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Precedential Patent Cases From the Federal Circuit in ‎the Past Week

June 30, 2015


Internet Patents – Once again the Circuit strikes down a patent to a computer-implemented invention, affirming dismissal of an infringement case under ‎35 U.S.C. §101. In a thorough analysis and application of Bilski, Mayo and Alice‎, the panel determines that the claims include no restriction on how the result, the use of internet web pages for users to fill out online applications, is ‎accomplished. The panel thus concludes that the claim is directed to the idea itself—the abstract ‎idea of avoiding loss of data – and affirms that the claims are not directed to patent-eligible subject matter.‎

TomTom – The panel disagrees with the district court as to the construction of four different claim phrases, thus reversing a determination of noninfringement. The court had improperly construed the preamble to be limiting even though it merely stated the intended use of an invention and did not give "life, meaning and vitality" to the claim. Nor was there any clear and unambiguous disavowal in the prosecution history as to the meaning of another claim phrase, and the court did not give adequate weight to the plain and ordinary meaning of two other claim phrases.

Searle (Pfizer ) – The Circuit affirms a decision invalidating a follow-up patent to the active ingredients in Pfizer's Celebrex drug based on obviousness-type double patenting. The panel holds that Pfizer's attempts to save the patent through reissuance by eliminating much of its disclosure was unsuccessful. This is the last patent covering Celebrex, clearing the way for Lupin, Teva, Mylan, and Watson to compete with generics of this highly successful osteoarthritis and rheumatoid arthritis drug.

Mohsenzadeh – The Circuit agrees with the PTO as to the interpretation of ‎35 U.S.C. § 154‎ and PTO ‎rules relating to patent term adjustments as a result of delays by the PTO during prosecution. ‎The Circuit ‎affirms the judgment of the district court that patent term extensions should not be granted when the ‎delay is in connection with the prosecution of the parent application and not during prosecution of ‎divisional applications. Interestingly, this is a different result than that reached in an earlier case, ruling that ‎delays occurring during the parent were to be applied to a patent issuing from an RCE. ‎

Internet Patents Corp. v. Active Network, Inc., Fed. Civ. Case 2014-1048, -1061, -1062, -1063
(June 23, 2015)

IPC appeals judgments dismissing complaints in four related actions for infringement of its '505 Patent on the ground of patent ineligibility under 35 U.S.C. §101. IPC appealed, and while the appeal was pending, the Supreme Court decided Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014). The panel received supplemental briefing addressing Alice, and now affirms the judgment of the district court.

The ‘505 Patent

The '505 Patent claims "the use of a conventional web browser Back and Forward navigational functionalities without data loss in an online application consisting of dynamically generated web pages." The district court described the '505 Patent subject matter as "retaining information lost in the navigation of online forms," and deemed this to be an abstract concept and thus ineligible for patenting.

Claim 1 is the broadest claim:

1. A method of providing an intelligent user interface to an online application comprising the steps of:

furnishing a plurality of icons on a web page displayed to a user of a web browser, wherein each of said icons is a hyperlink to a dynamically generated online application form set, and wherein said web browser comprises Back and Forward navigation functionalities;

displaying said dynamically generated online application form set in response to the activation of said hyperlink, wherein said dynamically generated online application form set comprises a state determined by at least one user input; and

maintaining said state upon the activation of another of said icons, wherein said maintaining allows use of said Back and Forward navigation functionalities without loss of said state.

A principal issue is whether the additional limitations in other claims of the '505 Patent rescue this method from ineligible abstraction.

Mayo, Alice and Other Supreme Court Cases Applying ‎§101‎

Section 101 defines patent eligible subject matter as "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." Recently, the courts have focused on the patent eligibility of "abstract ideas," but been elusive in defining an all-purpose boundary between the abstract and the concrete, leaving innovators and competitors uncertain as to their legal rights. The present framework starts with the case of Bilski v. Kappos, 561 U.S. 593 (2010), where the Court held that the generally known idea of hedging commodities is not rescued from "abstraction" through the use of computer technology.

In Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012), the Court introduced the "inventive concept" protocol to probe the categories of laws of nature, natural phenomena, and abstract ideas. The Court set forth a two-step methodology for determining patent eligible subject matter. "First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts." Alice, 134 S. Ct. at 2355. If so, the court then considers the elements of each claim "both individually and 'as an ordered combination' to determine whether the additional elements 'transform the nature of the claim' into a patent-eligible application."

