Digest of Japanese Found. for Cancer Research v. Michelle K. Lee, Nos. 2013-1678, 2014-1014 (Fed. Cir. Dec. 9, 2014) (precedential). On appeal from E.D. Va. Before Prost, Dyk, and Taranto.

Procedural Posture: USPTO refused to withdraw a terminal disclaimer filed in connection with an issued patent. Patent owner filed a district court action asserting an Administrative Procedure Act claim. District court granted summary judgment finding that the USPTO acted arbitrarily and capriciously, and abused its discretion when it refused to withdraw the disclaimer. CAFC reversed.

  • Terminal Disclaimer: The district court erred in granting the Foundation’s motion for summary judgment. The USPTO did not act arbitrarily and capriciously.
    • First, the USPTO does not issue a certificate of correction to completely withdraw a terminal disclaimer. Certificates of correction are meant only to correct a typographical, clerical error, like an erroneous identification of a patent number in a disclaimer.
    • Second, the district court erred in holding that the USPTO should have exercised its inherent authority to withdraw the terminal disclaimer. The CAFC deferred to the USPTO’s interpretation of its own procedures and regulations. The USPTO declined to withdraw the disclaimer because it was received by the USPTO in the proper form, was submitted by the attorney of record, and was accompanied by the appropriate filing fee. Additionally, the disclaimer was “recorded” on the date filed and may have been relied on by the public as of that date. The fact that the USPTO had not yet finished processing or publishing it at the time withdrawal was requested did not compel withdrawal. The USPTO also properly exercised its authority when it declined to assess the patent owner’s argument that the disclaimer had been filed as a result of a miscommunication between the patent owner and attorney of record. A patent owner is bound by actions of its attorney and the USPTO was not the proper forum to determine whether the terminal disclaimer was filed per the intentions of the patentee.