Janssen Pharmaceutica, N.V. v. Kappos

844 F. Supp. 2d 707, 101 U.S.P.Q. 2d (BNA) 1924, 2012 WL 441429, 2012 U.S. Dist. LEXIS 17065
CourtDistrict Court, E.D. Virginia
DecidedFebruary 10, 2012
DocketNo. 1:11cv969 (LMB/IDD)
StatusPublished
Cited by4 cases

This text of 844 F. Supp. 2d 707 (Janssen Pharmaceutica, N.V. v. Kappos) is published on Counsel Stack Legal Research, covering District Court, E.D. Virginia primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Janssen Pharmaceutica, N.V. v. Kappos, 844 F. Supp. 2d 707, 101 U.S.P.Q. 2d (BNA) 1924, 2012 WL 441429, 2012 U.S. Dist. LEXIS 17065 (E.D. Va. 2012).

Opinion

MEMORANDUM OPINION

LEONIE M. BRINKEMA, District Judge.

Plaintiff Janssen Pharmaceutica, N.V. (“Janssen”), a Belgian corporation that is the assignee of U.S. Patent No. 7,741,356 (“the patent” or “the '356 patent”), has sued the United States Patent and Trademark Office and its director, David J. Kappos, seeking a 98-day increase to the term of the '356 patent (“patent term” or “PTA”). Before the Court is defendants’ Motion to Dismiss, in which they argue that the Court does not have jurisdiction over this action, because when the complaint was filed on September 9, 2011, the applicable statute, 35 U.S.C. § 154(b)(4)(A), vested exclusive jurisdiction over such actions in the United States District Court for the District of Columbia.1 Defendants also argue that under [709]*709the same statute plaintiffs claim is barred by the applicable statute of limitations. For the reasons discussed below, defendants’ motion will be granted to the extent that this civil action will be transferred to the United States District Court for the District of Columbia.

I. BACKGROUND

A. Statutory and Regulatory Context

After a patent application is submitted, a patent examiner with the United States Patent and Trademark Office (“USPTO”) determines whether the asserted invention meets the requirements for patentability. If the patent examiner determines that the invention in the application is entitled to patent protection, the USPTO sends the applicant a notice of allowance. The notice of allowance specifies the required issue fee, which must be paid within three months of issuance of the notice. 37 C.F.R. § 1.311; Manual of Patent Examining Procedure (“MPEP”) § 1.311. The notice of allowance also includes the USP-TO’s calculation of the patent term adjustment, that is, the time period for which the patent will remain in effect. See 35 U.S.C. § 154(b)(3)(B)(i). Once the issue fee is timely paid, the USPTO will issue the patent. MPEP § 1.314.

Under the current version of the patent statute, a patent’s term is limited to 20 years, measured from the date the patent application is filed with the USPTO. 35 U.S.C. § 154(a)(2). The number of days during which an application is pending in the USPTO will therefore decrease the patent’s ultimate term. To address the concern that the duration of a patent could be significantly shortened due to administrative delay, 35 U.S.C. § 154(b) provides that the term of a patent may be adjusted to account for various delays that occur between the time a patent application is filed and when the patent is ultimately issued. Among other adjustments, 35 U.S.C. § 154(b)(1)(A) provides for a day-for-day extension of a patent term for each day that the USPTO does not provide a notification pursuant to 35 U.S.C. § 132 or a notice of allowance under § 151, beyond fourteen months from the date the patent application was filed. This delay is known as “A Delay.” Subsection (1)(B) provides for a patent term adjustment when a patent issuance is delayed due to the USP-TO’s failure to issue a patent within three years of the application being filed (“B Delay”).2

The Director must “prescribe regulations establishing procedures for the application for and determination of patent term adjustments.” 35 U.S.C. § 154(b)(3)(A). Pursuant to such procedures, the Director shall

(i) make a determination of the period of any patent term adjustment under this subsection, and shall transmit a notice of that determination with the written notice of allowance of the application under section 151; and
(ii) provide the applicant one opportunity to request reconsideration of any patent term adjustment determination made by the Director.

Id. § 154(b)(3)(B). The regulations promulgated by the USPTO provide that “[a]ny request for reconsideration of the patent term adjustment indicated in the notice of allowance, except as provided in [710]*710paragraph (d) ... must be by way of an application for patent term adjustment.” 37 C.F.R. § 1.705(b). The request must be filed no later than the date when the applicant pays the issue fee, which is due no later than three months from the notice of allowance. Id.; Pl.’s Opp’n Ex. 1 (MPEP § 1306, regarding timing of issue fee). A patentee may also seek reconsideration of a revised patent term adjustment that is reflected in the patent itself, or a revision that should have been reflected in the patent, within two months of the date the patent issued. 37 C.F.R. § 1.705(d). Such a request will be considered untimely as to issues that were raised or could have been raised before the patent issued. Id

Under the statute, “[t]he Director shall proceed to grant the patent after completion of the Director’s determination of a patent term adjustment under the procedures established under this subsection [§ 154(b)(3) ], notwithstanding any appeal taken by the applicant of such determination.” 35 U.S.C. § 154(b)(3)(D). The statute also sets forth the mechanism under which “[a]n applicant dissatisfied with a determination made by the Director under paragraph (3)” may seek judicial review. Section 154(b)(4)(A) states that such an applicant

shall have remedy by a civil action against the Director filed in the United States District Court for the District of Columbia within 180 days after the grant of the patent. Chapter 7 of title 5 [the Administrative Procedure Act], shall apply to such action.3

B. Factual Background

Patent Application No. 11/079,647, which ultimately issued as the '356 patent, was filed on March 14, 2005. The USPTO issued its first office action concerning the application on April 9, 2007. That office action was rescinded and replaced by a different office action on July 16, 2007. Sec Pl.’s Opp’n Ex. 3 (July 16, 2007 office action). Both the first and second office actions occurred more than 14 months after the application was filed, entitling the applicant to an extension of the patent term for A Delay. When the USPTO mailed the applicant a notice of allowance on October 14, 2008, the notice stated that the application would receive 207 days of PTA, based on the April 9, 2007 date of the first office action. Compl. ¶ 12. Had the July 16, 2007 “rescind and replace” date been used, the applicant would have received 98 additional days of PTA. See Compl. Ex.

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Bluebook (online)
844 F. Supp. 2d 707, 101 U.S.P.Q. 2d (BNA) 1924, 2012 WL 441429, 2012 U.S. Dist. LEXIS 17065, Counsel Stack Legal Research, https://law.counselstack.com/opinion/janssen-pharmaceutica-nv-v-kappos-vaed-2012.