February 16, 2021 - Last Week in the Federal Circuit

Last Week in the Federal Circuit (February 8-12): Patent Term Adjustments When Examiners Back Down

Did you remember to send your favorite examiner a Valentine’s Day card?  Okay, so maybe that’s not the typical applicant/examiner relationship.  But this week we do look at some potential consequences from the back and forth between examiners and applicants.  Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest.

Precedential opinions: 7

Non-precedential opinions: 16

Rule 36: 4

Longest pending case from argument:  Synchronoss Technologies, Inc v. Dropbox, Inc., No. 19-2196 (191 days)

Shortest pending case from argument (non-Rule 36): Caterpillar Paving Products v. Wirtgen America, Inc., No. 20-1261 (8 days)

Case of the week: Chudik v. Hirshfeld, No. 20-1833

Panel:  Judges Taranto, Bryson, and Hughes, with Judge Taranto writing the opinion

You should read this case if:  you have a matter involving patent term adjustment, particularly delays due to PTAB appeals

Our case of the week deals with the exciting world of patent term adjustment, which allows patent owners to ask the Patent Office to extend a patent’s term because of delays during examination.  By statute and regulation, only some kinds of delays qualify for an adjustment.

Chudik focuses on one type of delay, called C-delay (based on the relevant statutory provision defining it).  C-delay allows patent owners to seek adjustment for delays caused by “appellate review” that “reverses” an earlier adverse determination of unpatentability.  The relevant provision (35 U.S.C. § 154(b)(1)(C)(iii)) applies to delay due to:

appellate review by the Patent Trial and Appeal Board or by a Federal Court in a case in which the patent was issued under a decision in the review reversing an adverse determination of patentability.

The issue in Chudik was whether a C-delay occurs when an applicant appeals a rejection to the Board but, before the Board hears the case, the examiner withdraws the rejection and reopens prosecution.  Chudik got a patent on a guide for shoulder surgery, but not without some sprains, strains, and tears.  During the examination, he appealed four times to the Board from examiner rejections, only to have the examiner withdraw the rejection each time and re-open prosecution.  Although the examiner finally allowed the claims after the fourth appeal, Chudik claimed he was entitled to 655 days of “C-delay” for the period when his four appeals were pending.  The PTO denied his request and the district court upheld the PTO’s decision.

The Federal Circuit affirmed based on the statute’s plain language.  According to the Federal Circuit, there was no C-delay because Chudik’s patent did not result from an appeal decision “reversing” an examiner determination of unpatentability.  Rather, Chudik was (un)lucky enough to have an examiner reconsider an earlier position and back down before the Board heard his case.  The ordinary usage of a “decision” following “appellate review” leading to reversal required that “a distinct reviewing authority” take action to modify the examiner’s decision, not that the examiner herself decide to reconsider.

The Court noted that another type of delay, B-delay, would normally be available in situations where an examiner unilaterally acts before an appeal decision.  B-delay typically allows adjustments for prosecution time beyond three years.  But B-delay excludes adjustments for “time consumed by continued examination … requested by the applicant.”  That meant Chudik could not benefit from a B-delay adjustment—before beginning the merry-go-round of appeal-withdrawal-reopen-rejection, he had received an earlier final rejection and requested continued examination rather than filing an appeal.  The Federal Circuit thus concluded with a cautionary note:  “The unavailability of B-delay for nearly two years (655 days) of delay in the PTO illustrates what applicants should understand when deciding whether to request a continued examination rather than take an immediate appeal.  The potential benefit of immediate re-engagement with the examiner through such continued examination comes with a potential cost.”