Teles AG Information owns all substantial rights in US Pat. No. 6,954,453 ("'453 patent") directed to a method and apparatus for transmitting data in a telecommunications network. The PTO conducted an ex parte reexamination of the '453 patent and rejected claims as obvious. The Board of Patent Appeals and Interferences affirmed. Teles brought suit in the U.S. District Court for the District of Columbia under 35 U.S.C. §145, challenging the finding of obviousness regarding one of the claims. The District Court held that it lacked subject matter jurisdiction, finding that the version of §145 in effect at the time did not authorize a patent owner in an ex parte reexamination to bring suit in district court challenging the Board’s action. The District Court dismissed the case and attempt to transfer the case to the Federal Circuit after dismissal.

In 1999, Congress amended the Patent Act, making §145 appeal to the district court available only to patent applicants, not patent owners. The Federal Circuit hold that the 1999 amendments eliminated the right of patent owners to secure review under §145.

With respect to the rejection of the claim as obvious, Teles argued that the Board incorrectly construed the claimed “means to produce the control signal” under §112, six paragraph (now §112(f)) asserting that the specification supported a finding of a different function. The Federal Circuit disagreed with Teles’ argument finding that the language describes two factors as potential alternatives for producing a change-over command.

Finally, Teles challenges the conclusion of obviousness on the ground that the prior art references do not disclose all of the recited limitations of claim. However, the Federal Circuit agreed with the Board that all limitations of the claim were present in the prior art.