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 February 27, 2015. Benn Wilson and Chris Douglas prepared this edition.
Patent Office Procedures: Generally
Patent Office Procedures: Prosecution Before the Office: Generally
Patent Office Procedures: Prosecution Before the Office: Prosecution of Applications: Generally
Gilead Sciences, Inc. v. Lee, No. 14-1159 (Fed. Cir. (E.D. Va.) Feb. 26, 2015). Opinion by Wallach, joined by Dyk and Hughes.
The Federal Circuit affirmed the district court’s grant of summary judgment holding that the Patent and Trademark Office (“PTO”) properly reduced the Patent Term Adjustment (“PTA”) period for Gilead’s patent in view of the filing of a supplemental information disclosure statement (“IDS”) after the filing of a response to a restriction requirement.
On February 22, 2008, Gilead Sciences, Inc. (“Gilead”) filed an application that eventually issued as U.S. Patent No. 8,148,374 (“the ’374 patent”). During the prosecution of the ’374 patent, the PTO issued a restriction requirement. Fifty-seven days after responding to the restriction requirement, and prior to a first action on the merits, Gilead filed a supplemental IDS. After allowance of the case, the PTO calculated the PTA for the ’374 patent by subtracting the fifty-seven days from the total PTA. In subtracting the fifty-seven days, the PTO cited the failure of the applicant to engage in reasonable efforts to conclude processing or examination of an application by filing a supplemental paper, other than a supplemental reply or other paper expressly requested by the examiner, after a reply had been filed.
Gilead appealed to the district court, arguing that the PTO’s application of 35 U.S.C. § 154(b) was “arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with the law and in excess of statutory jurisdiction, authority, or limitation.” The district court held that Gilead had not shown that the PTO’s interpretation of the PTA provision was unreasonable and, as a result, granted the PTO’s motion for summary judgment.
The Federal Circuit reviews PTA decisions by the PTO in accordance with the Administrative Procedures Act, applying the two-step Chevron framework. Under the first step, the Federal Circuit concluded that Congress had not addressed the precise issue of PTA. However, in view of the legislative history, the Federal Circuit held that there was nothing to suggest Congress intended to restrict PTA based on actual delay, but instead intended to penalize applicant conduct itself.
Because Congress had not addressed the precise question at issue, the inquiry proceeded to an analysis under the second step of Chevron. The Federal Circuit held that 35 U.S.C. § 154 broadly delegated authority to the PTO to define circumstances that constitute a failure to engage in reasonable efforts to conclude prosecution. That broad delegation suggested that Congress intended the PTO to employ its expertise in defining such circumstances. Under that delegation, the PTO enacted a regulation addressing this precise circumstance—filing a supplemental IDS after responding to a restriction requirement. Thus, the Federal Circuit concluded that it was reasonable to find that Congress intended to sanction applicant conduct that had the potential to result in delay, regardless of whether delay actually occurred.
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