Bristol-Myers Squibb Company v. Doll
841 F. Supp. 2d 238
D.D.C.2012Background
- BM? SOS: BM Squibb and Kosan filed 6/17/2009 to review PTO patent term adjustments; Wyeth v. Kappos influencing decision.
- Plaintiffs identified 21 patents with 21 counts; eight counts remained after prior remands.
- Actions consolidated with Bristol-Myers Squibb v. Kappos, Civ. No. 09-2420; Count Four pending there.
- Defendant moved to dismiss remaining claims as untimely under 35 U.S.C. § 154(b)(4)(A); plaintiffs cross-moved for summary judgment.
- Court held appeals timely; remanded remaining counts to PTO for recalculation consistent with Wyeth v. Kappos.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether § 154(b)(4)(A) tolls the 180-day filing period | PTO reconsideration tolls period | Tolling inapplicable; fixed date governs | Yes; tolling applies |
| Whether Locomotive Engineers tolling rule applies to § 154(b)(4)(A) | Locomotive Engineers tolling applies | Stone v. INS carve-out applies | Yes; general tolling applies |
| Whether Stone exception applies to this patent-term context | No Stone exception | Stone controls | No; Stone exception not applicable |
| Whether the remaining counts are timely | Timeliness preserved by tolling | Untimely despite tolling | Timely; remand for recalculation |
| What is the remedy after tolling determination | Remand to PTO per Wyeth v. Kappos | Dismiss with prejudice? | Remand to PTO for recalculation; claims dismissed without prejudice |
Key Cases Cited
- Interstate Commerce Commission v. Brotherhood of Locomotive Engineers, 482 U.S. 270 (1987) (tolling rule applies to agency review unless statute expressly contravenes)
- Clifton Power Corp. v. FERC, 294 F.3d 108 (D.C. Cir. 2002) (tolling until agency proceedings complete)
- Columbia Falls Aluminum Co. v. EPA, 139 F.3d 914 (D.C. Cir. 1998) (tolling applies despite fixed appeal deadline)
- Los Angeles SMSA Ltd. P’ship v. FCC, 70 F.3d 1358 (D.C. Cir. 1995) (rehearing tolls appeal period)
- Stone v. INS, 514 U.S. 386 (1995) (exception to tolling not present when agency language requires consolidation)
- Riffin v. Surface Transp. Bd., 331 F. App’x 751 (D.C. Cir. 2009) (tolling due to timely reconsideration petitions)
- United Transp. Union v. Interstate Commerce Comm’n, 871 F.2d 1114 (D.C. Cir. 1989) (reconsideration renders action nonfinal)
- TeleSTAR, Inc. v. FCC, 888 F.2d 132 (D.C. Cir. 1989) (policy against delaying reconsideration)