Sykes v. Dudas

• Decision Date: 02 September 2008
• Docket Number: Civil Action No. 06-829 (CKK).
• Citation: 573 F.Supp.2d 191
• Parties: Thomas D. SYKES, Plaintiff, v. Jon W. DUDAS, Director of the United States Patent and Trademark Office, Defendant.
• Court: U.S. District Court — District of Columbia

573 F.Supp.2d 191

Thomas D. SYKES, Plaintiff, v. Jon W. DUDAS, Director of the United States Patent and Trademark Office, Defendant.

Civil Action No. 06-829 (CKK).

United States District Court, District of Columbia.

September 2, 2008.

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

Thomas D. Sykes, Lake Forest, IL, pro se.

Jeffrey A. Taylor, U.S. Atty., Rhonda C. Fields, Asst. U.S. Atty., United States Attorney's Office, Washington, DC, Nathan K. Kelley, William LaMarca, Office of the Solicitor, United States Patent & Trademark Office, Alexandria, VA, of counsel, for Defendant.

MEMORANDUM OPINION

COLLEEN KOLLAR-KOTELLY, District Judge.

In 1993, Plaintiff Thomas D. Sykes invented a computer mouse-pad that could be mounted on a user's thigh. After multiple patent applications and lengthy delays, the Patent and Trademark Office ("PTO") granted Plaintiff a United States patent on November 8, 2005. The PTO also informed Plaintiff that he was entitled to certain adjustments lengthening his patent term (i.e., the length of time that Plaintiff may exclude others from making, using, selling, or offering for sale his invention throughout the United States) based on certain delays that occurred during the patent's prosecution. The instant lawsuit concerns Plaintiffs desire for a longer patent term. Defendant Jon W. Dudas, in his official capacity as Director of the United States Patent and Trademark Office, has filed a [13] Motion to Dismiss, or in the alternative, Motion for Summary Judgment. Plaintiff, proceeding pro se, has filed a [17] Cross-Motion for Summary Judgment.¹ After a searching review of the parties' submissions, including the attachments thereto, applicable statutory authority, regulations, case law, and the administrative record, the Court finds that Plaintiffs claims based on the American Inventors Protection Act are not cognizable because the relevant provisions of that act—including its jurisdiction and venue provision—are not retroactively applicable to Plaintiffs patent application. The Court also finds that it lacks jurisdiction over the remainder of Plaintiffs claims. Accordingly, the Court shall grant Defendant's Motion to Dismiss brought under Federal Rules of Civil Procedure 12(b)(1) and 12(b)(6), as to Plaintiffs claims brought under the American Inventors Protection Act, shall grant Defendant's Motion to Dismiss brought under Federal Rule of Civil Procedure 12(b)(1) as to the remainder of Plaintiffs claims, shall deny-without-prejudice Defendant's Motion for Summary Judgment, and deny-with-prejudice-in-part Plaintiffs Motion for Summary Judgment as to Plaintiffs claims based on the American Inventors Protection Act, and deny-without-prejudice-inpart Plaintiffs Motion for Summary Judgment as to the remainder of Plaintiffs claims, for the reasons set forth below.

I. BACKGROUND

A. Statutory Background

An inventor must file an application with the PTO to receive a United States patent. 35 U.S.C. § 111. A patent excludes others from making, using, selling, or offering for sale an invention throughout the United States for a period of time, referred to as the "term" of the patent. Id. §§ 154(a)(1), (2). Prior to 1994, a patent's term was 17 years from the date of issuance. See Act of March 2, 1861, ch. 88, § 16, 12 Stat. 246 (codified as amended at 35 U.S.C. § 154). Because the patent term was not calculated from the date the inventor filed his or her patent application (but rather by the date of issuance), the term of the patent was unaffected by the amount of time that elapsed during prosecution of the patent.

Congress altered this scheme in 1994. The Uruguay Round Agreements Act (the "GATT legislation"²) increased patent terms from 17 years to 20 years, but changed the calculation of the terms so that they ended on a date twenty years after the earliest effective filing date of the patent application (not from the date of issuance). Pub. L. No. 103-465, § 532, 108 Stat. 4983 (1994) (codified as amended at 35 U.S.C. § 154). As a result of these changes, patent terms were affected by the amount of time that elapsed during prosecution of a patent. Accordingly, the GATT legislation also provided enumerated "term extensions" that could extend the term of a patent based on certain delays that might occur. Id.

Congress amended this scheme again in 1999 with the American Inventors Protection Act ("AIPA"). Pub. L. No. 106-113, §§ 4402-4405, 113 Stat. 1501, 1501A (1999) (codified as amended at 35 U.S.C. § 154). The AIPA provided additional grounds for term extensions that were not included in the GATT legislation. Id. § 4402. The AIPA also contained a jurisdiction and venue provision allowing aggrieved patent applicants to challenge the PTO's decisions related to patent term adjustments in the District of Columbia:

[a]n Applicant dissatisfied with a determination made by the Director under paragraph (3) shall have a remedy by a civil action against the Director filed in the United States District Court for the District of Columbia within 180 days after the grant of the patent.

