309 F. Supp. 3d 425
E.D. Va.2018Background
- Mayo filed U.S. Application No. 12/421,310 (the '310 Application) on April 9, 2009 and later filed an RCE on September 14, 2011.
- The PTO declared an interference between Mayo's claims and U.S. Patent No. 7,635,757; the interference ran from February 2012 and terminated April 23, 2014.
- After the interference ended, the examiner updated prior-art searches, issued a non-final action (June 30, 2014), Mayo replied, the PTO mailed a notice of allowance on November 3, 2014, and the patent issued March 17, 2015.
- PTO calculated patent-term adjustments: A Delay = 898 days; C Delay = 805 days; PTO determined B Delay = 0 by excluding from B Delay the period from Mayo’s RCE filing through mailing of the notice of allowance as "time consumed by continued examination requested by the applicant."
- Mayo argued the applicant-requested continued examination ended when the interference was declared, so the time between interference termination and allowance should count toward B Delay; PTO denied reconsideration and Mayo sued under 35 U.S.C. § 154(b)(4)(A) and the APA.
- The district court applied Federal Circuit precedent (Novartis) and held the PTO correctly excluded the entire RCE-to-allowance period because prosecution and examination on the merits remained open until the notice of allowance.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the period from RCE filing through mailing of the notice of allowance may be excluded from B Delay as "time consumed by continued examination requested by the applicant," or whether continued examination ended at the declaration of interference so post-interference time counts toward B Delay | Mayo: continued examination ended when interference was declared; therefore post-interference time (termination → allowance) is PTO delay and counts as B Delay | PTO: an applicant-requested RCE kept examination pending until allowance; interference pauses but does not end continued examination, so the full RCE→allowance interval is attributable to applicant and excluded from B Delay | The court held for the PTO: continued examination extended until the notice of allowance; time after the interference termination up to allowance is properly excluded from B Delay (B Delay = 0) |
Key Cases Cited
- Novartis AG v. Lee, 740 F.3d 593 (Fed. Cir. 2014) ("continued examination ... requested by the applicant" presumptively ends at mailing of notice of allowance)
- Rolls‑Royce, PLC v. United Techs. Corp., 603 F.3d 1325 (Fed. Cir. 2010) (describing purpose of interference to determine priority)
- Wyeth v. Kappos, 591 F.3d 1364 (Fed. Cir. 2010) (review of agency record on cross-motions for summary judgment)
- Refac Int'l, Ltd. v. Lotus Dev. Corp., 81 F.3d 1576 (Fed. Cir. 1996) (MPEP is entitled to judicial notice as agency interpretation, though it is not law)