The Court described this second step as "a search for an 'inventive concept'—i.e., an element or combination of elements that is 'sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible] concept itself." Alice, 134 S. Ct. at 2355. By "considering all claim elements, both individually and in combination, this methodology is consistent with the general rule that patent claims 'must be considered as a whole." Alice, 134 S. Ct. at 2355 n.3.

Under step one of Mayo/Alice, the claims are considered in their entirety to ascertain whether their character as a whole is directed to excluded subject matter. However, this determination alone does not render the subject matter ineligible. In Mayo, the excluded subject matter was a law of nature, "namely, relationships between concentrations of certain metabolites in the blood and the likelihood that a dosage of a thiopurine drug will prove ineffective or cause harm." 132 S. Ct. at 1296. The Court distilled this ineligible concept from the claims as a whole, and found no inventive concept in routine application of this law of nature.

In Alice, the Court found that the claims were directed to the abstract idea of intermediated settlement, and that no claim elements, alone or in combination, provided the inventive concept of patent-eligible subject matter. The Court held that the known practice of reducing financial risk by passing funds through a "third-party intermediary" did not lose its character as an abstract idea. Although computer capability achieved financial activity of a scope not previously available, no inventive concept was found in the claims, for the "computer functions are 'well-understood, routine, conventional activities' previously known to the industry." Id. at 2359.

The two-step analytic protocol introduced in Mayo directs attention to whether the claim contains an "inventive concept." Determination of what is an inventive concept favors inquiries analogous to those undertaken for determination of patentable invention, for a known idea, or one that is routine and conventional, is not inventive in patent terms, as the Court found in Bilski, Mayo, and Alice. For Bilski and Alice, the conventional idea was based on the use of computers to conduct known forms of financial transactions. For Mayo, the Court held that metabolism of the drug thiopurine is a law of nature, and that instructing physicians to administer the drug according to its presence in the blood "at most adds a suggestion that he should take those natural laws into account when treating his patient." 132 S. Ct. at 1298.

Courts have found guidance in deciding whether the allegedly abstract idea (or other excluded category) is indeed known, conventional, and routine, or contains an inventive concept, by drawing on the rules of patentability. In Alice, the Court elaborated that, for a perceived abstract idea, if the claim "contains an 'inventive concept' sufficient to 'transform' the claimed abstract idea into a patent-eligible application," 134 S. Ct. at 2357, then the claims pass the test of eligibility under section 101.

Applying Bilski, Mayo and Alice to the ‘505 Claims

Applying the guidance of Bilski, Mayo, and Alice to the present appeal, we start by ascertaining the basic character of the subject matter, and then whether there is an "inventive concept" in a claim drawn to some level of abstraction. For the '505 Patent, the end result of "maintaining the state" is described as the innovation over the prior art, and the essential, "most important aspect":

The most important aspect of the user interface of the present invention is not that it has tabs or that it enables a certain amount of non-sequential (non-linear) access to the various form sets within a virtual application, but that it maintains data state across all panes.

IPC stresses the unconventionality of the claim elements of maintaining the state, furnishing icons on a web page with a browser having Back and Forward navigation functions, and displaying an online application form.

We agree with the district court that the character of the claimed invention is an abstract idea: the idea of retaining information in the navigation of online forms. Mayo notes the insufficiency of "well-understood, routine, conventional activities previously known" to found an "inventive concept." 132 S. Ct. at 1298. The '505 Patent specification refers to the "browser Back and Forward button functionality" as "conventional." The specification also states that the use of internet web pages for users to fill out online applications was brought about by "the increasing popularity of the Internet and the World Wide Web," and describes these online application systems as generating information to the user based on information inputted by the user. As the district court observed, claim 1 contains no restriction on how the result is accomplished. The mechanism for maintaining the state is not described, although this is stated to be the essential innovation. The court concluded that the claim is directed to the idea itself—the abstract idea of avoiding loss of data. IPC's proposed interpretation of "maintaining state" describes the effect or result dissociated from any method by which maintaining the state is accomplished upon the activation of an icon. Thus we affirm that claim 1 is not directed to patent-eligible subject matter.

