Belkin Intl., Inc. v. Kappos

The Director's determination that prior art does not raise substantial new questions of patentability is final and nonappealable.

Opinion (Lourie): Belkin filed a request for inter partes reexamination of a wireless router patent, alleging ten substantial new questions of patentability for claims 1-32, based on four prior art references. The Director decided that three of the references did not raise substantial new questions. The Director also found that the remaining reference (Peirce) did raise a question, but only for claims 1-3 and 8-10. Belkin petitioned for review of the denial of reexamination of the other claims, but did not petition for review on whether the other three references did not raise questions for claims 1-3 and 8-10. After the examiner issued an Action Closing Prosecution, which only addressed claims 1-3 and 8-10 as anticipated by Peirce, Belkin appealed to the Board questioning the examiner’s failure to consider the other three references. The Board decided that it lacked jurisdiction to determine whether new questions were raised by the rejected references, because the Director’s determination that they did not raise new questions was not appealable. Belkin appealed. A party who questions the determination that a substantial new question was not raised, may petition the Director for review, but if it does not do so it cannot revive the issue on appeal. Because Belkin failed to petition for review of the Director’s determination with regard to the three prior art references, that determination was final and nonappealable, placing those issues outside the reexamination process. Accordingly, the Federal Circuit Court of Appeals AFFIRMED the Board.