By Fitch Even attorney Jonathan C. Hughley
Exelixis I was decided by Judge Ellis of the Eastern District of Virginia. The Exelixis II case was decided by Judge Brinkema, another judge within that district. In her decision, she explicitly rejected the Exelixis I decision, holding that the U.S. Patent and Trademark Office (USPTO) had correctly applied the patent statute in determining that the filing of an RCE after the three-year anniversary of the application filing date does toll the Type B delay period. The court concluded that the USPTO's interpretation of its own regulations was entitled to so-called "Skidmore deference" because "it is a 'reasonable conclusion as to the proper construction of the statute.'" Judge Brinkema's opinion has thus created an intra-district split of opinion.
As noted in our earlier alert, the USPTO has appealed the Exelixis I case. The USPTO also appealed in Novartis AG v. Kappos [enhanced version available to lexis.com subscribers], a case following Exelixis I. An appeal in Exelixis II is expected and it is likely that the Federal Circuit will consolidate at least the Exelixis I and II cases and will issue a clarifying opinion toward the end of 2013.
© 2013 FITCH, EVEN, TABIN & FLANNERY LLP
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