The Other Claims

Independent claims 9 and 17 are identical to claim 1 except that their preambles state "[a] computer system for providing an intelligent user interface to an online application, comprising computer instructions for" (claim 9) and "[a] computer-readable storage medium, comprising computer instructions for" (claim 17). The statement that the method is performed by computer does not satisfy the test of "inventive concept." Alice, 134 S. Ct. at 2360.

Claims 2 and 10 depend from claims 1 and 9, respec‎tively, and require merely that "displaying said dynamically ‎generated online application form set comprises combining information from a template file and ‎either a database or a conditional merge file or both ‎to form said dynamically generated online application form set.‎"

Claims 7, 15, and 23 depend from claims 1, 9, and 17, ‎respectively, and state that "said web page comprises quasi-‎static elements distinct from said dynamically ‎generated online application form set, wherein said displaying said dynamically generated online ‎application form set in response to the activation ‎of said hyperlink affects the display of said quasi-static elements.‎"

According to the panel, the additional limitations of these dependent claims do ‎not add an inventive concept, for they represent merely generic data collection steps or siting the ineligible concept in a particular technological environment.

Comment: Other than a brief affirmance of an invalidity ruling in Fuzzy Sharp Techs., Inc. v. Intel Corp., 595 Fed. Appx. 996 (Fed. Cir. 2015), the Circuit has now, post- Alice, evaluated ‎§‎ 101 eligibility in eight different computer-implemented cases and in ‎every instance other than the divided opinion in DDR Holdings, LLC v., L.P., 773 F.3d 1245 (Fed. Cir. 2014) in December, has found the claims invalid. See OIP Techs., Inc. v., Inc., 2015 U.S. App. LEXIS 9721 (Fed. Cir. June 11, 2015),Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014), buySAFE, Inc. v. Google, Inc., ‎‎765 F.3d 1350 (Fed.Cir. 2014), Planet Bingo, LLC v. VKGS, LLC, 2014 U.S. App. LEXIS 16412 (Fed. Circ. 2014)(non-precedential), Digitech Image Technologies, LLC v. Electronics for Imaging, 758 F.3d 1344 ‎‎(Fed.Cir. 2014), and Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343 (Fed. Cir. 2014). Hopefully we will get additional guidance soon on how we really should be describing and claiming our clients' computer and internet-related inventions.

TomTom, Inc. v. Michael Adolph, Fed. Cir. Case 2014-1699 (June 19, 2015)

The panel reverses the district court as to four claim phrases and therefore reverses a determination that Tom Tom's personal navigation device does not infringe. The ruling as to two of the phrases dealing with whether the preamble is limiting and whether there is a clear and unambiguous disavowal are of interest.

The '836 patent in suit describes "a method and device for generating, merging and updating data" that can then be used to provide a mobile unit with current, and continuously updated, accurate road network, route, and traffic information. A purpose of the invention is "to establish a method to generate appropriate data utilizable for a practical destination tracking system which carries out permanent self-updating and with data generation which requires little effort. Claim 1 provides:

1. A method for generating and updating data for use in a destination tracking system of at least one mobile unit comprising:

generating and storing traveled distance data in at least one storage device provided in said mobile unit at least at predetermined time intervals, wherein the traveled distance data represent traveled sections by at least a series of nodes P i and to each node P i geographical coordinates x i and y i are assigned;

generating and storing section data in the storage device provided in the mobile unit, said section data being generated by selecting, from the traveled distance data, nodes P j and P k , which define contiguous sections P j P k , to which at least their geographical starting point and end point are assigned; and

generating a section data file from the section data and storing the section data file in the storage device provided in the mobile unit, said section data file being continuously supplemented and/or updated with section data newly generated by the mobile unit.

A. The District Court Incorrectly Construed the Preamble
Term "Method for Generating and Updating Data" As
a Limitation

The preamble of claim 1 of the '836 patent recites "[a] method for generating and updating data for use in [("the generating language")] a destination tracking system of at least one mobile unit comprising." The district court held that because the phrase "at least one mobile unit" provides an antecedent basis for the later use of the terms "said mobile unit" and "the mobile unit" in the body of the claim, the entire preamble must be construed. The court adopted TomTom's construction and determined that the phrase "generating and updating data for use in" means "the data generated and updated by the mobile unit is used by that unit."

