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Japanese Foundation for Cancer Research v. Lee

United States Court of Appeals, Federal Circuit

December 9, 2014

JAPANESE FOUNDATION FOR CANCER RESEARCH, Plaintiff-Cross-Appellant,
v.
MICHELLE K. LEE, Deputy Director, U.S. Patent and Trademark Office, in her official capacity as Deputy Under Secretary of Commerce for Intellectual Property AND UNITED STATES PATENT AND TRADEMARK OFFICE, Defendants-Appellants

Page 1301

Appeals from the United States District Court for the Eastern District of Virginia in No. 1:13-CV-00412-AJT-TRJ, Judge Anthony J. Trenga.

MICHAEL J. LOCKERBY, Foley & Lardner LLP, of Washington, DC, argued for plaintiff-cross-appellant.

ADAM C. JED, Attorney, Appellate Staff, Civil Division, United States Department of Justice, of Washington, DC, argued for defendants-appellants. With him on the brief were STUART F. DELERY, Assistant Attorney General, DANA J. BOENTE, Acting United States Attorney; and NATHAN K. KELLEY, Solicitor, United States Patent and Trademark Office. Of counsel were MARK R. FREEMAN, Attorney, and DAVID MOSKOWITZ, United States Attorney's Office, of Alexandria, Virginia.

Before PROST, Chief Judge, DYK and TARANTO, Circuit Judges.

OPINION

Page 1302

Prost, Chief Judge.

The United States Patent and Trademark Office (" PTO" ) appeals from the decision of the United States District Court for the Eastern District of Virginia granting the Japanese Foundation for Cancer Research's (" the Foundation" ) cross-motion for summary judgment that the PTO acted arbitrarily and capriciously, and abused its discretion, when it refused to withdraw the terminal disclaimer on U.S. Patent No. 6,194,187 (" '187 patent" ). For the reasons stated below, we reverse.

I

The '187 patent was issued and assigned to the Foundation on February 27, 2001. On October 11, 2011, the Foundation's attorney of record responsible for the prosecution of the '187 patent filed a statutory disclaimer pursuant to 37 C.F.R. § 1.321(a) with the PTO, disclaiming " the entire term of all claims in U.S. Patent 6,194,187" and requesting that the disclaimer be " duly recorded." J.A. 894. On December 13, 2011, the Foundation's attorney of record filed a petition under 37 C.F.R. § 1.182 to withdraw the statutory disclaimer. The petition indicated that the disclaimer " was not filed in the context of any litigation or an assertion of double patenting," and that the disclaimer had not yet been made public by either the Foundation or the PTO, as it had not yet been entered into the PTO's electronic Patent Application Information Retrieval (" PAIR" ) database or the paper prosecution file. J.A. 900. The PTO issued a decision denying the Foundation's petition on January 17, 2012.

According to the PTO's decision, the petition indicated that the Foundation's filed disclaimer included all of the information as well as the fee required pursuant to 37 C.F.R. § 1.321(a). J.A. 928. The PTO also noted that " [t]here is no indication that the power of attorney was revoked or withdrawn," and thus the attorney of record " appears to be a proper party to file the statutory disclaimer." J.A. 928-29. The PTO explained that the statutory mechanisms available to correct a patent " are not available to withdraw or otherwise nullify the effect of a recorded terminal disclaimer," and that the PTO's established policy was to deny any " request to withdraw or amend a recorded terminal disclaimer in an issued patent on the grounds that the rules of practice and 35 U.S.C. § 253 do not include a mechanism for withdrawal or amendment of such a terminal disclaimer." J.A. 929. The PTO concluded by noting that even though the disclaimer had not been " fully processed" the " patent owner freely dedicated to the public the entire term" of all the patent's claims when the disclaimer was filed. Id.

The Foundation's terminal disclaimer subsequently appeared in the '187 patent's prosecution file on the electronic PAIR database. On February 27, the Foundation filed a petition under 37 C.F.R. § § 1.182 and 1.183 asking the PTO to withhold publication of the terminal disclaimer in the Official Gazette, and indicating that it would file a request for reconsideration, which it filed on March 16. (The Foundation asked in the alternative for relief under 37 C.F.R. § § 1.182 and 1.183 " to invoke the discretion of the director and suspend the rules." ). In August, the Foundation's attorney of record met with the PTO and, following that meeting, filed a supplemental petition addressing its argument concerning whether the PTO had the inherent authority to grant the relief the Foundation requested.

Page 1303

The Foundation's March petition described what the Foundation characterized as " newly revealed information" and " newly discovered evidence." J.A. 976. This included signed declarations from a number of personnel associated with one of the '187 patent's Japanese licensees, Kyowa Hakko Kirin, Inc. (" KHK" ), and KHK's Japanese patent counsel, Kyowa Law Group (" Kyowa Law" ).[1] According to the declarations and the Foundation's petition, the following series of events preceded the Foundation's attorney of record's filing of the statutory disclaimer.

First, on March 8, 2011, KHK's in-house counsel contacted a paralegal at Kyowa Law to inquire as to whether a patent may be abandoned or disclaimed before it lapsed because of non-payment of the next maintenance fee. The paralegal's declaration states that she contacted her " boss" and together they " conducted research which indicated that a disclaimer could be filed under U.S. statutory and regulatory provisions." J.A. 963. Then, the next day, March 9, the paralegal declares that she sent a letter by fax to the Foundation's attorney of record's law firm, Foley & Lardner LLP (" Foley" ), which reads, in relevant part, as follows (below the subject line " Re: U.S. Patent No. 6,194,187" and dated March 9):

Dear Sirs:
Our clients would like to abandon the captioned patent positively and invalidate this patent before the case lapses by non-payment of the next maintenance fees, which will be due on August 27, 2012.
Would you please let us have the necessary forms and/or information for the procedure of positive abandonment, ...

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