Bristol–Myers Squibb Co. v. Kappos

• Decision Date: 20 September 2012
• Docket Number: Civ. Nos. 09–1330 (EGS), 09–2420.
• Citation: 891 F.Supp.2d 135
• Parties: BRISTOL–MYERS SQUIBB COMPANY and Kosan Biosciences Inc., Plaintiffs, v. David KAPPOS, in his official capacity as Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, Defendant.
• Court: U.S. District Court — District of Columbia

891 F.Supp.2d 135

BRISTOL–MYERS SQUIBB COMPANY and Kosan Biosciences Inc., Plaintiffs,

v.David KAPPOS, in his official capacity as Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, Defendant.

Civ. Nos. 09–1330 (EGS), 09–2420.

United States District Court,

District of Columbia.

Sept. 20, 2012.

Brian M. Boynton, Randolph D. Moss, Seth P. Waxman, Wilmer Cutler Pickering Hale and Dorr, LLP, Washington, DC, for Plaintiff.

John G. Interrante, U.S. Attorney's Office, Judiciary Center Building, Washington, DC, for Defendant.

MEMORANDUM OPINION

EMMET G. SULLIVAN, District Judge.

This case is before the Court on defendant's motion for reconsideration of the Court's January 27, 2012 Memorandum Opinion and Order granting plaintiffs' motion for summary judgment and denying defendant's motion to dismiss. Upon consideration of the motion, the response and reply thereto, the entire record, the applicable law, and for the reasons set forth below, the defendant's motion for reconsideration is DENIED.

I. INTRODUCTION

Plaintiffs Bristol–Meyers Squibb Company and Kosan Biosciences Inc. filed this action on June 17, 2009 seeking review of certain patent term adjustments granted by the Director of the United States Patent and Trademark Office (“PTO”). Plaintiffs alleged that all of the challenged PTO patent term adjustment determinations relied on an erroneous interpretation of 35 U.S.C. § 154(b), rejected by the United States Court of Appeals for the Federal Circuit in Wyeth v. Kappos, 591 F.3d 1364 (Fed.Cir.2010). The Amended Complaint identified twenty-one patents, set forth in twenty-one separate counts, for which the PTO allegedly incorrectly determined the patent term adjustment.

In June 2010, the Court ordered thirteen of the twenty-one patents identified by plaintiffs in this action to be remanded to the PTO for recalculation and adjustment of the patent terms in accordance with Wyeth. Court's Minute Order of June 23, 2010. Eight counts remained as of January 27, 2012. ¹ The parties agreed that the timeliness of plaintiffs' appeals for the remaining Counts was the sole remaining legal question. See id. at 3.

On January 27, 2012 the Court granted plaintiffs' cross-motion for summary judgment and denied defendant's motion to dismiss, finding that plaintiffs' appeals of certain patent term adjustments were timely filed because the statute of limitations for filing such an action was tolled by plaintiffs' request that the PTO reconsider its patent term adjustment decisions. See ECF No. 41. Defendant moved for reconsideration of the Court's decision on February 24, 2012 and the Court held oral argument on the motion on July 10, 2012. The motion is now ripe for the Court's determination.

II. BACKGROUND²

Patents are ordinarily granted “for a term beginning on the date on which the patent issues and ending 20 years from the date on which the application for the patent was filed in the United States....” 35 U.S.C. § 154(a)(2). If the PTO causes certain delays in the processing of the patent, however, a patent's term may be extended. 35 U.S.C. § 154(b)(1). The statute provides for the adjustment and calculation of patent terms as a result of several different categories of delay.

At issue in this case are two of those categories: “A Delay” and “B Delay.” The “A Delay” is the delay of the PTO to meet certain intermediate deadlines during the pendency of a patent application. 35 U.S.C. § 154(b)(1)(A). The “B Delay” is the delay caused by the PTO's failure to issue the patent within three years of the date of the filing of the patent application. 35 U.S.C. § 154(b)(1)(B).

After the PTO makes a determination that a patent application will be granted, it issues a written notice of allowance of the application. Id. § 151. Also issued with the notice of allowance is an initial determination of the patent term adjustment, if applicable. 35 U.S.C. § 154(b)(3)(B)(i) (requiring the PTO to “make a determination of the period of any patent term adjustment” and “transmit a notice of that determination with the written notice of the allowance of the application”). If an applicant disagrees with a patent term adjustment determined by the PTO, it is entitled to request reconsideration of the patent term adjustment. 35 U.S.C. § 154(b)(3)(B)(ii).

Because the patent term adjustment submitted with the notice of allowance is issued months before the grant of the patent, the patent term adjustment reflected in the notice of allowance does not include “B delay,” because “B Delay” continues to accrue until the grant of the patent. As the PTO explained in its motion to dismiss:

Because the computer program that the USPTO uses to calculate the PTA does not calculate “B Delay” until the patent issue date is determined, this initial PTA determination typically only includes the “A delay” determined by the USPTO as of the date of the notice of allowance. Thus, at this point, the applicant is only able to challenge the USPTO's A-delay determination.

