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Human Genome Sciences, Inc. v. Kappos

September 23, 2010


The opinion of the court was delivered by: Ellen Segal Huvelle United States District Judge


Plaintiff Human Genome Sciences seeks to have the patent term adjustments (PTAs) for four of its patents recalculated due to alleged miscalculations by the United States Patent and Trademark Office ("USPTO"). Plaintiff's original complaint sought recalculation for two of its patents, and its Amended Complaint added similar claims for two other patents. Defendant moved to strike the Amended Complaint on grounds that it was in fact a supplemental pleading that could not, under Fed. R. Civ. P. 15(d), be filed without the Court's permission, which plaintiff had not obtained. Defendant also moved to remand the PTA claims in the original complaint to the USPTO for partial recalculation.

As explained herein, the Court finds that plaintiff's Amended Complaint is indeed an amendment and not a supplemental pleading and therefore denies defendant's motion to strike. The Court grants defendant's motion to remand with the understanding that the Court will retain jurisdiction over the matter.


Under 35 U.S.C. § 154(b)(1), a patent's term may be extended if the USPTO causes certain delays in the prosecution process ("USPTO delay") or if the patent takes longer than three years to issue ("3-year maximum pendency delay"). A patent's term is reduced for prosecution delays caused by the applicant ("applicant delay"). Id. § 154(b)(2). The USPTO's longstanding method of calculating PTA was rejected by the Federal Circuit in Wyeth v. Kappos, 591 F.3d 1364 (Fed. Cir. 2010), in favor of a method more generous to patent holders.*fn1

Plaintiff is the assignee of United States Patent Nos. 7,601,351 ("the '351 patent"), 7,605,236 ("the '236 patent"), 7,064,189 ("the '189 patent"), and 7,138,501 ("the '501 patent"). (First Am. Compl. ¶ 1.) Patents '351 and '236 were issued in October 2009. (Compl. ¶¶ 36, 41). On April 9, 2010, plaintiff sued to have their PTAs recalculated to comply with Wyeth and also to correct the USPTO's allegedly erroneous measurement of prosecution delays. (See Compl. ¶¶ 61-76.) Plaintiff's suit was timely under § 154(b)(4)(A), which provides that civil actions challenging PTA determinations must be brought "within 180 days after the grant of the patent."

On July 20, 2010, plaintiff amended its complaint to seek similar recalculations for patents '189 and '501. (First. Am. Compl. ¶¶ 100-131.) These patents were issued and their PTAs determined in 2006.*fn2 (First Am. Compl. ¶¶ 76, 79, 91-92.) Plaintiff alleges that these PTA claims are timely because the 180-day limitations period is either inapplicable or should be tolled under the doctrine of equitable tolling or under the discovery rule. (Id. ¶¶ 137, 144- 45,151-52.) On March 5, 2010, prior to filing its original complaint, plaintiff had petitioned defendant to reconsider these patents' PTAs in light of Wyeth. (Id. ¶¶ 77, 97.) However, defendant dismissed plaintiff's '189 petition on April 21, 2010 and to date has made no decision regarding the '501 petition. (Id.)

Defendant moves to strike the Amended Complaint on grounds that it is not an amendment under Fed. R. Civ. P 15(a), but rather a supplemental pleading under Rule 15(d), for which plaintiff was required to obtain leave of court. (Def.'s Mot. to Strike Am. Compl. at 1.) Plaintiff opposes defendant's motion or, in the alternative, seeks leave to file the pleading nunc pro tunc.(Id. at 5.)

Defendant also moves to remand plaintiff's '351 and '236 claims to the USPTO for recalculation of the patents' PTAs in light of Wyeth and for reconsideration of plaintiff's applicant delay claims. (Def.'s Mot. to Remand at 1.) Plaintiff consents to a remand only if all of its claims relating to all four patents are remanded and the Court retains jurisdiction over the action. (Pl.'s Conditional Opp'n. to Def.'s Mot. to Remand at 2.)



The parties disagree as to whether plaintiff's Amended Complaint is in fact an amendment under Fed. R. Civ. P. 15(a) or a supplemental pleading under Fed. R. Civ. P. 15(d). The significance of this distinction lies in the fact that while the rules permit amendments without leave of court under certain circumstances, supplements always require leave of court. Fed. R. Civ. P. 15(a)(1), (d).

Unlike amendments, which "typically rest on matters in place prior to the filing of the original pleading," U.S. v. Hicks, 283 F.3d 380, 385 (D.C. Cir. 2002), supplements set out "transaction[s], occurrence[s], or event[s] that happened after the date of the pleading to be supplemented." Fed. R. Civ. P. 15(d). However, a pleading generally does not become a supplement merely because it references facts that occurred subsequent to the original complaint. Rather, "the appropriate bases for supplemental pleadings are new facts bearing on the relationship between the parties." Hicks, 283 F.3d at 386 (emphasis added). Thus, supplemental pleadings are used, e.g., "to set forth new facts that update the original pleading or provide the basis for additional relief; to put forward new claims or defenses based on events that took place after the original complaint or answer was filed; [and] to include new parties where subsequent events have made it necessary to do so." Id. (citing 6A Charles Alan Wright et al., Federal Practice and Procedure § 1504 (3d ed. 2010)).

Here, plaintiff's new claims are based on events that occurred before the original complaint was filed. The Amended Complaint seeks PTA recalculations for patents '189 and '501 in light of Wyeth. Prior to the filing of the original complaint, both patents were issued and their PTAs calculated, Wyeth was decided, and plaintiff sought ...

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