In Re FOREST

• Court: Court of Appeals for the Federal Circuit
• Decided: April 3, 2025
• Docket: 23-1178
• Status: Published

Opinion

Case: 23-1178 Document: 62 Page: 1 Filed: 04/03/2025

United States Court of Appeals for the Federal Circuit ______________________

IN RE: DONALD K. FOREST, Appellant ______________________

2023-1178 ______________________

Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. 15/391,116. ______________________

Decided: April 3, 2025 ______________________

DON FOREST, Bryn Mawr, PA, pro se.

PETER JOHN SAWERT, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, for appellee Coke Morgan Stewart. Also represented by KAKOLI CAPRIHAN, AMY J. NELSON. ______________________

Before TARANTO, SCHALL, and CHEN, Circuit Judges. CHEN, Circuit Judge. Donald Forest submitted U.S. Patent Application No. 15/391,116 (’116 application), entitled “Apparatus for Se- lecting from a Touch Screen,” to the United States Patent and Trademark Office (Patent Office) on December 27, 2016. The Patent Trial and Appeal Board affirmed in part the examiner’s rejection of certain claims of the ’116 appli- cation under 35 U.S.C. § 103 and nonstatutory double Case: 23-1178 Document: 62 Page: 2 Filed: 04/03/2025

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patenting. See Ex parte Forest, No. 2021-003780, 2022 WL 4234201, at *26 (P.T.A.B. Sept. 12, 2022). Mr. Forest ap- peals. The ’116 application claims priority, through a chain of earlier-filed patent applications, to an application filed on March 27, 1995—meaning, if the ’116 application were to issue as a patent, then its expiration date would be twenty years later in 2015. See 35 U.S.C. § 154(a)(2). Mr. Forest does not dispute that he filed his ’116 application more than a year after any resulting patent’s 2015 expiration date. The Patent Office raises a threshold issue it charac- terizes as a jurisdictional matter: it contends that, given the circumstances, Mr. Forest has no personal stake in this appeal because he cannot be granted any enforceable rights by a patent grant with zero term. In response, Mr. Forest argues that he would still acquire “provisional rights” un- der 35 U.S.C. § 154(d) if the Patent Office issues him an expired patent, but he does not contest the jurisdictional consequence if his understanding of section 154 is incor- rect. Because we disagree with Mr. Forest’s reading of the statute, we dismiss the appeal. I. Under 35 U.S.C. § 154(a), every patent grants to the patentee “the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States.” 35 U.S.C. § 154(a)(1). These exclusionary rights begin when the patent issues and end twenty years after the application date or applicable priority date. 1 Id. § 154(a)(2)–(3).

1 This expiration date assumes there is no patent term adjustment, patent term extension, or terminal dis- claimer, see 35 U.S.C. §§ 154(b), 156, 253(b)—none of which is applicable in this appeal. Case: 23-1178 Document: 62 Page: 3 Filed: 04/03/2025

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Under 35 U.S.C. § 154(d), titled “Provisional Rights,” a patent grant also confers an additional, but more limited, right—the right to obtain a reasonable royalty from any person who “makes, uses, offers for sale, or sells in the United States the invention as claimed in the published pa- tent application.” Id. § 154(d)(1)(A)(i). These provisional rights run from when the application is published until the patent issues. Id. § 154(d)(1). A patent application gener- ally publishes eighteen months after its filing date. Id. § 122(b). Provisional rights are thus less robust than sec- tion 154(a) exclusionary rights, and they are “provisional” in the sense that the rights end and are replaced by the statutory exclusionary rights once a patent issues. Im- portantly, provisional rights do not materialize until the Patent Office issues a patent. To illustrate a typical patent-prosecution, let’s assume a hypothetical application was filed on January 1, 2000, published on July 1, 2001, and issued on January 1, 2005. In this example, upon issuance of the patent, the patentee would be awarded provisional rights under section 154(d) effective from July 1, 2001, to January 1, 2005, and would be awarded exclusionary rights under section 154(a) from January 1, 2005, through January 1, 2020. 2 Thus, the more-limited provisional rights precede the exclusionary rights, and the provisional rights compensate for some of the term “lost” due to the amount of time it took the patent to issue. And no rights under the patent extend past twenty years from the application filing date. This appeal presents an atypical case: Based on the date of the application to which he claims priority, Mr. For- est applied for—and would not be granted—a patent until after the patent’s expiration date. Mr. Forest would there- fore never receive any exclusionary rights because the

2 Again, this expiration date assumes no patent term adjustment, patent term extension, or terminal disclaimer. Case: 23-1178 Document: 62 Page: 4 Filed: 04/03/2025

