Chudik v. Hirshfeld, 987 F.3d 1033

Dr. Steven Chudik filed a patent application for a shoulder‑surgery guide on Sept. 29, 2006; the patent issued as U.S. Patent No. 9,968,459 on May 15, 2018.
After a 2010 final rejection, Chudik filed a Request for Continued Examination (RCE) under 35 U.S.C. § 132(b) instead of immediately appealing to the PTAB.
Between 2014 and 2017 Chudik filed four notices of appeal; each time the examiner reopened prosecution before the PTAB decided, issuing new rejections on different grounds, and ultimately allowed the application in 2018 after claim amendments.
The PTO awarded a patent term adjustment (PTA) but denied 655 days of additional C‑delay (appeal‑related delay), reasoning that C‑delay requires a Board or court decision reversing an adverse determination and that no such decision occurred.
The district court affirmed; the Federal Circuit likewise affirmed, holding that C‑delay requires a reversal decision by the PTAB or a reviewing court and does not include an examiner’s own reopening that withdraws a rejection.
The opinion highlights the tradeoff applicants face: choosing an RCE can forfeit B‑delay credit (e.g., §132(b) tolling) and may prevent claiming C‑delay later if no reversal by an appellate tribunal occurs.

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether time during appeals to the PTAB counts as C‑delay when the examiner reopens prosecution before the PTAB issues a decision	Chudik: C‑delay covers the entire appellate‑review process beginning at filing of a notice of appeal; time his notices of appeal were pending should count	PTO: C‑delay requires appellate review that results in a decision reversing an adverse determination by the PTAB or a court; examiner reopenings do not produce such a reversal	Court: Affirmed PTO; C‑delay requires a reversal decision by the PTAB or a reviewing court and does not include examiner reopenings withdrawing prior rejections
Whether a revisory action by the examiner (reopening and withdrawing a rejection) qualifies as a "decision in the review reversing an adverse determination"	Chudik: Examiner withdrawing a rejection during a pending appeal effectively reverses the adverse determination and should qualify	PTO: "Reversing" means action by the appellate reviewer (PTAB or court), not the examiner reconsidering her own rejection	Court: The best reading is that "decision in the review reversing" refers to an appellate tribunal's reversal; examiner reopening is not covered (court did not need to decide/determine PTAB jurisdiction attachment issue)

Chevron U.S.A., Inc. v. Natural Res. Def. Council, Inc., 467 U.S. 837 (1984) (framework for judicial deference to reasonable agency statutory interpretations)
Wyeth v. Kappos, 591 F.3d 1364 (Fed. Cir. 2010) (limits on Chevron deference where statute unambiguously resolves issue regarding PTO procedures)
Hyatt v. U.S. Patent & Trademark Office, 904 F.3d 1361 (Fed. Cir. 2018) (distinguishing PTAB review from examiner reopening; applicants’ right to appeal preserved)
Hologic, Inc. v. Smith & Nephew, Inc., 884 F.3d 1357 (Fed. Cir. 2018) (examples of Board reversing examiner rejections)
Supernus Pharms., Inc. v. Iancu, 913 F.3d 1351 (Fed. Cir. 2019) (review standard for PTO PTA decisions under the APA)
Intra‑Cellular Therapies v. Iancu, 938 F.3d 1371 (Fed. Cir. 2019) (application of Chevron to PTO PTA regulations)
Gilead Sciences, Inc. v. Lee, 778 F.3d 1341 (Fed. Cir. 2015) (deference to PTO interpretations of PTA provisions)