Firmenich v. Rea

7/28/2019 Firmenich v. Rea

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FIRMENICH SA ,

UNITED STATES DISTRICT COURTEASTERN DISTRICT OF VIRGINIA

(ALEXANDRIA DIVISION)

Plaintiff,

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Hon. TERESA STANEK REA,Under Secretary of Commerce forIntellectual Propertyand Directorof theUnited States Patent and Trademark Office,

Defendant.

Civil Action No: \l 13 C/s/l^T

COMPLA INT

Plaintiff Firmenich SA ("Firmenich"), by its undersigned attorneys, for its Complaintagainst Director of the United States Patent and Trademark Office Teresa Stanek Rea, alleges asfollows:

NATURE OF THE ACT ION

1. This is an action by the assignee ofUnited States Patent No. 8,334,007 ("the '007Patent," attached hereto as Exhibit A) seeking judgment, pursuant to 35 U.S.C. 154(b)(4)(A),that the patent term adjustment conferred by the United States Patent and Trademark Office("USPTO") for the '007 Patent be changed from 1724 days to 2725 days.

2. This action arises under 35 U.S.C. 154 and the Administrative Procedure Act, 5U.S.C. 701-706.


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PART I E S

3. Firmenich is a Swiss companyhavinga principal place of businessat 1, route desJeunes, 1211 Geneva 8, Switzerland. Firmenich is the owner by assignment of all right, title, andinterest in and to th e '007 Patent.

4. Defendant Teresa Stanek Rea (the "Director") is the Under Secretary ofCommerce for Intellectual Property and Directorof the USPTO, acting in her official capacity.The Director is the head of the USPTO and is responsible for superintending or performing allduties required by lawwith respect to the grantingand issuingofpatents. The Director isdesignated by statute as the official responsible for determining the period of patent termadjustment under 35 U.S.C. 154.

JURI SD ICT ION AND VENUE

5. This Court has jurisdiction to hear this action and is authorized to issue the rel iefsought pursuant to 28 U.S.C. 1331, 1338(a), and 1361, 35 U.S.C. 154(b)(4)(A) and 5 U.S.C.701-706.

6. Venue is proper in this judicial district under 35 U.S.C. 154(b)(4)(A).7. This Complaint is timely filed in accordance with 35 U.S.C. 154(b)(4)(A).

BACKGROUND FACTS

8. Firmenich is the assignee of the '007 Patent, as evidenced by assignmentdocuments recorded at the USPTO. The entire right, title, and interest to the '007 Patent,including the right to sue and recover for past infringement thereof, is assigned to and is ownedby Firmenich. Firmenich is therefore the real party in interest in this case.

9. Under 35 U.S.C. 154(a)(2), a successful patent applicant is entitled to a 20-yearpatent term beginning on the date its application was first filed with the USPTO. Because this

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period starts to run with the filing ofthe application rather than with thegrant of the patent, anyadministrative delay bythe USPTO in processing of an application reduces the applicant'seffective patent term.

10. To preventsuch administrative delays from causing unfair lossesof patentprotection, 35 U.S.C. 154(b) requires that the Directorof the USPTO grant a patent termadjustment ("PTA") inaccordancewith the provisions of section 154(b). Specifically, 35 U.S.C.154(b)(3)(D) states that "[t]he Directorshall proceed to grant the patent after completionof theDirector's determination of a patent term adjustment under the procedures established under thissubsection, notwithstanding any appeal taken by the applicant of such determination."

11. Accordingly, the USPTO must grant successful applicants upward adjustments oftheir patent terms to compensate for three categories of processing delay by the USPTO. Thosethree categories, set forth in 35 U.S.C. 154(b)(1)(A), (B), and (C) are known as "A delays," "Bdelays," and "C delays," respectively. Only B delays are at issue in this case.

12. B delays occur when the USPTO fails to issue a patent within 3 years of the filingof the patent application, excluding certain specified periods of delay. 35 U.S.C. 154(b)(1)(B).The statute provides for a day-for-day patent term adjustment to compensate for any B delays:"the termof the patent shall be extended by I day for each day after the end of that 3-year perioduntil the patent is issued." Id.

13. Under 35 U.S.C. 132(b), an applicant may make a request for continuedexamination ("RCE") after the prosecution of an application is closed. 37 C.F.R. 1.114.

14. The dispute in this case concernsthe proper interpretation of the statutegoverningB delays when an applicant has filed an RCE more than three years after the application wasfiled.


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15. In particular, the USPTO has taken the positionthat 35 U.S.C. 154(b)(1)(B)allows the USPTO to reduce the PTA by the time attributable to an RCE when the RCE is filedafter theexpirationof the three-year guarantee periodspecified by the statute.

16. ThisCourt rejected the USPTO's interpretation of 35 U.S.C. 154(b)(1)(B) inExelixis, Inc. v. Kappos, No. I:12cv96, 2012U.S. Dist. LEXIS 157762 (E.D. Va.Nov. 1,2012)("Exelixis /"). In Exelixis 1, the Court granted summary judgment against the USPTO, holdingthat the USPTO's PTA calculation methodology was erroneous as a matter of law andinconsistentwith the plain and unambiguous languageof 35 U.S.C. 154(b)(1)(B). Id. at *20-21. Specifically, in Exelixis I, the Court held that 35 U.S.C. 154(b)(1)(B) "clearly provides nobasis for any RCE's to reduce PTA; instead, RCE's operate only to toll the three year guaranteedeadline, if, and only if, they are filed within three years of the application filing date." Id. at*20 (emphasis added). Butsee Exelixis, Inc. v. Kappos, No. I:l2cv574, 2013 WL 314754 (E.D.Va. Jan. 28,2013) ("Exelixis //") (finding that an RCE filing at any time will reduce B-delayPTA available under the statute).