Dr. Adolph contends the district court erred in determining that because it relied on one portion of the preamble [i.e., at least one mobile unit] to resolve an antecedent basis concern, it should also convert other unrelated portions of the preamble [i.e., the generating language] into new substantive claim limitations. TomTom counters that the court properly construed the entire preamble.

If a preamble recites essential structure or steps, or if it is necessary to give life, meaning, and vitality to the claim, then the preamble can limit the scope of a claim. Conversely, a preamble is not limiting where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.

The district court correctly concluded—and the parties do not seem to dispute—the phrase "destination tracking system of at least one mobile unit" is limiting because the claims do not concern just any "mobile unit," but rather "generating and updating data for use in a destination tracking system of at least one mobile unit." However, the court erred in determining that it had to construe the entire preamble if it construed a portion of it.That the phrase in the preamble "destination tracking system of at least one mobile unit" provides a necessary structure for claim 1 does not necessarily convert the entire preamble into a limitation, particularly one that only states the intended use of the invention.

Thus, the generating language is not limiting and does not provide an antecedent basis for any of the claims. Rather, it is language stating a purpose or intended use and employs the standard pattern of such language: the words "a method for a purpose or intended use comprising," followed by the body of the claim, in which the claim limitations describing the invention are recited.

Additionally, the invention claimed in the '836 patent is structurally complete without the generating language. A preamble is not regarded as limiting when the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention.

Claim 1 is directed to a method for generating and updating travel-related data and does not require the data to be used later as the district court found. It requires only that the data be generated, selected, stored, and continuously updated. All of these steps are performed within the body of claim 1. Though the collected data could at some point be used in the context of a navigation system, this is not required of claim 1, and does not convert it into a claim limitation.

B. The Court Incorrectly Construed the Phrase "Destination
Tracking System of at Least One Mobile Unit"

In construing the phrase "destination tracking system of at least one mobile unit," the court concluded Dr. Adolph disclaimed methods performed on "systems that (i) contain information relating to existing road networks, (ii) rely on an initial database, and (iii) require for operation the initial input of road data." Dr. Adolph argues the court incorrectly interpreted the prosecution history, and therefore misconstrued the phrase, and should replace "does not contain" maps with "does not require" maps. Specifically, Dr. Adolph contends that during prosecution he stated that the invention described by claim 1 does not require an initial map database, not that it does not contain one. Appellees counter the district court correctly found prosecution history disclaimer when Dr. Adolph differentiated his invention from Saito.

The panel concludes that nowhere does Dr. Adolph actually assert that the invention described by claim 1 does not contain an initial map database. Because there is no "clear and unambiguous" disclaimer that the tracking system does not contain an initial map database, we reverse the district court's construction.

Comment: The Circuit has dealt with disavowal in a number of cases in the past year, almost always finding that the disavowal is not clear and unambiguous. Some of those disavowals have been alleged or found in the prosecution history and others in the specification. See Vederi, LLC v. Google, Inc., 744 F.3d 1376 (Fed. Cir. 2014)‎(prosecution), Hill-Rom Servs. v. Stryker Corp., 755 F.3d 1367 (Fed. Cir. 2014)(specification), ‎ Pacing Techs., LLC v. Garmin Int'l, Inc., 778 F.3d 1021 (Fed. Cir. 2015)(specification) and Shire Dev., LLC v. Watson Pharms., Inc., 2015 U.S. App. LEXIS 9250 (Fed. Cir. June ‎‎3, 2015)‎(prosecution). Contrast, Golden Bridge Tech., Inc. v. Apple Inc., 758 F.3d 1362 (Fed. Cir. 2014)‎(prosecution) and E2Interactive, Inc. v. Blackhawk Network, Inc., 561 Fed. Appx. 895 (Fed. Cir. 2014)‎(prosecution), and X2Y Attenuators, LLC v. ITC, 757 F.3d 1358 (Fed. Cir. 2014) (specification), where clear disavowals were found.

G.D. Searle LLC v. Lupin Pharmaceuticals, Inc., Fed. Cir. Case 2014-1476 (June 23, 2015)

The doctrine of obviousness-type double patenting is intended to prevent the extension of the term of a patent by prohibiting the issuance of claims of a second patent that are not patentably distinct from the claims of a first patent. The double patenting issue in this case turns on whether Pfizer is entitled to invoke 35 U.S.C. § 121 as a defense against a claim of double patenting.

