Pfizer, Inc. v. Lee
119 F. Supp. 3d 385
E.D. Va.2014Background
- Pfizer and Wyeth sue the USPTO seeking a correction of PTA and a judgment that the 768 patent was never abandoned.
- The USPTO had previously found abandonment of the 894 application but later withdrew those findings and revived the application.
- Pfizer argues the first Restriction Requirement was defective and seeks 197 additional days of A-Delay; USPTO argues no such entitlement exists.
- PTA is governed by 35 U.S.C. § 154 with A-, B-, and C-Delay; A-Delay stops when the PTO issues a notification under § 132.
- The court must review PTA under the APA and held the abandonment issue moot and the A-Delay argument unpersuasive.
- The court ultimately denies Pfizer’s motion on abandonment as moot and on PTA, while granting USPTO’s motion on PTA.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether abandonment is still a live controversy | Pfizer contends PTO abandonment findings were erroneous | PTO withdrew abandonment findings; no live controversy remains | Abandonment moot; no live controversy |
| Whether defective first Restriction Requirement entitles 197 days of A-Delay | First Restriction Requirement defects should stop the A-Delay clock from start | Statute stops on any notification; defect does not create entitlement | Denied for Pfizer; A-Delay stopped by the Restriction Requirement under §154(b)(1)(A) |
Key Cases Cited
- University of Massachusetts v. Kappos, 903 F.Supp.2d 77 (D.D.C. 2012) (A-Delay stoppage does not depend on first office action accuracy; first action can be defective)
- Wyeth v. Kappos, 591 F.3d 1364 (Fed.Cir. 2010) (PTA framework and delays analyzed on appeal)
- Blount v. Rizzi, 400 U.S. 410 (U.S. 1971) (statutory rewriting not allowed by courts)
- Sierra Club v. Mainella, 459 F.Supp.2d 76 (D.D.C. 2006) (APA standard of review for agency action)
- BedRoc, Ltd. v. United States, 541 U.S. 176 (U.S. 2004) (statutory interpretation governs deference)
- University v. Kappos, (see UMass above) (2012) (reference supporting A-Delay interpretation)
- Kappos v. Merck & Co., 80 F.3d 1543 (Fed.Cir. 1996) ( USPTO regulations may receive Skidmore deference)
- Smith v. City of Jackson, Miss., 544 U.S. 228 (2005) (statutory interpretation principles guiding plain language)
- City of Arlington v. FCC, 133 S. Ct. 1863 (2013) (unambiguous congressional intent governs)