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Maass v. Lee

United States District Court, E.D. Virginia, Alexandria Division

May 17, 2016

JORGE A. MAASS, Plaintiff,
v.
MICHELLE K. LEE, Defendant.

          MEMORANDUM OPINION

          T. S. ELLIS, III UNITED STATES DISTRICT JUDGE.

         The 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.

         I.

         Before 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 deadlines";
(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.

         Importantly, 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).[1] Put simply, a patent applicant will not receive any PTA credit for delay attributable to a request for continued examination.

         Once a 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).

         II.

         The pertinent facts may be succinctly stated.[2] Plaintiff Jorge Maass, proceeding pro se9 is the owner and inventor of the '097 patent entitled Transaction Arbiter System and Method.[3]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.

         Thereafter, 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 ...

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