The '068 patent can be traced back to a filing in 1993. That application ("the '594 application"), disclosed and claimed compounds, compositions, and methods of use regarding the treatment of pain and inflammation without the harmful side effects associated with certain traditional anti-inflammatory drugs.

In a 1994 office action the PTO imposed a three-way restriction requirement, identifying the compound, composition, and method-of-use claims as directed to patentably distinct subject matter. Pfizer elected the compound claims, which issued as the ‘823 patent. Pfizer prosecuted the composition claims in a divisional application ("the '059 application"), which matured into the ‘165 patent. Pfizer did not file a divisional application to prosecute the method-of-use claims. Instead, prior to receiving the restriction requirement, it filed a CIP ("the '629 application") that included new matter. The '629 application contained all three classes of claims, including claims covering the new matter, and it issued as the ‘207 patent.

Pfizer then filed a PCT application designated as a CIP of the '629 and '594 applications. The PCT application contained all three classes of claims, and it encompassed much of the subject matter in the method-of-use claims that had been restricted out of the '594 application. The PCT application became a national stage application in the U.S. as the '113 application. During the prosecution of the '113 application, the examiner issued a lack of unity rejection/restriction requirement, again limiting Pfizer to prosecuting only one of the three classes of claims. Pfizer elected to prosecute only method-of-use claims in the '113 application, which matured into the '068 patent. The '068 patent describes itself as issuing from a CIP of the '629 application, which was a CIP of the original '594 application.

In an earlier case we held claims of the '068 patent invalid for obviousness-type double patenting in light of the earlier issued '165 patent. Pfizer had attempted to invoke the safe harbor provision of § 121, which in certain circumstances protects a patent that issues on a divisional application from invalidation based on a related patent that issued on an application as to which a restriction requirement was made. We held that even though both the '165 patent and the '068 patent traced their lineage back to the original '594 application, the safe harbor provision did not shield the '068 patent from the invalidating effect of the '165 patent because the protection afforded by § 121 is limited to divisional applications, and the '068 patent issued from a CIP, not a divisional application.

Pfizer subsequently filed the '319 application, seeking reissue of the '068 patent, asserting that it had erred in prosecuting the application leading up to the '068 patent as a CIP, rather than as a divisional application, and that the error had resulted in invalidating the relevant claims of the '068 patent.

A preliminary amendment that accompanied the initial reissue declaration made the following changes to the '068 patent: (1) it deleted portions of the '068 patent specification that were not present in the '594 application; (2) it designated the '113 application as a divisional of the '594 application and removed the priority claim to the '629 application; (3) it amended claim 1 to be a method claim using only the compounds originally disclosed in the '594 application; (4) it canceled claims 2-12, which were method claims using compounds that were not present in the '594 application; (5) it canceled claim 18 (reciting a method of preventing colorectal cancer), which was not found in the '594 application; and (6) it added new method claims 19-23, which recited the use of the method disclosed in claim 1 to treat five specific types of inflammation-associated disorders. The preliminary amendment stated that those actions were taken to conform the '068 patent to a divisional of the '594 application.

The examiner rejected the preliminary amendment, finding that the "error" identified in Pfizer's reissue declaration was not correctable under § 251. Pfizer then filed an RCE and submitted an additional reissue declaration, in which it cited various technical errors relating to the claimed chemical structures that it wished to correct through the reissue. Those technical errors, according to Pfizer, rendered the claims of the '068 patent indefinite and were therefore eligible for correction by reissue under section 251

The examiner found that the later-identified technical errors provided a proper basis for reissue under section 251. Pfizer was allowed to correct those technical errors; it was also allowed to make additional changes, including designating the '113 application from which the '068 patent issued as a divisional of the '594 application and removing subject matter not present in the '594 application. The PTO eventually allowed the claims of the '319 application, which issued as the RE '048 patent on March 5, 2013.

On the day the RE '048 patent issued, Pfizer filed the instant case against five generic drug manufacturers, alleging infringement of the RE '048 patent. The court granted defendants' motions for summary judgment, finding that the RE '048 patent was not a valid reissue patent because Pfizer's asserted error of prosecuting a prior patent application as a CIP, rather than as a divisional, was not correctable by reissue under section 251. The court further found that the safe harbor provision of 35 U.S.C. § 121 did not apply to the RE '048 patent, and that the relevant claims of the RE '048 patent were invalid for obviousness-type double patenting in light of the '165 patent. This appeal followed.

