Digest of President & Fellows of Harvard Coll. v. Lee, No. 2013-1628 (Fed. Cir. Oct. 29, 2014) (non-precedential). On appeal from E.D. Va. Before Lourie, Moore, and O’Malley.

Procedural Posture: Patentee appealed district court’s summary judgment finding that the PTO’s determination that the patentee submitted the requisite fee with a terminal disclaimer was not arbitrary, capricious, an abuse of discretion, or contrary to law, and therefore the disclaimer was valid and the patent at issue had expired. CAFC affirmed.

  • Terminal Disclaimer: The Federal Circuit held that the district court properly found the PTO’s determination that U.S. Patent 5,925,803 had expired as a result of a terminal disclaimer was not arbitrary, capricious, an abuse of discretion, or contrary to law. During an ex parte reexamination, the examiner determined that the patent had expired due to a terminal disclaimer and refused to allow the patentee to add new claims. The patentee petitioned the PTO Director for review, arguing that it had not paid the requisite terminal disclaimer fee. The Director found the disclaimer was properly recorded, and the patentee challenged this determination in district court under the Administrative Procedure Act. The district court held that despite declarations from the prosecuting attorney and his firm and mishandling of the disclaimer by the PTO when placing it into the prosecution file, the PTO’s finding that the patentee paid the fee was not arbitrary and capricious. The patentee stated in the disclaimer itself that the fee accompanying the filing is the fee set forth in 37 C.F.R. § 1.20(d)—the statutory fee for filing a disclaimer—, and the examiner withdrew her obviousness-type double patenting rejection after the patentee submitted the disclaimer without any additional substantive response. Further, the declarations did not conclusively establish that the patentee did not pay the fee.