A third party cannot sue the PTO under the APA to challenge a PTO decision to issue a patent.
Background / Facts: Pregis filed suit against Free-Flow Packaging seeking a declaratory judgment against Free-Flow’s patents directed to air-filled cushions used to fill space in shipping boxes carrying lightweight items that do not take up all the available space in a box. Pregis also took the unusual step of suing the PTO under the Administrative Procedure Act (“APA”), 5 U.S.C. §§ 701–706, to prevent the issuance of two then-pending Free-Flow patent applications. Pregis then amended its complaint to allege that the subsequent issuance of those patents by the PTO was arbitrary, capricious, an abuse of discretion or otherwise not in accordance with law. Pregis alleged that the PTO failed to discharge its statutory duty to determine whether the claims of the patents were nonobvious over the prior art as required by 35 U.S.C. § 103(a), and that the PTO’s stated reasons for issuing the patents were insufficient to support the conclusion that the allowed claims were nonobvious.
Issue(s): Whether a competitor, who has been sued as an infringer, is entitled under the APA to judicial review of the PTO’s decision to grant the patents in suit.
Holding(s): No. The APA sets forth several limitations on the grant of judicial review set out in § 702. Relevant here, the APA applies “except to the extent that – (1) statutes preclude judicial review … .” 5 U.S.C. § 701(a)(1). Additionally, the APA authorizes judicial review of final agency actions only if “there is no other adequate remedy in a court.” 5 U.S.C. § 704. The comprehensive legislative scheme of the Patent Act makes clear that it “preclude[s] judicial review” of the reasoning of PTO decisions to issue patents after examination under 35 U.S.C. § 131, and competitors have an “adequate remedy in a court” for the issuance of invalid patents.