Id. § 4402(b)(4)(A) (codified as amendment at 154(b)(4)(A)).

The AIPA specified that the additional term extensions, the jurisdiction and venue provision, and other changes included in the Act, would take effect "on the date that is 6 months after the date of the enactment of this Act [which turned out to be May 29, 2000]." Id. § 4405. Of particular significance in this litigation, Section 4405(a) specifies that the patent term adjustments and the jurisdiction and venue provision in Section 4402 would not apply to previously filed patent applications:

The amendments made by sections 4402 and 4404 shall take effect on the date that is 6 months after the date of the enactment of this Act and, except for a design patent application filed under chapter 16 of title 35, United States code, shall apply to any application filed on or after the date that is 6 months after the date of the enactment of this Act.

Id. § 4405(a). In contrast, Section 4405(b)—the provision immediately following 4405(a)—specifies that changes in a different provision of the AIPA, Section 4403, would apply to previously filed applications:

The amendments made by section 4403 ... shall take effect on the date that is 6 months after the date of the enactment of this Act, and shall apply to all applications filed under section 111(a) of title 35, United States Code, on or after June 8, 1995....

Id. § 4405(b).

The AIPA amendments were codified in 35 U.S.C. § 154, and the PTO issued implementing regulations thereto. See AIPA, § 4402(b)(3)(A) (requiring the PTO Director to prescribe implementing regulations). The PTO specifically interpreted Section 4405(a) to apply the changes in Section 4402 prospectively (i.e., applicable only to applications filed on or after May 29, 2000). See 37 C.F.R. 1.702(f) ("[t]he provisions of this section ... apply only to original applications ... filed on or after May 29, 2000, and patents issued on such applications").

B. Factual Background

Plaintiff initially filed an application for a United States utility patent on January 11, 1994, which was assigned number 08/180,202 (hereinafter, the '202 application).³ Pl.'s Stmt. ¶ 3. The PTO determined that the '202 application described several species of inventions and directed the Plaintiff to select one to pursue in the '202 application, and to file "divisional" applications to pursue the others. Pl.'s Stmt. ¶ 4; Def.'s Resp. Stmt. ¶ 4. In response to the PTO's directive, Plaintiff filed a divisional application on May 22, 1996, which was assigned number 08/651,431 (hereinafter, the '431 application).⁴ Pl.'s Stmt. ¶ 5; Def.'s Resp. Stmt. ¶ 5. Plaintiff subsequently abandoned the '202 application. Pl.'s Stmt. ¶ 7.

On June 17, 1998, the PTO's examiner issued a final rejection on the majority of claims in the '431 application. Id. ¶ 9. Plaintiff filed a timely notice of appeal to the PTO's Board of Patent Appeal and Interferences, and on October 30, 2001, the Board issued a decision reversing the examiner and remanding the '431 application to the examiner. Id. ¶¶ 10-11, Def.'s Resp. Stmt. ¶ 10. Following a lengthy remand period, the PTO's examiner issued a notice of allowance on August 12, 2004. Pl.'s Stmt. ¶ 13. Attached to the notice was a document titled "Determination of Patent Term Extension under 35 U.S.C. 154(b) (application filed after June 7, 1995 but prior to May 29, 2000)," which stated that Plaintiff's patent term would be extended by 1,139 days to account for the delays associated with his patent prosecution. Id. ¶ 14.

On November 8, 2004, the PTO issued United States Patent No. 6,962,311 (the '311 patent). Pl.'s Stmt. ¶ 16. On November 10, 2005, Plaintiff submitted a petition, through counsel, seeking a longer term for his '311 patent.⁵ Pl.'s Stmt. ¶ 19; Def.'s Resp. Stmt. ¶ 19. The Petition argued that the '311 patent should receive a 17-year term pursuant to the calculation of patent terms in place prior to enactment of the GATT legislation, or alternatively, should receive increased term extensions in place following enactment of the AIPA. See A.R. 14-36 (11/10/05 Petition). On July 11, 2006, the PTO responded to Plaintiff's petition with a written decision rejecting Plaintiffs contention that the '311 patent was entitled to a different term. Pl.'s Stmt. ¶ 21.

C. Procedural Background

Plaintiff filed a three-page, 12-paragraph Complaint on. May 3, 2006. The Complaint predicates the Court's jurisdiction on 28 U.S.C. § 1331 (federal question), 28 U.S.C. § 1338(a) (patents), and 35 U.S.C. § 154(b)(4)(A) (the specific jurisdiction provision in Section 4402 of the AIPA). The Complaint predicates venue exclusively on 35 U.S.C. 154(b)(4)(A) (the specific venue provision in Section 4402 of the AIPA). The remainder of the Complaint is devoted to describing Plaintiffs "dissatisfaction" with the PTO's patent term adjustments made under the AIPA's amendme...