United States District Court, E.D. Virginia, Alexandria Division
JORGE A. MAASS, Plaintiff,
MICHELLE K. LEE, Defendant.
ELLIS, III UNITED STATES DISTRICT JUDGE.
pro se plaintiff, owner of United States Patent No.
8, 533, 097 ("the '097 patent"), brings this
action pursuant to 35 U.S.C. § 154(b)(4)(A), arguing
that the United States Patent and Trademark Office
("PTO") awarded him an inadequate patent term
adjustment ("PTA") on two grounds. Specifically,
plaintiff argues (i) that plaintiff should be awarded credit
for time attributable to various delays caused by the PTO
during the continued examination of the '097 patent
application at plaintiffs request pursuant to 35 U.S.C.
§ 132(b), and (ii) that the time period resulting from
plaintiffs filing of a supplemental amendment at the patent
examiner's request should not be characterized as
applicant delay. The PTO has filed a motion to dismiss the
first of these two grounds for failure to state a claim
pursuant to Rule 12(b)(6), Fed.R.Civ.P. As the parties have
fully briefed the issue, and oral argument would not aid the
decisional process, the matter is now ripe for disposition.
setting forth the pertinent facts, it is useful to describe
briefly the relevant statutory context. Pursuant to 35 U.S.C.
§ 154(a)(2), a patent has a term of twenty years from
the patent application's filing date, not the date the
patent issues. Thus, because it takes time to process a
patent application, the enforceable term for a patent is
effectively less than 20 years. In light of this, as the
Federal Circuit has noted, "[t]o account for any undue
delays in patent examination caused by the PTO, Congress
established a system of [PTA] to compensate inventors for
lost time on their patent term resulting from such
delays." Pfizer v. Lee, 811 F.3d 466, 468 (Fed.
Cir. 2016). Specifically, as the Federal Circuit in
Pfizer noted, 35 U.S.C. § 154(b)(1) provides
for a patent term adjustment in three circumstances:
(i) a so-called "A-Delay, " pursuant to §
154(b)(1)(A), "awarding] PTA for delays arising from the
[PTO's] failure to act by certain examination
(ii) a so-called "B-Delay, " pursuant to §
154(b)(1)(B), "awarding] PTA for an application pendency
exceeding three years"; and
(iii) a so-called "C-Delay, " pursuant to §
154(b)(1)(C), "awarding] PTA for delays due to
interferences, secrecy orders, and appeals."
Pfizer, 811 F.3d at 468. (internal quotation marks
and citation omitted). The PTO "calculates PTA by adding
A-, B-, and C-Delays, subtracting any overlapping delays, and
then subtracting any days attributable to applicant
delay." Id. at 468-69.
when a patent application is rejected, the patent applicant
may (i) appeal the final rejection to the Patent Trial and
Appeal Board ("PTAB"), 35 U.S.C. § 134(a), or
(ii) file a timely request for continued examination,
id. § 132(b). If the patent applicant chooses
to appeal the PTO's final rejection and is successful on
appeal, the applicant is entitled to PTA credit for the
entirety of the pendency of the appeal, as that time period
constitutes "C-Delay." Id. §
154(b)(l)(C)(iii). If the patent applicant instead files a
request for continued examination, "the [PTO] will
withdraw the finality of [the] Office action, " and will
consider any additional information submitted by the
applicant in support of patentability. 37 C.F.R. §
1.114. Importantly, a patent applicant's decision to
request continued examination rather than filing a PTAB
appeal comes at a cost for the applicant with respect to the
PTA calculation. Specifically, although applicants are
generally entitled to "B-Delay" for any delay
"due to failure of the [PTO] to issue a patent within 3
years after the actual filing date of the application, "
id. § 154(b)(1)(B), the statute expressly
excludes three time periods from the accrual of a B-Delay,
one of which is "any time consumed by continued
examination of the application requested by the
applicant." Id. §
154(b)(l)(B)(i). Put simply, a patent applicant will not
receive any PTA credit for delay attributable to a request
for continued examination.
patent applicant aggrieved by the PTO's PTA decision has
exhausted all administrative remedies, an applicant's
"exclusive remedy" to challenge a PTA determination
is to file "a civil action ... in the Eastern District
of Virginia." Id. § 154(b)(4)(A).
pertinent facts may be succinctly stated. Plaintiff Jorge
Maass, proceeding pro se9 is the owner
and inventor of the '097 patent entitled Transaction
Arbiter System and Method.Plaintiff filed the '097 patent
application on July 27, 2005, and the PTO issued the '097
patent on September 10, 2013. Shortly after the '097
patent issued, plaintiff filed various requests for a PTA
determination, and on August 14, 2015, the PTO issued a final
decision awarding the '097 patent a PTA of 556 days.
Specifically, the PTO's calculation included 870 days of
A-Delay, 285 days of B-Delay, and 0 days of C-Delay; the
calculation also reduced the total of A-, B-, and C-Delay by
599 days to account for applicant delay.
on January 20, 2016, the pro se plaintiff filed a
complaint challenging the PTO's PTA calculation on the
following two grounds:
(i) that plaintiff should be awarded 1264 days of B-Delay in
addition to the 285 days of B-Delay already awarded to
account for time attributable to various delays caused by the
PTO during the continued examination of the '097 patent
application at ...