Maass v. Lee
189 F. Supp. 3d 581
E.D. Va.2016Background
- Plaintiff Jorge Maass, pro se owner of U.S. Patent No. 8,533,097, sued the PTO under 35 U.S.C. § 154(b)(4)(A) challenging the PTO’s patent-term adjustment (PTA) for the ’097 patent.
- PTO awarded 556 days PTA (870 A‑delay, 285 B‑delay, 0 C‑delay) and subtracted 599 days as applicant delay; plaintiff sought additional PTA credits.
- Plaintiff’s two claims: (1) award 1,264 additional B‑delay days for PTO delays that occurred during continued examination requested by plaintiff under § 132(b); (2) reduce the 599‑day applicant‑delay deduction by 378 days because a supplemental amendment was filed at the examiner’s request.
- PTO moved to dismiss only the first claim (challenging the B‑delay calculation) under Rule 12(b)(6); PTO did not move on the second claim. Plaintiff also raised constitutional challenges to § 154(b).
- Court found the statutory text bars counting time consumed by continued examination requested by the applicant toward B‑delay, and therefore dismissed claim (1); constitutional challenges and a new pro‑se‑status claim were rejected.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether time consumed by continued examination requested by applicant may be included in B‑delay | Maass: continued‑examination delays caused by PTO should count as B‑delay and yield 1,264 extra days | PTO: § 154(b)(1)(B)(i) expressly excludes time consumed by continued examination requested by the applicant from B‑delay | Dismissed — statute bars counting such time; PTO calculation was correct |
| Whether § 154(b) is unconstitutionally vague or overbroad | Maass: statute is vague, overbroad, and effects an uncompensated taking | PTO: § 154(b) is an entitlement statute, not a prohibition; overbreadth and vagueness doctrines inapplicable; Takings Clause not implicated by refusing extra PTA | Rejected — vagueness and overbreadth doctrines do not apply; no taking |
| Whether pro se status entitles plaintiff to extra PTA | Maass (in opposition): seeks 792 additional PTA days due to pro se status | PTO: no statutory basis for PTA due to pro se status; claim not administratively exhausted | Rejected — claim not presented administratively and no statutory support |
| Whether PTO is in default on the remaining claim because it moved only on part of the complaint | Maass: PTO failed to answer remaining claim and is in default | PTO: filing a Rule 12 motion for partial dismissal tolls the deadline to answer all claims under Rule 12(a)(4) | Rejected — Rule 12(a)(4) postpones the answer deadline for all claims; |
Key Cases Cited
- Pfizer v. Lee, 811 F.3d 466 (Fed. Cir.) (describing A‑, B‑, and C‑delay and PTA calculation framework)
- Novartis AG v. Lee, 740 F.3d 593 (Fed. Cir.) (explaining exclusion of continued‑examination time from B‑delay)
- Nyeholt v. Secretary, 298 F.3d 1350 (Fed. Cir. 2002) (void‑for‑vagueness doctrine inapplicable to entitlement statutes)
- Woodford v. Ngo, 548 U.S. 81 (2006) (administrative exhaustion and timely objection requirement)
- United States v. Salerno, 481 U.S. 739 (1987) (limits of the overbreadth doctrine outside First Amendment context)
- Logan v. Zimmerman Brush Co., 455 U.S. 422 (1982) (legislature may elect not to confer a property interest)