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patent would issue after the twenty-year term has ex- pired. 3 See 35 U.S.C. § 154(a)(2). Effectively, Mr. Forest asks the Patent Office to grant him an expired patent. II. The Patent Office contends we can reject Mr. Forest’s appeal without needing to address the merits of the Board’s decision because any patent that would issue from the ’116 application would be expired, giving Mr. Forest no patent rights. “[A]t all stages of litigation, a plaintiff must main- tain a personal interest in the dispute.” Apple Inc. v. Qual- comm Inc., 17 F.4th 1131, 1137 (Fed. Cir. 2021) (citation omitted). According to the Patent Office, Mr. Forest has no interest in this appeal. 4 Mr. Forest does not dispute that his patent, if granted, would have no exclusionary rights, but he argues that his patent, if granted, would receive provisional rights. In Mr. Forest’s view, because provisional rights run from the date of publication to patent issuance, the patentee is al- ways entitled to provisional rights—even if the patent is- sues ten, twenty, or even thirty years or longer after the patent’s expiration date. What’s more, according to Mr. Forest, the twenty-year patent term codified in 35 U.S.C. § 154(a)(2) has no bearing on the provisional-rights term. Under this view, the patentee could actually benefit from having a patent issue after its expiration date because the patent’s provisional-rights term would extend beyond the patent’s twenty-year term. Indeed, if we were to adopt

3 We recognize that a patent does not receive the full twenty-year term because of the temporal delay from the application to the issuance of the patent. We use the phrase “twenty-year term” for simplicity. 4 Mr. Forest has identified no potential interest other than receiving a patent with the patent rights af- forded by section 154. Case: 23-1178 Document: 62 Page: 5 Filed: 04/03/2025

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Mr. Forest’s understanding of the statute, nothing in sec- tion 154 would stop him from receiving an expired patent with provisional rights while still pursuing another contin- uation application to gain a second round of provisional rights covering a subsequent time period through a later, second expired patent. This appeal therefore turns on a single question of stat- utory interpretation: Under 35 U.S.C. § 154, does a patent include the grant of provisional rights when the patent would issue after its expiration date (and thus would issue without any exclusionary rights)? For the following rea- sons, we hold that provisional rights are granted only when a patent would issue with exclusionary rights (i.e., would issue before its expiration date). The Supreme Court has summarized our role in statu- tory interpretation as follows: It is . . . our task to determine the correct reading of [the relevant statute]. If the statutory language is plain, we must enforce it according to its terms. But oftentimes the “meaning—or ambiguity—of certain words or phrases may only become evident when placed in context.” So when deciding whether the language is plain, we must read the words “in their context and with a view to their place in the overall statutory scheme.” Our duty, after all, is “to construe statutes, not isolated pro- visions.” King v. Burwell, 576 U.S. 473, 486 (2015) (citations omit- ted); see also Loper Bright Enters. v. Raimondo, 603 U.S. 369, 392 n.4 (2024) (“[S]tatutes can be sensibly understood only ‘by reviewing text in context.’” (quoting Pulsifer v. United States, 601 U.S. 124, 133 (2024))). Section 154(d)(1) provides: (d) Provisional Rights.— Case: 23-1178 Document: 62 Page: 6 Filed: 04/03/2025

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(1) In general.—In addition to other rights provided by this section, a patent shall in- clude the right to obtain a reasonable roy- alty from any person who, during the period beginning on the date of publication of the application for such patent under section 122(b) . . . and ending on the date the patent is issued— (A)(i) makes, uses, offers for sale, or sells in the United States the in- vention as claimed in the published patent application or imports such an invention into the United States; or (ii) if the invention as claimed in the published patent application is a process, uses, offers for sale, or sells in the United States or im- ports into the United States prod- ucts made by that process as claimed in the published patent ap- plication; and (B) had actual notice of the pub- lished patent application and, in a case in which the right arising un- der this paragraph is based upon an international application desig- nating the United States that is published in a language other than English, had a translation of the in- ternational application into the English language. 35 U.S.C. § 154(d). The title of this subsection is “Provisional Rights.” The word “provisional” is an adjective defined as “serving for Case: 23-1178 Document: 62 Page: 7 Filed: 04/03/2025

