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Bristol-Myers Squibb Company and Kosan Biosciences Inc v. David Kappos

September 20, 2012

BRISTOL-MYERS SQUIBB COMPANY AND KOSAN BIOSCIENCES INC., PLAINTIFFS,
v.
DAVID KAPPOS, IN HIS OFFICIAL CAPACITY AS UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE, DEFENDANT.



The opinion of the court was delivered by: Emmet G. Sullivan United States District Court Judge

MEMORANDUM OPINION

This case is before the Court on defendant's motion for reconsideration of the Court's January 27, 2012 Memorandum Opinion and Order granting plaintiffs' motion for summary judgment and denying defendant's motion to dismiss. Upon consideration of the motion, the response and reply thereto, the entire record, the applicable law, and for the reasons set forth below, the defendant's motion for reconsideration is DENIED.

I.INTRODUCTION

Plaintiffs Bristol-Meyers Squibb Company and Kosan Biosciences Inc. filed this action on June 17, 2009 seeking review of certain patent term adjustments granted by the Director of the United States Patent and Trademark Office ("PTO"). Plaintffs alleged that all of the challenged PTO patent term adjustment determinations relied on an erroneous interpretation of 35 U.S.C. § 154(b), rejected by the United States Court of Appeals for the Federal Circuit in Wyeth v. Kappos, 591 F.3d 1364 (Fed. Cir. 2010). The Amended Complaint identified twenty-one patents, set forth in twenty-one separate counts, for which the PTO allegedly incorrectly determined the patent term adjustment.

In June 2010, the Court ordered thirteen of the twenty-one patents identified by plaintiffs in this action to be remanded to the PTO for recalculation and adjustment of the patent terms in accordance with Wyeth. Court's Minute Order of June 23, 2010. Eight counts remained as of January 27, 2012.*fn1 The parties agreed that the timeliness of plaintiffs' appeals for the remaining Counts was the sole remaining legal question. See id. at 3.

On January 27, 2012 the Court granted plaintiffs' cross-motion for summary judgment and denied defendant's motion to dismiss, finding that plaintiffs' appeals of certain patent term adjustments were timely filed because the statute of limitations for filing such an action was tolled by plaintiffs' request that the PTO reconsider its patent term adjustment decisions. See ECF No. 41. Defendant moved for reconsideration of the Court's decision on February 24, 2012 and the Court held oral argument on the motion on July 10, 2012. The motion is now ripe for the Court's determination.

II.BACKGROUND*fn2

Patents are ordinarily granted "for a term beginning on the date on which the patent issues and ending 20 years from the date on which the application for the patent was filed in the United States. . . ." 35 U.S.C. § 154(a)(2). If the PTO causes certain delays in the processing of the patent, however, a patent's term may be extended. 35 U.S.C. § 154(b)(1). The statute provides for the adjustment and calculation of patent terms as a result of several different categories of delay.

At issue in this case are two of those categories: "A Delay" and "B Delay." The "A Delay" is the delay of the PTO to meet certain intermediate deadlines during the pendency of a patent application. 35 U.S.C. § 154(b)(1)(A). The "B Delay" is the delay caused by the PTO's failure to issue the patent within three years of the date of the filing of the patent application. 35 U.S.C. § 154(b)(1)(B).

After the PTO makes a determination that a patent application will be granted, it issues a written notice of allowance of the application. Id. § 151. Also issued with the notice of allowance is an initial determination of the patent term adjustment, if applicable. 35 U.S.C. § 154(b)(3)(B)(i) (requiring the PTO to "make a determination of the period of any patent term adjustment" and "transmit a notice of that determination with the written notice of the allowance of the application"). If an applicant disagrees with a patent term adjustment determined by the PTO, it is entitled to request reconsideration of the patent term adjustment. 35 U.S.C. § 154(b)(3)(B)(ii).

Because the patent term adjustment submitted with the notice of allowance is issued months before the grant of the patent, the patent term adjustment reflected in the notice of allowance does not include "B delay," because "B Delay" continues to accrue until the grant of the patent. As the PTO explained in its motion to dismiss:

Because the computer program that the USPTO uses to calculate the PTA does not calculate "B Delay" until the patent issue date is determined, this initial PTA determination typically only includes the "A delay" determined by the USPTO as of the date of the notice of allowance. Thus, at this point, the applicant is only able to challenge the USPTO's A-delay determination.

Def.'s Mot. to Dismiss at 3, ECF No. 28. The regulations provide that any requests for reconsideration of the patent term adjustment indicated in the patent when it is granted must be made within two months of the date that patent issues. 37 C.F.R. § 1.705(d).

Section 154 permits the applicant to appeal the patent term adjustment to a United States District ...


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