The following is a summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit for the week ending December 12, 2014. Paki Banky and Michele Glessner prepared this edition.
Case Summaries
Patent Office Procedures: Prosecution Before the Office: Generally
Japanese Foundation for Cancer Research v. Lee, Nos. 13-1678, 14-1014 (Fed. Cir. (E.D. Va.) Dec. 9, 2014). Opinion by Prost, joined by Dyk and Taranto.
Ruling that the U.S. Patent and Trademark Office (“PTO”) acted within its authority when refusing to withdraw a terminal disclaimer, the Federal Circuit reversed the district court’s determination on summary judgment that the PTO had acted arbitrarily and capriciously and had abused its discretion. Specifically, because the PTO determined the terminal disclaimer was valid and was filed by a proper representative, the case did not contain the kind of “extremely rare circumstances” to justify overturning an agency action.
U.S. Patent No. 6,194,187 (“the ’187 patent”), assigned to the Japanese Foundation for Cancer Research (“the JFCR”) issued in February 2001. In 2011, the JFCR’s attorney of record responsible for the prosecution of the ’187 patent filed a terminal disclaimer with the PTO surrendering the entire term of all claims of the ’187 patent. Shortly thereafter, the JFCR filed a petition to withdraw the terminal disclaimer, representing that it “was not filed in the context of any litigation or an assertion of double patenting” and had not yet been made public by either the foundation or the PTO. The PTO subsequently denied the petition because the filed terminal disclaimer included all of the information required, as well as the fee required, and was filed by an authorized party. The PTO noted that there are no mechanisms available to withdraw or amend a terminal disclaimer.
In a subsequent request for reconsideration, the JFCR included several declarations, including one from its executive director. According to the JFCR, the disclaimer was filed as a result of a miscommunication, and the JFCR neither requested nor authorized the disclaimer. The PTO denied the request. The JFCR then filed suit in the U.S. District Court for the Eastern District of Virginia challenging the agency’s ruling. The court ruled in the JFCR’s favor and ordered the PTO to withdraw the terminal disclaimer, absent a finding that the foundation actually authorized its filing. The PTO appealed to the Federal Circuit.
On appeal, the JFCR argued that the PTO is authorized under 35 U.S.C. § 255 to issue a certificate of correction to correct a “clerical error,” which would include an error made by the JFCR’s paralegal (a clerk) in requesting that the JFCR’s counsel file the terminal disclaimer. The Federal Circuit rejected this argument, noting that even if the paralegal were considered a clerk, the terminal disclaimer was filed by the JFCR’s attorney of record and did not constitute a clerical error.
As such, the Federal Circuit held that there is no basis for withdrawing the terminal disclaimer on the ’187 patent by means of a certificate of correction under § 255.
The JFCR also argued that the PTO has inherent authority to withdraw a mistakenly filed terminal disclaimer. Again, the Federal Circuit disagreed. First, the Federal Circuit held that the PTO acted within its authority when deciding not to withdraw the terminal disclaimer after reconsidering its initial decision. Second, the Federal Circuit did not fault the PTO for not delving into the record and evaluating the merits of the JFCR’s assertion that its attorney of record filed the disclaimer because of certain miscommunications, holding that a patentee is bound by the actions or inactions of his voluntarily-chosen representative.
Therefore, the Federal Circuit reversed the district court and held that the PTO did not act arbitrarily, act capriciously, or abuse its discretion in declining to use any inherent authority that it may have in withdrawing the terminal disclaimer on the ’187 patent.
http://www.cafc.uscourts.gov/images/stories/opinions-orders/13-1678.Opinion.12-5-2014.1.PDF
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