Appeal from the United States District Court for the Eastern District of Virginia in No. 1:13-cv-00824-GBLTCB, Judge Gerald Bruce Lee.
MICHAEL OAKES, Hunton & Williams LLP, Washington, DC, for plaintiff-appellant. Also represented by JEFFREY B. VOCKRODT.
DANA KAERSVANG, Appellate Staff, Civil Division, United States Department of Justice, Washington, DC, argued for defendant-appellee. Also represented by MARK R. FREEMAN; ANTONIA KONKOLY, Office of the United States Attorney for the Eastern District of Virginia, Alexandria, VA; BRIAN THOMAS RACILLA, MEREDITH HOPE SCHOENFELD, NATHAN K. KELLEY, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA.
Before MOORE, SCHALL, and REYNA, Circuit Judges.
Reyna, Circuit Judge.
Hossein Mohsenzadeh appeals the district court's entry of summary judgment in favor of the government on the issue of whether the United States Patent and Trademark Office (" PTO" ) properly calculated patent term adjustments for two patents that issued from divisional applications. Because we find that the district court did not err in affirming the PTO's denial of Mohsenzadeh's requests for patent term adjustments, we affirm.
A. Patent Term Adjustments
The patent term adjustment statute, 35 U.S.C. § 154, has two provisions restoring patent term to patentees for delays attributable to the PTO that occur prior to the issuance of a patent. " A Delay" refers to the PTO's failure to timely take certain actions or provide certain notices to the patentee. 35 U.S.C. § 154(b)(1)(A). " B Delay" refers to the PTO's failure to issue a patent within three years of the actual filing date of the application. Id. § 154(b)(1)(B). The statute requires the agency to extend the term of the patent by one day for each day the issuance of a patent is delayed under either section 154(b)(1)(A) or (B).
This appeal concerns only A Delay. The relevant statutory provision, 35 U.S.C. § 154(b)(1)(A), requires that a notice be sent to the applicant within 14 months of the date of filing a domestic application or the start of the national stage of an international application:
[I]f 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--
(I) the date on which an application was filed under section 111(a); or
(II) the date of commencement of the national stage under section 371 in an international application . . .
Id. § 154(b)(1)(A). Included among the types of notices due under section 132 is the notice of a restriction requirement.
The impact of a late-mailed restriction requirement forms the basis of this appeal. When an application is filed with claims drawn to multiple inventions, the PTO may ...