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the time being” or “temporary.” Provisional, MERRIAM- WEBSTER.COM DICTIONARY, https://www.merriam-web- ster.com/dictionary/provisional (last visited Mar. 14, 2025). This definition suggests that provisional rights are tempo- rary, placeholder rights existing for only an interim period. That is, provisional rights exist for a temporary period of time until some other right comes into effect and replaces them. The only other right identified in section 154 is ex- clusionary rights. See Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, 584 U.S. 325, 338 (2018) (“As a public franchise, a patent can confer only the rights that ‘the statute prescribes.’” (citation omitted)). The title of section 154(d) thus suggests that provisional rights do not exist simply in a vacuum but instead necessarily precede exclusionary rights, and exclusionary rights are available only until the patent expires, see 35 U.S.C. § 154(a)(2). For the provisional rights to precede the exclusionary rights, then, the provisional rights would have to be granted to a patent that issues before the patent expires. Were we to conclude otherwise, as Mr. Forest seeks, section 154(d)’s provisional rights would never be a temporary, interim right replaced by a different right—the traditional exclu- sionary right. That reading contradicts the plain meaning of “provisional.” The title therefore supports that provi- sional rights can be granted to only a patent that issues before its expiration date. Although “titles and headings are permissible indica- tors of meaning,” Antonin Scalia & Bryan A. Garner, Read- ing Law: The Interpretation of Legal Texts 221 (2012), we recognize “they cannot undo or limit that which the text makes plain,” Bhd. of R.R. Trainmen v. Balt. & Ohio R.R. Co., 331 U.S. 519, 529 (1947); see also Carter v. United States, 530 U.S. 255, 256 (2000) (“[T]he title of a statute is of use only when it sheds light on some ambiguous word or phrase in the statute itself.”). Here, however, the statutory text also supports this understanding that provisional rights precede the exclusionary rights and therefore are Case: 23-1178 Document: 62 Page: 8 Filed: 04/03/2025

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available only when a patent issues before its expiration date. For one, provisional rights attach to “the invention as claimed in the published patent application,” 35 U.S.C. § 154(d)(1)(A)(i)–(ii), whereas exclusionary rights attach to the issued patent, 35 U.S.C. § 154(a)(1). The published pa- tent application necessarily precedes the issued patent. 5 And if the published patent application precedes the issued patent, then the rights based upon the published patent application (the provisional rights) should likewise precede the rights based upon the issued patent (the exclusionary rights). But more on point, certain words of the statute would be read out of the text if a patent could issue with provi- sional rights but without exclusionary rights. “In constru- ing a statute we are obliged to give effect, if possible, to every word Congress used.” Reiter v. Sonotone Corp., 442 U.S. 330, 339 (1979). In enacting section 154(d), Congress specified that provisional rights are granted “[i]n addition to other rights provided by this section.” 35 U.S.C. § 154(d)(1). As mentioned, the only other rights enumer- ated in section 154 are the exclusionary rights. It follows that provisional rights are conferred with and “in addition to” exclusionary rights. If no exclusionary rights can be granted (because, as in this case, the application is well past the expiration date), then so, too, the attendant provi- sional rights are unavailable. Put another way, there are no “other rights” the provisional rights can be “in addition to.” This understanding that provisional rights precede, are replaced by, and are granted with exclusionary rights

5 Under 35 U.S.C. § 122(b)(2)(A)(i), the application will not publish if it is “no longer pending” because the pa- tent was issued prior to the would-be publication date. Case: 23-1178 Document: 62 Page: 9 Filed: 04/03/2025

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is also in accord with how patent examination practice typ- ically works. As in our “typical example” described above, patents generally issue before their expiration date. In- deed, we are unaware of any example of a patent issuing after its expiration date. So in the “typical example” a pa- tent is granted with a period of provisional rights (assum- ing the application was published) followed by a period of exclusionary rights. This understanding that provisional rights are rights that precede and are replaced by exclusionary rights also comports with other uses of “provisional” in patent law and Title 35, Part II of the U.S. Code. For instance, a patent applicant can submit a “provisional application” under 35 U.S.C. § 111(b)(1) before it submits a “written applica- tion,” which is commonly referred to as a “non-provisional application,” under 35 U.S.C. § 111(a)(1). “As a part of the Uruguay Round Agreements Act, the Patent Statute was amended to allow applicants for United States patents to file provisional applications that could provide the priority date for a non-provisional utility application filed within one year of the provisional.” New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002) (cit- ing 35 U.S.C. § 111(b)). Thus, in the context of section 111, a provisional application is a temporary, stand-in applica- tion that precedes the non-provisional application and does not lead to a conferral of rights on the patentee unless a patent issues from the subsequent non-provisional applica- tion. Mr. Forest’s only argument to the contrary is that the text is clear and must be given effect. Specifically, he con- tends that the statute explicitly provides that provisional rights “begin[] on the date of publication of the application for such patent” and “end[] on the date the patent is is- sued.” Appellant’s Reply Br. 9; 35 U.S.C. § 154(d)(1). Ac- cording to Mr. Forest, applying the text as written means that the provisional rights are granted for that period, Case: 23-1178 Document: 62 Page: 10 Filed: 04/03/2025