17. Firmenich respectfully submits that the methodology identified in the ExelixisIaction is the correct PTA methodology that should govern the USPTO's calculation of PTA forFirmenich's '007 Patent.

18. 35 U.S.C. 154(b)(4)(A) provides that "(a)n applicant dissatisfied with adetermination made by the Director under paragraph (3) shall have remedy by a civil actionagainst the Director filed in the United States DistrictCourt for the Eastern District ofVirginiawithin 180days after the grant of the patent. Chapter 7 of title 5 shall apply to such action."


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THE COUNT: U.S. PATENT NO. 8,334.007

19. The allegationsof paragraphs 1-18are incorporated in this claim for reliefas iffully set forth.

20. Robert Clark Mclver, Jean-Paul Leresche and Bessaa Neffah are the inventors ofU.S.Patent Application No. 10/390,905 ("the '905 application"),entitled"ContinuousProcessfor the Incorporation of a Flavoror Fragrance Ingredient or Compositioninto a CarbohydrateMatrix." The '905 application was filed on March 19, 2003. Pursuant to 35 U.S.C.154(b)(1)(B), the '905 application was guaranteed to issue by March 19, 2006, but did not. OnOctober 17, 2006, while the '905 application was still pending, and after the three-year period,the applicants filed with the USPTO an RCE of the '905 application.

21. The '905 application eventually issued as the '007 Patent on December 18, 2012.22. When the USPTO issued the '007 Patent on December 18, 2012, it erroneously

calculated the entitled PTA for the '007 Patent as 1724 days.23. Under 35 U.S.C. 154(b)(1)(A) and according to the USPTO, Firmenich is

entitled to an A delay adjustment of the term of the '007 Patent of 562 days, attributable toUSPTO examination delay.

24. According to the USPTO, Firmenich isonly entitled to a B delay adjustment ofthe term of the '007 Patent of 211 days (i.e., only 211 days from March 19,2006 to October 16,2006). Firmenich submits that this calculation is incorrect.

25. The USPTO's determination of the 1724 day PTA is in error because it fails toinclude a correct adjustment, as required by 35 U.S.C. 154(b)(1)(B), for the time period fromMarch 19, 2006 (three years after the filing date of the '905 application) to December 18, 2012


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(the date the '007 Patent issued). There are 1212days inbetween March 19,2006 andDecember 18,2012.

26. Under 35 U.S.C. 154(b)(1)(B) and the holding in Exelixis /, since an RCE wasfiled more than three years after the filing date of the '905 application (i.e. October 17, 2006),Firmenich is entitled to a total B delay adjustment of 1212 days.

27. Section 35 U.S.C. l54(b)(l)(C) states that "if the issue of an original patent isdelayed due to...appellate review by the PatentTrial and Appeal Board...the term of the patentshall be extended 1 day for each day of the pendency of the proceeding, order, or review, as thecase may be." For the '007 Patent, Firmenich is entitled to an additional adjustment of 1254days (i.e. February26, 2009 to August 2, 2012) due to successful appellate review.

28. Section 35 U.S.C. 154(b)(2)(C) states that "[t]he period of adjustment of theterm of a patent under paragraph (1) shall be reduced by a period equal to the period of timeduring which the applicant failed to engage in reasonable efforts to conclude prosecution of theapplication." For the '007 Patent, the USPTO determined the period of applicants delay to be303 days.

29. The correct PTA for the '007 Patent is 2725 days. The 2725 days includes the562 day period determined by the USPTO attributed to A delays (i.e., USPTO examination delayunder 35 U.S.C. 154(b)(1)(A)), the 1212day period under 35 U.S.C. 154(b)(1)(B), and the1254day period under 35 U.S.C. 154(b)(1)(C), less the 303 day period of applicants delayunder 35 U.S.C. 154(b)(2)(C).

30. The Director's determination of only 1724 days of PTA for the '007 Patent isarbitrary, capricious, an abuse of discretion, inconsistent with the language of 35 U.S.C. 154and related rules, or otherwise not in accordance with law and in excess of statutory jurisdiction,

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authority or limitation. TheDirector'sdetermination of only 1724 days is clearly incorrect inview of the holding in Exelixis I.


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PRAYER FOR REL IEF

WHEREFORE, PlaintiffFirmenich prays that the Court:A. Issuean Ordercompellingthe Directorto change the amount of patentterm

adjustment for the '007 Patent from 1724 days to 2725 days, andto issue an appropriateCertificate ofCorrection for the '007 Patent to reflect the 2725 day patent term adjustment; and

B. Grant to Firmenich such other and further relief as the nature of the casemayadmit or require and as this Court deems just and proper.


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Dated: June 14,2013

OF COUNSEL:Allan A. FanucciHoward I. ShinAttorneysfor PlaintiffFirmenich SAWINSTON & STRAWN LLP200 Park AvenueNew York, NY 10166(212)294-6700(212) 294-4700 (Facsimile)[email protected]@winston.com

Respectfully submitted.

Charles B. Molster, III(VSB No. 23613)Attorneyfor Plaintiff Firmenich SAWINSTON & STRAWN LLP1700 K Street, N.W.Washington, D.C. 20006(202) 282-5988(202) 282-5100 (Facsimile)[email protected]

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Firmenich v. Rea