University of Massachusetts v. Kappos
903 F. Supp. 2d 77
D.D.C.2012Background
- UMass and Medarex sue PTO Director Kappos under 35 U.S.C. §154 and the APA over Patent Term Adjustment for U.S. Patent No. 7,625,559.
- PTA consists of A delay, B delay, and potential overlap; A delay runs from 14-month deadline to first Office action, B delay from filing to, and timing of, issuance.
- The ’559 application was filed Feb. 4, 2005; July 13, 2007 restriction requirement led to election of Group VIII; a November 21, 2007 Supplemental Amendment added claims and an additional restriction was issued Feb. 21, 2008.
- May 1, 2009 Notice of Allowance and PTA determination initially awarded 434 days; December 1, 2009 patent issued with 623 days PTA.
- PTO on remand (Wyeth v. Kappos context) issued a 2012 decision granting 1,070 days PTA; dispute centers on whether the A delay clock should count past July 13, 2007; Oncolytics and related decisions cited by PTO influence interpretation of whether later actions render earlier actions a non-event.
- The court will review the agency action on the legal question of the validity of the A delay calculation under the APA without de novo fact-finding.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether A delay ends at the first restriction (July 13, 2007) | UMass argues A delay runs through Feb. 21, 2008 | Kappos contends A delay ends with the July 13, 2007 action | No; A delay ends at first Office action (July 13, 2007) as a matter of law |
| Whether the Supplemental Amendment affects A delay or is applicant delay | UMass contends supplementation was caused by examiner error and should affect PTA | Kappos treats examiner-requested amendment as neither applicant delay nor A delay | Supplemental Amendment affects applicant delay but not A delay; no A delay credit for examiner-driven amendments |
| Whether Oncolytics-style equities justify different PTA counting | Oncolytics shows PTO can treat actions as non-events | Oncolytics is distinguishable; this case reflects ordinary examination and correction process | PTO’s approach consistent with statutory text; not arbitrary or capricious |
| Standard of review and deference applied to PTO interpretations | APA review should defer if interpretation reasonable | PTO interpretations are reasonable but not entitled to Chevron deference; Skidmore applied | Court applies Skidmore; finds PTO decision reasonable and not arbitrary or capricious |
Key Cases Cited
- Hughes Aircraft Co. v. Jacobson, 525 U.S. 432 (1999) (statutory construction and deference principles for agency interpretations)
- AT&T Corp. v. FCC, 220 F.3d 607 (D.C. Cir. 2000) (arbitrary and capricious standard for agency action)
- Kisser v. Cisneros, 14 F.3d 615 (D.C. Cir. 1994) (scope of APA review and pattern of agency action review)
- Merck & Co. v. Kessler, 80 F.3d 1543 (Fed. Cir. 1996) (PTO lacks authority to issue substantive rules; defer under Skidmore rather than Chevron)