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Pfizer, Inc. v. Lee

United States Court of Appeals for the Federal Circuit

January 22, 2016, Decided

2015-1265

Opinion

 [***1783]  [*468]   O'MALLEY, Circuit Judge.

Appellants Pfizer, Inc. and Wyeth Holdings Corporation appeal the district court's grant of summary judgment in favor of the United States Patent and Trademark Office ("PTO") on the issue of whether the PTO properly calculated the length of a patent term adjustment ("PTA") for U.S. Patent No. 8,153,768 (the "'768 patent").1 For the reasons below, we affirm the judgment of the district court.

Background

A. Statutory Framework for Patent Term Adjustment

] A patent has a term of twenty years from the patent application's effective filing date. 35 U.S.C. § 154(a)(2). Thus, an issued patent's twenty-year term is measured from the filing date of the parent patent application. An issued patent's enforceable life thus depends on the length of the PTO's examination of a patent application. To account for any undue delays in patent examination caused by the PTO, Congress established a system of patent term adjustment to compensate inventors for lost time on their patent term resulting from such delays.

] The Patent Term Guarantee Act ("the Act"), 35 U.S.C. § 154(b), provides for the restoration of patent term in three circumstances:

(i) an "A-Delay," which awards PTA for delays arising from the USPTO's failure to act by certain examination deadlines; (ii) a "B-Delay," which awards PTA for an application pendency exceeding three years; and (iii) a "C-Delay," which awards PTA for delays due to interferences, secrecy orders, and appeals. The USPTO calculates PTA by adding the A-, B-, and C-Delays, subtracting any  [*469]  overlapping days, and then subtracting any days attributable [**3]  to applicant delay.

Pfizer, Inc. v. Lee, No. 12-cv-01131, 119 F. Supp. 3d 385, 2014 U.S. Dist. LEXIS 184554, at *4-5 (E.D. Va. Nov. 6, 2014) ("District Court Opinion") (citing Wyeth v. Kappos, 591 F.3d 1364, 1367 (Fed. Cir. 2010)). It is "A Delay" that is at issue in this appeal. With respect to A Delay, the Act provides for restoration of patent term "if the issue of an original patent is delayed due to the failure of the Patent and Trademark Office to provide at least one of the notifications under section 132 or a notice of allowance under section 151" within the times specified in the statute. 35 U.S.C. § 154(b)(1)(A) (emphasis added). Section 132 in turn provides that, if a patent examiner finds that a patent application does not comply with the standards of patentability, the examiner will issue an office action with respect to the application, "stating the reasons for such rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of his application." Id. § 132. Thus, the Act provides that A Delay will not accrue when the PTO "provide[s] at least one of the notifications under section 132." Id.

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811 F.3d 466 *; 2016 U.S. App. LEXIS 1088 **; 117 U.S.P.Q.2D (BNA) 1781 ***

PFIZER, INC., A DELAWARE CORPORATION, WYETH HOLDINGS CORPORATION, A MAINE CORPORATION, Plaintiffs-Appellants v. MICHELLE K. LEE, UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE, Defendant-Appellee

Prior History:  [**1] Appeal from the United States District Court for the Eastern District of Virginia in No. 1:12-cv-01131-GBLTRJ, Judge Gerald Bruce Lee.

Pfizer, Inc. v. Lee, 119 F. Supp. 3d 385, 2014 U.S. Dist. LEXIS 184554 (E.D. Va., Nov. 6, 2014)

CORE TERMS

patent, invention, corrected, district court, delayed, issuance, reasons, notice, requirement of notice, summary judgment, incomplete, deadline, elect, statutory basis, classified, grounds, classification, notifications, calculated, compensate, responded, mailed, guess, patent application, automatically, counter, merits, holds

Patent Law, Infringement Actions, Exclusive Rights, US Patent & Trademark Office Proceedings, Examinations, Office Actions, Jurisdiction & Review, Subject Matter Jurisdiction, Appeals, Administrative Law, Judicial Review, Standards of Review, Civil Procedure, Appeals, Reviewability of Lower Court Decisions, Preservation for Review, Continuation Applications, Divisionals & Restrictions