Digest of PFIZER, INC. V. LEE, No. 2015-1265 (Fed. Cir. Jan. 22, 2016). On appeal from E.D. Va. Before Newman, Dyk, and O’Malley.

Procedural Posture:  Plaintiff appealed the district court’s grant of summary judgment in favor of the PTO on the issue of whether the PTO properly calculated the length of a patent term adjustment. CAFC affirmed

  • Patent Term Adjustment: The PTO issued a notice of allowance for the patent at-issue reflecting a total patent term adjustment (“PTA”) of 1291 days, of which 684 days were attributed to A-Delay. An A-Delay awards PTA for delays arising from the PTO’s failure to act by certain examination deadlines, specifically failure to provide notification under § 132 or a notice of allowance under § 151.The PTO calculated the A-Delay of 684 days based upon (i) the issuance of the examiner’s first restriction requirement 404 days beyond the examination deadline, and (ii) the PTO’s delayed issuance of a response to Applicant’s request for continued examination by 280 days. The PTO did not award A-Delay for a 197-day period that elapsed between the issuance of the first restriction requirement, which omitted certain dependent claims, and the mailing of a corrected restriction requirement. Appellants contended that the district court’s judgment improperly declined to award restoration of patent term for the extra 197 days. As a threshold matter, the CAFC concluded that Appellants did not waive their argument that a defective restriction requirement does not meet the requirements of § 132, due to ample evidence that Appellants raised this argument in their summary judgment briefs and at oral argument.The CAFC applied the standard of review set forth in the Administrative Procedures Act–requiring affirmance unless the PTO’s determination is “arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with the law”–and affirmed the judgment of the district court to uphold the PTO’s PTA calculation. The CAFC found that, because the examiner clearly defined the invention groups available for election and further prosecution, the initial restriction requirement met the notice requirement of § 132 and informed the applicant of the broad statutory basis for the rejection of his claims. The CAFC also found that the MPEP supported the PTO’s position that the original restriction requirement satisfied the notice requirements of § 132 and rejected Appellant’s argument that the examiner’s omission of six dependent claims failed to comply with the MPEP’s guidance. The CAFC rejected Appellant’s argument that the original restriction requirement’s omissions of certain claims resulted in no clear “line of demarcation” between the various inventions and precluded Applicant’s ability to take advantage of § 121’s “safe harbor” protections against certain types of invalidity attacks. The CAFC found that the alleged delay was not the type of error for which the Patent Act was intended to compensate and concluded that the district court did not err in granting summary judgment in favor of the PTO.
  • Dissenting opinion (Newman): The majority refuses to count the period of delay caused by the examiner’s error and its correction, even though such prosecution delay is within the statutory conditions for PTA. The appropriate issue to be addressed is simply whether the delay that necessarily ensued is an A-Delay subject to inclusion in the term adjustment. The majority’s holding that the period of delay should be attributed to the applicant, not the PTO, ignores that the prosecution was delayed by the PTO’s error and is not in line with the statutory language and goal of compensating for prosecution delays. A delay caused the PTO’s failure to provide a complete office action should not be charged against the applicant, nor should the applicant be prejudiced by the examiner’s error. The majority erroneously holds that the term adjustment is not available because the applicant, not the PTO, identified the PTO’s error.