Def.'s Mot. to Dismiss at 3, ECF No. 28. The regulations provide that any requests for reconsideration of the patent term adjustment indicated in the patent when it is granted must be made within two months of the date that patent issues. 37 C.F.R. § 1.705(d).

Section 154 permits the applicant to appeal the patent term adjustment to a United States District Court. The statute provides:

An applicant dissatisfied with a determination made by the Director under paragraph (3) shall have remedy by a civil action against the Director filed in the United States District Court for the Eastern District of Virginia ³ within 180 days after the grant of the patent. Chapter 7 of title 5 shall apply to any such action. Any final judgment resulting in a change to the period of adjustment of the patent term shall be served on the Director, and the Director shall thereafter alter the term of the patent to reflect such change.

35 U.S.C. § 154(b)(4)(A).

In its January 27, 2012 Opinion, the Court addressed the remaining issue of whether the plaintiffs' appeals of the patent term adjustments were timely filed. The Court discussed the general tolling rule as applied to agency decisions and the Supreme Court's decision in Interstate Commerce Commission v. Brotherhood of Locomotive Engineers, 482 U.S. 270, 107 S.Ct. 2360, 96 L.Ed.2d 222 (1987). The Court also explained the basis of the tolling rule, which is that “[a] request for administrative reconsideration renders an agency's otherwise final action non-final with respect to the requesting party.” Clifton Power Corp. v. FERC, 294 F.3d 108, 110 (D.C.Cir.2002) (citing United Transp. Union v. Interstate Commerce Comm'n, 871 F.2d 1114, 1116 (D.C.Cir.1989)). If the agency action is non-final, the district court lacks jurisdiction to review it, and the time to challenge that agency decision in court must be tolled.

The Court explained that the tolling rule set forth in Locomotive Engineers has been nearly universally applied, and the Court noted that defendant conceded that the rule would apply in this case unless the patent statute would be “expressly contravened by the tolling rule.” Jan. 27 Op., 841 F.Supp.2d at 243 (quoting Def.'s Combined Opp'n at 8). The Court discussed one case in which tolling was found not to apply, Stone v. INS, 514 U.S. 386, 115 S.Ct. 1537, 131 L.Ed.2d 465 (1995). The Court summarized the facts and holding of Stone, which found that the tolling rule did not apply to an action challenging a deportation order under the Immigration and Nationality Act (“INA”). Finding that “[n]othing in the patent statute is comparable to the INA language that prevented the application of the general tolling rule in Stone,” this Court held that the tolling rule applied to plaintiffs' motions for administrative reconsideration of the patent term adjustments, and therefore, plaintiffs' appeals in this Court were timely filed. The Court further explained that the application of the tolling rule in this case is not only consistent with the statutory language, but also the function of the tolling rule itself, which seeks to conserve judicial resources.

III. STANDARD OF REVIEW

Federal Rule of Civil Procedure 59(e) allows a party to file a Motion for Reconsideration, but such motions “are disfavored and relief from judgment is granted only when the moving party establishes extraordinary circumstances.” Niedermeier v. Office of Baucus, 153 F.Supp.2d 23, 28 (D.D.C.2001) (citing Anyanwutaku v. Moore, 151 F.3d 1053, 1057 (D.C.Cir.1998)). A motion for reconsideration is not a second opportunity to present argument upon which the court has already ruled. W.C. & A.N. Miller Cos. v. United States, 173 F.R.D. 1, 3 (D.D.C.1997). “A Rule 59(e) motion is discretionary and need not be granted unless the district court finds that there is an intervening change of controlling law, the availability of new evidence, or the need to correct a clear error or prevent manifest injustice.” Firestone v. Firestone, 76 F.3d 1205, 1208 (D.C.Cir.1996) (internal citations omitted). In addressing the claims of a party on a motion for reconsideration, the Court is free to expand upon or clarify the reasons supporting its prior ruling. Dage v. Johnson, 537 F.Supp.2d 43, 49 (D.D.C.2008); see Payne v. District of Columbia, 808 F.Supp.2d 164, 172–73 (D.D.C.2011).

IV. DISCUSSION

In its motion for reconsideration, the PTO alleges that the Court misapprehended a “critical distinction” regarding the difference between the patent term adjustment statute and other statutes in which courts have found Locomotive Engineers tolling to apply. Def.'s Mem. in Supp. of Mot. for Recons. (“Def.'s Br.”) at 2, ECF No. 42. Defendant cites from the text of its initial briefing on the issue:

Tellingly, Congress departed from the standard form statutory limitation period when it drafted § 154(b)(4)(A). Instead of triggering the start of the limitations period for...