United States District Court, District of Columbia
MEMORANDUM OPINION AND ORDER
RANDOLPH D. MOSS, District Judge.
On November 25, 2012, Plaintiff Glycobiosciences, Inc. brought this patent infringement suit against Defendants Innocutis Holdings, LLC, and DARA BioSciences, Inc. ("Defendants"). See Dkt. 1. Plaintiff's amended complaint (Dkt. 23) alleges that Defendants indirectly or contributorily infringed U.S. Patent No. 6, 387, 407 ("the '407 patent") by importing, selling, or offering to sell Defendants' BIONECT product. See Dkt. 23 at ¶¶ 18, 25, 32, 38; see also 35 U.S.C. §§ 271(b), (c). The '407 patent expired in 2006 because the relevant maintenance fees were not timely paid to the Patent and Trademark Office ("PTO"), as required by statute. In April 2013, Plaintiff petitioned the PTO to reinstate the patent under the then-applicable "unavoidable delay" standard for late payment of maintenance fees, and the PTO denied relief. Subsequently, Plaintiff filed a second petition to reinstate the patent, this time under the recently enacted Patent Law Treaties Implementation Act of 2012, P.L. 112-211, 126 Stat. 1527-1537 ("PLTIA" or "Act"), which replaced the "unavoidable delay" standard with the less demanding "unintentional delay" standard. This time the PTO granted the petition and reinstated the patent. Plaintiff then amended its complaint to allege infringement of the '407 patent.
Pending before the Court is Defendants' motion for judgment on the pleadings under Rule 12(c) of the Federal Rules of Civil Procedure (Dkt. 55). Defendants' motion presents a single issue: whether the effective date provision of the PLTIA-which provides that the Act will have "no effect with respect to any patent that is the subject of litigation in an action commenced before" December 18, 2013-forecloses Plaintiff's reliance on the reinstated '407 patent. For the reasons given below, the Court concludes that it does not and, accordingly, DENIES Defendants' motion.
A. Statutory Background
Under the Patent Act, the PTO is required to charge periodic maintenance fees "for maintaining in force all patents based on applications filed on or after December 12, 1980." 35 U.S.C. § 41(b)(1). These maintenance fees are due 3.5 years, 7.5 years, and 11.5 years after the grant of a patent. See id. § 41(b)(1)(A)-(C). "Unless payment of the applicable maintenance fee... is received [by the PTO] on or before the date the fee is due or within a grace period of 6 months thereafter, the patent shall expire as of the end of such grace period." 35 U.S.C. § 41(b)(2).
At the end of the grace period, however, the patent is "only mostly dead." See THE PRINCESS BRIDE (Act III Communications 1987). Congress has authorized the PTO Director to accept delayed fees and to revive an expired patent under certain circumstances. The patentee must file a petition with the PTO and pay any delayed maintenance fees and applicable petition fees. See 35 U.S.C. § 41(a)(7) ("[t]he Director shall charge... fees" on the filing of a "petition... for the delayed payment of the fee for maintaining a patent in force"); 37 C.F.R. § 1.378 (setting forth the requirements for a "petition to accept an unintentionally delayed payment of a maintenance fee"). Once reinstated, "the patent shall be considered as not having expired at the end of the grace period." 35 U.S.C. § 41(c)(1). However, to "protect the rights of those who, in reliance on the lapse, first began using the claimed invention or who first took steps to begin using it during the lapse period, " Fonar Corp. v. GE Co., 107 F.3d 1543, 1554 (Fed. Cir. 1997), Congress has provided that no reinstated patent "shall  abridge or affect the right of any person... who made, purchased, offered to sell, or used anything protected by the patent within the United States, or imported anything protected by the patent into the United States after the 6-month grace period but prior to the acceptance of a maintenance fee under this subsection." 35 U.S.C. § 41(c)(2); see also Fonar Corp., 107 F.3d at 1554 (quoting the legislative history).
Prior to December 18, 2013, the PTO Director had discretion to accept delayed maintenance fees for up to two years after the 6-month grace period ended, upon a showing that the delay in paying the fees had been "unintentional." See 35 U.S.C. § 41(c)(1) (2012); 37 C.F.R. § 1.378 (effective through Dec. 17, 2013); see also Manual of Patent Examining Procedure § 2590 (2012). After this two-year window, the PTO Director could accept delayed fees only if the patentee satisfied a more stringent standard and demonstrated that the delay was "unavoidable." See 35 U.S.C. § 41(c)(1) (2012); Burandt v. Dudas, 528 F.3d 1329, 1333 (Fed. Cir. 2008).
Congress changed this regime when it enacted the Patent Law Treaties Implementation Act of 2012, P.L. 112-211, 126 Stat. 1527-1537. The PLTIA implements the Patent Law Treaty, which was ratified by the Senate on December 7, 2007, and harmonizes domestic patent procedures with certain treaty requirements. See S. Exec. Rep. 110-6, at 1 (2007). Title II of the PLTIA amends various statutory provisions relating to the filing and processing of patent applications and payment of fees. As summarized in the final rule implementing these amendments, "[t]he changes in title II... are divided into three groups: (1) The changes pertaining to a patent application filing date; (2) the changes pertaining to the revival of abandoned applications and acceptance of delayed maintenance fee payments; and (3) the changes pertaining to the restoration of the right of priority to a foreign application or the benefit of a provisional application." Changes to Implement the Patent Law Treaty, 78 Fed. Reg. 62368, 62369 (Oct. 21, 2013).
The PLTIA makes it easier for patentees to reinstate expired patents by giving the PTO Director the discretion to accept "any" delayed maintenance fees upon a showing that the delay was "unintentional." See P.L. 112-211 § 202(b)(1)(B) (amending 35 U.S.C. § 41(c)(1) to provide that "[t]he Director may accept the payment of any maintenance fee required by subsection (b) after the 6-month grace period if the delay is shown to the satisfaction of the Director to have been unintentional"); see also 37 C.F.R. § 1.378 (effective Dec. 18, 2013). By replacing the "unavoidable" language in former section 41(c)(1), the PLTIA permits reinstatement of a patent that has been expired for even more than two years upon a showing of "unintentional delay." Other provisions of the Act similarly authorized the Director to apply the "unintentional" standard to the revival of abandoned patent applications. See P.L. 112-211 § 201(b) (authorizing the Director to "establish procedures... to revive an unintentionally abandoned application for patent"); see also 78 Fed. Reg. 62371.
The effective date of the PLTIA is December 18, 2013, one year after it was enacted. See P.L. 112-211 § 203(a)(1). Section 203(b), however, sets forth two "exceptions" to this effective date provision. The first exception is not relevant here. The second states:
(2) Patents in Litigation.-The amendments made by this title [i.e., title II] shall have no effect with respect to any patent that is the subject of litigation in an action commenced before the effective date set forth in subsection (a)(1) [i.e., December 18, 2013].
P.L. 112-211 § 203(b)(2), reprinted at 35 U.S.C. § 27 note (2012) (emphasis added) ...