ARQULE, INC. v. Kappos
2011 U.S. Dist. LEXIS 66370
D.D.C.2011Background
- ArQule sued the PTO Director in his official capacity under 35 U.S.C. §154 and the APA over patent term adjustment for the ’969 patent.
- The PTO awarded 1,127 days of adjustment (675 A delay, 456 B delay; minus 3 days overlap and 1 day for applicant delay).
- Applicant delay was 1 day because the reply to an August 11, 2009 office action was filed November 12, 2009, claimed to be three months and one day after the notice; Veterans Day rendered Nov 11, 2009 a federal holiday.
- ArQule argued the 1-day applicant delay should be zero because the deadline fell on a federal holiday, triggering the weekend/holiday exception.
- PTO denied the reduction, and ArQule challenged the calculation in district court; both sides moved for summary judgment.
- Court grants ArQule’s cross motion and denies PTO’s motion, holding the PTO’s interpretation of §154(b)(2)(C)(ii) was arbitrary and contrary to the statute.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether 21(b) weekend/holiday exception applies to 154(b)(2)(C)(ii). | ArQule asserts 21(b) applies to applicant delay. | Kappos argues 21(b) does not apply to §154(b)(2)(C)(ii). | Yes; 21(b) applies. |
| Whether §154(b)(2)(C)(ii) describes an applicant action. | §154(b)(2)(C)(ii) describes an applicant's response time. | §154(b)(2)(C)(ii) is a PTO calculation rule. | It describes an applicant action. |
| Whether the interaction of §133 timeliness and §154(b)(2)(C)(ii) permits 21(b) relief. | Timeliness under §133 and delay under §154(b)(2)(C)(ii) should be harmonized with 21(b). | They are separate; 21(b) should still be limited for §133. | They harmonize; 21(b) applies to both. |
| Whether the court should defer to PTO interpretations under Chevron. | Statutory language is clear; no deference warranted. | Chevron deference should apply to agency interpretation. | Plain meaning controls; no deference needed. |
Key Cases Cited
- Wyeth v. Kappos, 584 F.3d 1369 (Fed. Cir. 2010) (statutory language controls where unambiguous)
- Chevron, U.S.A., Inc. v. Natural Resources Defense Council, Inc., 467 U.S. 837 (1984) (two-step framework for agency interpretations)
- Eagle Broad. Group, Ltd. v. FCC, 563 F.3d 543 (D.C. Cir. 2009) (canons of construction; plain meaning matters)
- Davis v. Michigan Dep't of Treasury, 489 U.S. 803 (1989) (read statutes in context; ordinary meaning)
- Perrin v. United States, 444 U.S. 37 (1979) (words take ordinary, contemporary meaning)
- Wingrove v. Langen, 230 U.S.P.Q. 353 (BPAI 1985) (weekend/holiday exception applied to 119(a))
- Olah v. Kuhn, 131 U.S.P.Q. 41 (P.T.O.B.A. 1960) (weekend/holiday exception applied to 102(b))