959 F. Supp. 2d 912,
`
`920-921 (E.D. Va. 2013), aff’d sub nom. Versata Dev. Grp., Inc. v. Lee, 793 F.3d 1352 (Fed. Cir. 2015)
`
`(applying doctrine of administrative exhaustion to preclude jurisdiction over challenge to Post-Grant
`
`review proceedings reasoning that “[f]inding jurisdiction in the instant case would sanction a parallel
`
`court proceeding under the APA against express congressional intent made evident by the AIA’s
`
`
`10 Similarly, in Swyers v. Lee, 2016 WL 7042943 (E.D. Va. May 27, 2016), Judge O’Grady concluded
`that district courts lacked jurisdiction over challenges to the USPTO’s decision to institute disciplinary
`proceedings against those (typically attorneys) who represent others before the agency, noting that it
`was “fairly discernible” from the Patent Act – which, like ex parte reexamination and inter partes review
`proceedings, channels all judicial review to a single court after the USPTO Director issues a final
`decision, see 35 U.S.C. § 32 – “that Congress intended to preclude district court jurisdiction over pre-
`enforcement challenges to, or collateral attacks on” such proceedings. Swyers, 2016 WL 7042943, at
`*9.
`
`13
`
`

`

`Case 1:22-cv-00622-RDA-JFA Document 18 Filed 08/05/22 Page 14 of 24 PageID# 413
`
`passage”). Just as with initial examination and inter partes review proceedings, the Patent Act creates a
`
`comprehensive scheme for administrative and judicial review within the context of ex parte
`
`reexamination – one that channels all judicial review to the Federal Circuit only at the conclusion of
`
`administrative proceedings. See 35 U.S.C. §§ 141(b); 306. Nor can there be any doubt that Plaintiff can
`
`obtain judicial review of its threshold argument about the authority of the USPT