Vanguard Identification Sys., Inc. v. Kappos: Federal Circuit Provides Procedural Clarity in its First Decision from Inter Partes Reexamination

January 28th, 2011

Case Name:  Vanguard Identification Sys., Inc. v. Kappos, Appeal No. 2010-1371 (Fed. Cir. Jan. 24, 2010).

The United States Court of Appeals for the Federal Circuit (“Federal Circuit”) issued its first ever decision in an inter partes reexamination on January 24, 2011.  While the per curiam decision issued without opinion under Federal Circuit Rule 36, it is still noteworthy in several respects. 


The appeal was taken from an inter partes reexamination of U.S. Patent No. D467,247, a design patent owned by Bank of America Corp. covering a “Data Card.”  (Reexam Control No. 95/000,034.)  The Examiner initially found the sole claim to be obvious over a combination of prior art references.  On appeal, the Board of Patent Appeals and Interferences (“the Board”) reversed the Examiner, finding the claim to be patentable.  The Board did not change its opinion on rehearing, and the third party requester Vanguard ID appealed to the Federal Circuit, arguing that the claim was unpatentable.  Bank of America Corp. and the PTO were co-appellees.  They argued that the claim was patentable and that the Board decision be affirmed.  The Federal Circuit affirmed.   

While this is the first decision from the Court in an inter partes reexam, it is not the first inter partes reexam to be appealed.  That distinction belongs to Cooper Cameron v. SAFOCO Inc., Nos. 2009-1435, -1459 (Federal Circuit) (Reexam Nos. 95/000,015 and 95/000,017).  However, prior to briefing, Cooper Cameron voluntarily dismissed its appeal.  The Vanguard case is interesting in that it differed from Cooper Cameron in several important procedural aspects, which are noted below. 


The reexamination took almost seven years from its filing in February 2004 through appeal to the Federal Circuit.  Nearly three years elapsed between the November 2004 Action Closing Prosecution (“ACP”) and the November 2007 Right of Appeal Notice (“RAN”), and almost 2.5 years elapsed between the RAN and the final Board decision.  Therefore, the roughly 5.5 years between ACP and Board decision accounted for the majority of the reexam pendency through appeal to the CAFC.  Because parties to reexam are held by the PTO to shortened and often unextendable deadlines, most of that delay can be attributed directly to the PTO, despite the mandate for special dispatch within the PTO.  35 U.S.C. § 314(c). 

Federal Circuit — the Parties

In Cooper Cameron, the initial caption included only the parties to the inter partes reexam and not the PTO.  In a letter to the Court, the Solicitor requested that the Court amend the caption and add the PTO as a party.  The Solicitor cited to 35 U.S.C. § 143, which states that “[i]n any ex parte case or any reexamination case, the Director shall submit to the court in writing the grounds for the decision of the [USPTO], addressing all the issues involved in the appeal.”  According to the Solicitor’s letter, “the Director [of the USPTO] is a party to this appeal, just as in an ex parte appeal.”  The court granted permission for the PTO to participate, but did not amend the caption.

In Vanguard, the Official Caption included the PTO from the start.  The Court has apparently acknowledged the PTO’s statutory role in appeals from inter partes reexaminations under 35 U.S.C. § 143.  In fact, the PTO is listed first on the caption and appears to be the de-facto appellee.  The other appellee must file a notice of intent to participate for it to be included as a party to the appeal.  This is a change from Cooper Cameron and different from other inter partes matters such as interferences, where only the two parties contesting invention appear before the Court. 

Federal Circuit — Briefing

In Cooper Cameron, the Court ordered briefing was to be have been (i) Appellant, (ii) PTO and , (iii) Appellee (14 days after the Director’s brief).  However, the case was voluntarily dismissed prior to briefing.  In Vanguard, the briefing schedule appears to have followed a more traditional briefing schedule where there are multiple parties represented by different counsel.  Specifically, Vanguard as the appellant briefed first.  The co-appellees PTO and Bank of America then filed simultaneous response briefs, and Vanguard replied. 

Another interesting aspect of the briefing is that the PTO’s rules prohibit the parties to an inter partes reexamination from any ex parte communication with the Office.  This presumably extends to the appeal phase before the Federal Circuit.  Therefore, unlike most co-appellees, there is likely little cooperation between the PTO and the party with which it is aligned on the appeal. 

Finally, this may be the first time that the PTO has argued in favor of patentability to the Federal Circuit.  In all other appeals from the Board, the PTO is normally in the position of arguing against patentability. 

Federal Circuit — Oral Hearing

Cooper Cameron never made it to oral hearing, so it was unsettled how the briefing would proceed in Vanguard.  Like a traditional appeal, the total hearing time allocated in Vanguard was 30 mins—15 minutes per side.  Vanguard, as the appellant, argued first.  The PTO argued second.  About 10 mins into the PTO’s time, Judge Newman asked whether the PTO would split its time with Bank of America.  It did, and Bank of America finished out the final five minutes.  Vanguard rebutted.  Again, the Court defaulted to the traditional briefing schedule where there are co-appellees.  The PTO and its co-appellee must decide how and whether to split their 15 minutes.  But it appears that as the default appellee, the PTO will go first with any remaining split going to the co-appellee. 


It was clear in Cooper Cameron the Court was unsure of its procedures in appeals from inter partes reexam.  It did not immediately recognize that the PTO was a statutory party.  And its briefing schedule in that case was non-traditional.  Even though the appeal was voluntarily dismissed, it did give the Court the opportunity to consider its procedures for inter partes reexamination.  Vanguard, even though it was a Rule 36 summary affirmance, now provides procedural clarity to appeals from inter partes reexamination.