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Actelion Pharmaceuticals, Ltd. v. Matal

United States Court of Appeals, Federal Circuit

February 6, 2018

ACTELION PHARMACEUTICALS, LTD., Plaintiff-Appellant
v.
JOSEPH MATAL, PERFORMING THE FUNCTIONS AND DUTIES OF THE UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR, U.S. PATENT AND TRADEMARK OFFICE, Defendant-Appellee

         Appeal from the United States District Court for the Eastern District of Virginia in No. 1:16-cv-00304-LO-TCB, Judge Liam O'Grady.

          Thomas Hoxie, Hoxie & Associates, LLP, Millburn, NJ, argued for plaintiff-appellant.

          Dana Kaersvang, Appellate Staff, Civil Division, United States Department of Justice, Washington, DC, argued for defendant-appellee. Also represented by Chad A. Readler, Dana J. Boente; Kimere Jane Kimball, Office of the United States Attorney for the Eastern District of Virginia, Alexandria, VA; Nathan K. Kelley, Brian Racilla, Molly R. Silfen, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA.

          Before Lourie, O'Malley, and Wallach, Circuit Judges.

          LOURIE, CIRCUIT JUDGE.

         Actelion Pharmaceuticals, Ltd. ("Actelion") appeals from the grant of summary judgment by the United States District Court for the Eastern District of Virginia in favor of the United States Patent and Trademark Office ("PTO") regarding the length of the patent term adjustment ("PTA") for U.S. Patent 8, 658, 675 ("the '675 patent"), entitled "Pyridin-4-yl Derivatives." See Actelion Pharm., Ltd. v. Lee, 216 F.Supp.3d 680 (E.D. Va. 2016). For the reasons that follow, we affirm.

         Background

         Congress has established a framework in 35 U.S.C. § 154 (2012) to adjust a patent's term "[t]o account for any undue delays in patent examination caused by the PTO." Pfizer, Inc. v. Lee, 811 F.3d 466, 468 (Fed. Cir. 2016). One such delay is designated an "A Delay, " which "arises when the PTO fails to meet statutory deadlines for events that occur during prosecution, such as providing notice to the applicant of the rejection of a claim or taking action on an applicant's reply to such a rejection." Daiichi Sankyo Co. v. Lee, 791 F.3d 1373, 1374 (Fed. Cir. 2015).

         The only dispute in the instant case is the A Delay calculation, under 35 U.S.C. § 154(b)(1)(A)(i)(II) in particular, for the '675 patent granted from U.S. Patent Application 13/383, 619 ("the '619 application"), which was filed as a national stage application pursuant to 35 U.S.C. § 371.

         I. Relevant Statutes

         On January 14, 2013, Congress enacted the Technical Corrections-Leahy-Smith America Invents Act ("Technical Corrections Act" or "TCA"), Pub. L. No. 112-274, 126 Stat. 2456 (2013). As the name of the Act suggests, the TCA made certain technical corrections to various sections of Title 35 following the enactment of the Leahy-Smith America Invents Act ("AIA"), including amendments to certain provisions of 35 U.S.C. § 154.

         The current version of 35 U.S.C. § 154(b)(1)(A), as amended by the TCA, provides in part:

(A) Guarantee of prompt patent and trademark office RESPONSES.-Subject to the limitations under paragraph (2), if the issue of an original patent is delayed due to the failure of the Patent and Trademark Office to-
(i) provide at least one of the notifications under section 132 or a notice of allowance under section 151 not later than 14 months after-
(II) the date of commencement of the national stage under section 371 in an international application;
. . ., the term of the patent shall be extended 1 day for each day after the end of the period specified in clause (i), (ii), (iii), or (iv), as the case may be, until the action described in such clause is taken.

35 U.S.C. § 154(b)(1)(A) (post-TCA) (emphasis added).

         Prior to the amendments under the TCA, § 154(b)(1)(A)(i)(II) read:

(II) the date on which an international application fulfilled the requirements of section 371 of this title;

35 U.S.C. § 154(b)(1)(A)(i)(II) (pre-TCA) (emphasis added).

         Subsection 1(n) of the TCA provides that "[e]xcept as otherwise provided in this Act, the amendments made by this Act shall take effect on the date of enactment of this Act, and shall apply to proceedings commenced on or after such date of ...


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