Pregis Corp. v. Kappos

Because the Patent Act provides sufficient administrative and judicial relief for third parties injured by wrongly issued patents, the APA cannot be used to provide competitors in a patent dispute with an alternative means to obtain relief.

Opinion (Reyna): Free-Flow Packaging sued Pergis alleging infringement of its patents relating to the manufacture of air filled packing materials. A jury determined the patents were not infringed, and that some of their claims were invalid for obviousness. Free-Flow moved for judgment as a matter of law (JMOL), which was denied. Free-Flow appealed, and Pregis crossappealed, seeking review of the PTO’s decision to issue the patents under the APA. On appeal, Free-Flow did not dispute that prior art taught every element of the claims asserted in its patents; rather, it claimed that there was no evidence suggesting a reason to combine the prior art to arrive at the claims in its patents. The Federal Circuit, however, disagreed, finding that problems inherent in the individual prior art considered at trial were sufficient to permit a jury to conclude that a party would be motivated to combine the prior art references to arrive at the claims contained in Free-Flow’s patents. For the APA claim, because the Patent Act affords aggrieved third parties relief for wrongly issued patents, the Court of Appeals determined that Congress did not intend for the APA to be available for competitors in a patent dispute. Accordingly, the Federal Circuit AFFIRMED the district court.