Japanese Foundation for Cancer Research v. Lee
773 F.3d 1300
| Fed. Cir. | 2014Background
- The ’187 patent (U.S. Patent No. 6,194,187) was owned by the Japanese Foundation for Cancer Research. On Oct. 11, 2011 the Foundation’s attorney of record filed a terminal disclaimer under 37 C.F.R. § 1.321(a) disclaiming the entire term of the patent’s claims.
- In Dec. 2011 the Foundation filed a petition under 37 C.F.R. § 1.182 to withdraw the disclaimer, asserting it was mistakenly filed and unauthorized; the PTO denied the petition in Jan. 2012.
- The Foundation submitted declarations from its licensee’s counsel and others claiming the disclaimer resulted from miscommunication and a paralegal’s mistaken research and that the Foundation did not authorize the disclaimer.
- The PTO rejected reopening or withdrawing the recorded disclaimer, relying on its practice that no mechanism exists to withdraw a recorded terminal disclaimer (except narrow correction scenarios) and noting the disclaimer met regulatory signing and fee requirements.
- The Foundation unsuccessfully sought discretionary relief and argued § 255 (certificate of correction) or inherent PTO authority could permit withdrawal; the district court granted relief but the Federal Circuit reversed.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Availability of 35 U.S.C. § 255 (certificate of correction) to withdraw a terminal disclaimer | § 255 covers "clerical or typographical" errors and thus can correct a mistakenly filed disclaimer (paralegal error) | § 255 applies to facial clerical/typographical errors in the patent document, not to undo a properly executed filing; MPEP and precedent limit § 255 | Held: § 255 does not authorize withdrawal of this terminal disclaimer; no facial clerical error here |
| Whether PTO has inherent/discretionary authority to withdraw an effectively recorded disclaimer | PTO has inherent authority and should exercise discretion given the asserted mistake and lack of authorization | PTO may reconsider only in limited scenarios; once requirements (signature, fee, form) met, PTO will not nullify disclaimer for attorney-client miscommunications; public reliance concerns | Held: PTO did not abuse discretion; it permissibly declined to withdraw the disclaimer |
| Relevance of whether disclaimer had been processed/published when petition filed | Withholding publication and processing means withdrawal is appropriate because public reliance was minimal | Filing date, not processing date, determines that disclaimer is recorded if in proper form with fee; processing delay does not change effect | Held: Vectra controls; disclaimer was effective when filed, so PTO reasonably treated it as recorded |
| Whether client may avoid consequences of attorney-of-record actions (authorization issue) | Client should not be bound where attorney acted without client authorization and caused loss of property right | Regulations authorize attorney/agent of record to file disclaimers; clients are bound by actions of voluntarily chosen representative; remedies lie against attorney (malpractice) | Held: PTO reasonably refused to inquire into internal client-attorney communications and held client bound; agency acted within discretion |
Key Cases Cited
- Carnegie Mellon Univ. v. Schwartz, 105 F.3d 863 (3d Cir. 1997) (describes PTO granting withdrawal/correction where disclaimer identified wrong patent number)
- Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379 (Fed. Cir. 1998) (a disclaimer is "recorded" when properly filed with PTO; stresses finality and certainty of disclaimers)
- Superior Fireplace Co. v. Majestic Prods. Co., 270 F.3d 1358 (Fed. Cir. 2001) (interpreting "clerical or typographical" in § 255 as facial, obvious mistakes)
- Ford Motor Co. v. United States, 157 F.3d 849 (Fed. Cir. 1998) (interpreting "clerical error" in another statutory context as acts by subordinates contrary to binding instructions)
- Tokyo Kikai Seisakusho, Ltd. v. United States, 529 F.3d 1352 (Fed. Cir. 2008) (agencies possess inherent authority to reconsider decisions subject to limits)
- Bowman Transp., Inc. v. Ark.-Best Freight Sys., Inc., 419 U.S. 281 (U.S. 1974) (arbitrary and capricious review is narrow and courts should not substitute their judgment for agencies')
- SEC v. Chenery Corp., 332 U.S. 194 (U.S. 1947) (courts must uphold agency action on any valid ground articulated by the agency)
- Motor Vehicle Mfrs. Ass'n v. State Farm Mut. Auto. Ins. Co., 463 U.S. 29 (U.S. 1983) (agency must examine relevant data and articulate a satisfactory explanation)
- Vt. Yankee Nuclear Power Corp. v. Natural Res. Def. Council, Inc., 435 U.S. 519 (U.S. 1978) (courts cannot force agencies to employ procedures beyond statutory requirements)
- Link v. Wabash R.R. Co., 370 U.S. 626 (U.S. 1962) (client's remedy for attorney misconduct is malpractice action)