The Safe Harbor Provision of 35 USC §121 Does Not Apply

The parties present two issues: (1) whether § 251 authorized the PTO to reissue the '068 patent; and (2) assuming reissue was authorized, whether the safe harbor provision of § 121 applies to the RE '048 patent and protects it from invalidation based on the '165 patent. Because we find that the safe harbor provision of section 121 does not apply to the RE '048 patent, we affirm the district court's judgment.

The safe harbor provision of section 121 provides as follows:

A patent issuing on an application with respect to which a requirement for restriction under this section has been made … shall not be used as a reference … against a divisional application or against the original application … if the divisional application is filed before the issuance of the patent on the other application.

We apply a strict test for application of § 121, given the potential windfall a patent term extension could provide to a patentee. It is undisputed here that the reference '165 patent issued on a divisional of the original '594 application, which was filed as a result of the July 1994 restriction requirement. The challenged RE '048 patent, however, is not entitled to safe harbor protection, because it did not issue on either the '594 application or a divisional of the '594 application. The RE '048 patent issued from the '319 application, a reissue of the '068 patent, which in turn issued from the '113 application. The '113 application cannot be a divisional of the '594 application, despite being designated as such in the reissue patent, because it contains new matter that was not present in the '594 application. Simply deleting that new matter does not retroactively alter the nature of the '113 application.

Moreover, when the '113 application issued as the '068 patent, Pfizer obtained patent protection for the new matter that was not present in the '594 application. For years thereafter, the public was not free to practice that new matter because of that patent protection. Pfizer cannot now retroactively relinquish the new matter, after having enjoyed years of patent protection for it, and thereby take advantage of the safe harbor provision, years after the fact.

The '113 application is a national stage application of the PCT application. The PCT application, like the '113 application, is not a division of the '594 application. The PCT identified itself as a CIP of the '594 application and as a CIP of the '629 application; it added compound, composition, and method-of-use claims that were not contained in those applications. Pfizer does not assert that the PCT application can become a divisional application of the '594 application for section 121 purposes simply by disregarding all matter not present in the original '594 application, and for good reason. Pfizer obtained foreign patent protection based on the PCT application. Altering the scope of the PCT application could call into question the proper scope of those foreign patents. Thus, because the PCT application contains matter not present in the original '594 application, it cannot be a division of the '594 application. Because the RE '048 patent identifies itself as descended from the '113 application and the PCT application, and because neither of those applications is a division of the original '594 application, the section 121 safe harbor does not apply to the RE '048 patent.

Section 121 is inapplicable to the RE '048 patent for a second reason as well: The RE '048 patent (the challenged patent) and the '165 patent (the reference patent) are not "derived from the same restriction requirement." When separate restriction requirements are imposed on separate applications and the record does not show that any of the various restriction requirements carried forward from one application to the next, the earlier restriction requirement cannot be viewed as having continued in effect with respect to the later-filed application. Pfizer contends that the 1994 restriction requirement nonetheless should be deemed to have carried forward to the '113 application because, "but for the 1994 restriction requirement" Pfizer could have pursued the claims contained in the RE '048 patent in the original '594 application. The panel rejects that argument since the case on which Pfizer relies, Boehringer Ingelheim Int'l GmbH v. Barr Labs., Inc., 592 F.3d 1340 (Fed. Cir. 2010), does not go that far.

Hossein Mohsenzadeh v. Michelle K. Lee, Fed. Cir. Case No. 2014-1499 (June 25, 2015)

This action deals with the issue of whether delays in connection with a parent application should result in a patent term extension as to patents issuing from divisional applications. The patent term adjustment statute, 35 U.S.C. § 154, has two provisions restoring patent term to patentees for delays attributable to the PTO that occur prior to the issuance of a patent. "A Delay" refers to the PTO's failure to timely take certain actions or provide certain notices to the patentee. 35 U.S.C. § 154(b)(1)(A). "B Delay" refers to the PTO's failure to issue a patent within three years of the actual filing date of the application. Id. § 154(b)(1)(B). The statute requires the agency to extend the term of the patent by one day for each day the issuance of a patent is delayed under either section 154(b)(1)(A) or (B). This appeal concerns only A Delay. ‎

Mohsenzadeh's Patent Applications

Mohsenzadeh filed a '905 application on July 6, 2001. Though the 14-month notification period of 35 U.S.C. § 154(b)(1)(A) ended on September 6, 2002, the PTO did not notify Mohsenzadeh that the '905 application was subject to a restriction requirement until September 21, 2006. When the ‘984 patent issued, the PTO granted a patent term adjustment of 2,104 days. Following the restriction requirement and prior to issuance of the ‘984 patent, Mohsenzadeh filed two divisional applications, which subsequently issued as the ‘362 patent and the ‘963 patent. Neither patent was granted any extension because the PTO ruled that delays during the pendency of the divisionals did not entitle the applicant to patent term adjustments.