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regardless of how much time elapses between publication and issuance. This argument in our view engages in an overly narrow statutory analysis. Mr. Forest asks us to focus our analysis on only two phrases marking the beginning and end of the provisional-rights term. But even if we assume that the phrases “begin[] on the date of publication of the applica- tion for such patent” and “end[] on the date the patent is issued” are unambiguous, “[o]ur duty . . . is to construe statutes, not isolated provisions”—let alone isolated phrases within those provisions. King, 576 U.S. at 486 (in- ternal quotation marks and citation omitted). “So when deciding whether the language is plain, we must read the words in their context and with a view to their place in the overall statutory scheme.” Id. (internal quotation marks and citation omitted). As described above, the statute, when read in context, dictates that provisional rights must be granted with and precede the grant of exclusionary rights. We also note that a patent’s term is a fundamental as- pect of patent law. The Constitution mandates that pa- tents be granted only “for limited Times.” U.S. Const. art. I, § 8, cl. 8. In the modern statute, Congress effectu- ated that constitutional mandate by explicitly providing for a term “beginning on the date on which the patent issues and ending 20 years from the” application date or applica- ble priority date. 35 U.S.C. § 154(a)(2)–(3). That statutory command clearly presupposes that a patent term’s begin- ning date occurs before its ending date. But that presuppo- sition is not present here. In effect, Mr. Forest seeks some form of patent rights that go beyond the statute’s twenty- year end date, but we have explained that the Patent Office “may not grant . . . a patent right extending beyond the statutorily authorized term.” Institut Pasteur & Universite Pierre Et Marie Curie v. Focarino, 738 F.3d 1337, 1344 (Fed. Cir. 2013) (citing 35 U.S.C. §§ 154, 271(a)). Case: 23-1178 Document: 62 Page: 11 Filed: 04/03/2025

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Mr. Forest argues that provisional rights are an excep- tion to a patent’s twenty-year term. In fact, he claims it is an unbounded exception that lasts from the date the patent application is published until the patent issues—no matter how long that time period is. Mr. Forest presents a “fun- damentally surprising” interpretation pertaining to a key, constitutionally driven component of the grant of a patent, so we would have expected Congress to have clearly ad- dressed the issue if we were to adopt his interpretation. Jones v. Hendrix, 599 U.S. 465, 492 (2023); see also id. (“Typically, we find clear-statement rules appropriate when a statute implicates historically or constitutionally grounded norms that we would not expect Congress to un- settle lightly.”); cf. Whitman v. Am. Trucking Ass’ns, 531 U.S. 457, 468 (2001) (“Congress, we have held, does not alter the fundamental details of a regulatory scheme in vague terms or ancillary provisions—it does not, one might say, hide elephants in mouseholes.”). Yet, Congress has not provided a clear indication that provisional rights can exceed a patent’s twenty-year term. In fact, as explained above, the statutory text suggests the opposite. And nothing in the legislative history indicates otherwise. The only legislative history the parties identi- fied are statements made by patent stakeholders to Con- gress rather than statements made by Congress. But each of those statements support that provisional rights would not extend beyond the patent’s twenty-year term. See, e.g., The Patent System Harmonization Act of 1992: Joint Hear- ing on S. 2605 and H.R. 4978 Before the Subcomm. on Pats., Copyrights & Trademarks of the S. Comm. on the Ju- diciary and the Subcomm. on Intell. Prop. & Jud. Admin. of the H. Comm. on the Judiciary, 102nd Cong. 398 (1993) (“The combination of expiration at 20 years from the initial U.S. filing and provisional rights will maintain the current length of protection for inventions, and eliminate the pos- sibility that exists under current law of having patent terms extend for a period much longer than 20 years after Case: 23-1178 Document: 62 Page: 12 Filed: 04/03/2025

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the invention is commercialized.”); Oversight of the Patent and Trademark Office: Hearing on S. 1854 Before the Sub- comm. on Pats., Copyrights & Trademarks of the S. Comm. on the Judiciary, 103rd Cong. 40 (1995) (“Eighteen-month opening or publication with provisional rights comple- ments the 20-year term measured from filing. A reasona- ble royalty after publication may compensate the patentee for time lost from the 20-year patent term . . . .”); Patents Legislation: Hearings on H.R. 359, H.R. 632, H.R. 1732, and H.R. 1733 Before the Subcomm. on Cts. & Intell. Prop. of the H. Comm. on the Judiciary, 104th Cong. 260 (1996) (“The opportunity for provisional royalties is another posi- tive aspect of publication . . . [and] means that an inven- tor’s right to royalties will be a full 18.5 years regardless of when the patent issues.”). III. For the foregoing reasons, this appeal is dismissed. DISMISSED COSTS No costs.