In the district court the PTO prevailed in its argument that the repeated use of singular nouns throughout § 154(b)(1)(A)—"an original patent," "an application"— followed by instructions on extending the term of "the patent" shows that an applicant "is entitled to 'A delay' only for the patent that yielded from the initial application." The district court granted the government's motion for summary judgment on two grounds. First, the court held that 35 U.S.C. § 154 unambiguously requires that a patent term adjustment apply for delays that occurred during prosecution of the actual application from which the patent directly issued, not the application from which it derived priority. Second, the court held that the PTO's interpretation of 35 U.S.C. § 154 was "reasonable and entitled to some deference."

Arguments on Appeal

Both Mohsenzadeh and the government focus their arguments on the text of 35 U.S.C. § 154. Mohsenzadeh argues that the statute was enacted to adjust the terms of all patents impacted by delays caused by the PTO. Mohsenzadeh contends this is shown by the language of the statute, which considers the delay caused to the issuance of "an original patent" based on the PTO's failure to provide certain notifications within 14 months of the date on which "an application" was filed. 35 U.S.C. § 154(b)(1)(A)(i)(I). He relies on the sequence of the pronouns in the following excerpt of the statute:

if the issue of an original patent is delayed due to the failure of the Patent and Trademark Office to-

(i) provide at least one of the notifications under section 132 or a notice of allowance under section 151 not later than 14 months after-

    • (I) the date on which an application was filed under section 111 (a); or

  • (II) the date of commencement of the national stage under section 371 in an international application;

the term of the patent shall be extended 1 day for each day [of delay]

35 U.S.C. § 154(b)(1)(A) (emphases added). Mohsenzadeh claims that delays in the issuance of "an original patent," here each of the '362 and '963 patents, was caused by delays in providing notice for "an application," here the '905 application. Thus, the consecutive uses of the indefinite article "an"—before "original patent" and "application"—allows delays in the prosecution of one patent to be counted in the patent term adjustment of more than one patent.

The government responds by arguing that 35 U.S.C. § 154(b)(1)(A) does not contemplate parent and continuing applications through use of the terms "an original patent" and "an application," but rather one single application. The government points out that Congress expressly referred to both "applications" (i.e., continuing applications) and "earlier filed applications" (i.e., parent applications) in § 154(a)(2). This, the government contends, undermines Mohsenzadeh's contention that Congress intended to impute delays from the prosecution of a parent application to any continuing applications deriving therefrom. The government also argues that the history of amendment of § 154(b)(1)(A)(i) confirms that Congress was referring to a single application throughout.

The Statute's Plain Language Resolves the Dispute

The language of the provision of the patent term adjustment statute at issue, 35 U.S.C. § 154(b)(1)(A), clearly shows that Congress intended delay in the prosecution of an application to be restored to a single patent, the patent issuing directly from that application. In other words, the term of any patent arising from a continuing application is not restored for delay in the prosecution of the parent patent's application.

The statute's reference to "an original patent" and later to "an application" does not conclusively show that Congress intended the provision to refer to multiple applications merely because it used "an" in the second instance instead of "the." Had Congress intended for the period of delay during prosecution of a parent application to be restored for all continuing applications deriving from it, it would have done so expressly.

As the government argues, the legislative history provides further support for the PTO's position. Specifically, Congress' insertion of the provision governing international applications in § 154(b)(1)(A)(ii) when it amended the statute in 2000 also signifies that Congress did not intend for patent term adjustments in continuing applications to be made for delays in parent applications.

Because the plain language of 35 U.S.C. § 154(b)(1)(A) does not provide patent term adjustments in continuing applications based on delays in the prosecution of parent applications, we affirm the judgment of the district court.