MKS Instruments v. Rea

7/29/2019 MKS Instruments v. Rea

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FILEDIN T H E UNITED S T A T E S D I S T R IC T C O U R T F O R T H E

E A S T E R N D I S T R I C T OF V I R G I N I AZ813 MAR II P |: 3l

MKS INSTRUMENTS, INC. CLERK US DISTRICT COURT90 Industrial Way ALEXANDRIA. VIRGINIAWilmington, MA 01887-4610

Plaintiff,

HON. TERESA STANEK REA, in hercapacity as Acting Under Secretary ofCommercefor Intellectual Property and Acting Director of theUnited States Patent and Trademark Office

Defendant.

Civil Action No. / -/ 3 C\/2 3

C O M P L A I N T

PlaintiffMKS Instruments, Inc. ("MKS" or "Plaintiff), for its complaint against theHonorable Teresa Stanek Rea in her capacity as Acting Under Secretary of Commerce forIntellectual Property and Acting Director of the United States Patent and Trademark Office(hereinafter "Ms. Rea" or "Defendant"), states as follows:

N A T U R E O F T H E A C T I O N

1. This is an action by MKS, the owner and assignee of United States PatentNo. 8,264,237 ("the '237 patent") for review of the determination byDefendant, pursuant to,inter alia, 35 U.S.C. 154(b)(3)(B), of the Patent Term Adjustment of the '237 patent. MKSseeks a judgment that the patent term adjustment for the '237 patent be changed from 544 to944 days.

2. This action arises under 35 U.S.C. 154.


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T H E P A R T I E S

3. MKS is a corporation organized and existing under the laws of the UnitedStates of America, with its principal place of business at 90 Industrial Way, Wilmington,Massachusetts 01887-4610.

4. Ms. Rea is the Acting Under Secretary ofCommerce for Intellectual Propertyand Acting Director of the United States Patent and Trademark Office ("PTO"), acting in hisofficial capacity. The Acting Director is the head of the PTO and is responsible forsuperintending or performing all duties required by law with respect to the granting andissuing of patents. As such, Ms. Rea, in her capacity as Acting Director, is designated by statuteas the official responsible for determining the period of Patent Term Adjustments under 35U.S.C. 154(b)(3)(B).

J U R I S D I C T I O N A N D VENUE

5. This Court has jurisdiction to hear this action and is authorized to issue therelief sought pursuant to 28 U.S.C. 1331, 1338(a), 1361, 2201, & 2202; 35 U.S.C. 154(b); and 5 U.S.C. 701-706.

6. Venue is proper in this district by virtue of the Leahy-SmithAmerica InventsAct, Pub. L. No. 112-29, 9, 125 Stat. 316 (2011) .

7. This Complaint is being timely filed in accordance with 35 U.S.C. 154(b)(4)(A).

A L L E G A T I O N S

T h e ' 2 3 7 P a t e n t

8. MKS is the assignee of all right, title, and interest in the '237 patent, asevidenced by records on deposit with the PTO and the face of the '237 patent. As such, MKS


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is the real party in interest in this case.9. David J. Coumou is the inventor of patent application number 12/031,171

("the '171 application") which was filed (i.e., met all 371(c) requirements) on February 14,2008 (the "Filing Date").

10. On June 16, 2010, the PTO mailed a Non-Final Rejection as to the '171application (the "First Office Action"). MKS responded to the First Office Action onSeptember 16,2010.

11. On November 18, 2010, the PTO mailed a Final Rejection as to the '171application (the "Second Office Action"). MKS responded to the Second Office Action onMarch 18,2011.

12. On April 1, 2011, the PTO mailed an Advisory Action Before the Filing ofan Appeal Brief as to the '171 application (the "Advisory Action").

13. MKS filed a Request for Continued Examination ("RCE") on April 18,2011.

14. On December 9, 2011, the PTO mailed a Non-Final Rejection as to the '171application (the "Third Office Action"). MKS responded to the Third Office Action on March9,2012.

15. On June 7, 2012, the PTO mailed a Notice of Allowance and Fees Due for the'171 application (the "Notice of Allowance"). Included in the Notice of Allowance was aDetermination of Patent Term Adjustment wherein the PTO indicated that the Patent TermAdjustment to date for the '171 application was 482 days.

16. On August 14, 2012, MKS paid the issue fee for the '171 application, therebysatisfying all outstanding requirements for issuance of a patent.


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17. On August 22, 2012, the PTO mailed an Issue Notification for the '171application. Included in the Issue Notification was aDetermination ofPatentTerm Adjustment inwhich the PTO indicated that the PatentTerm Adjustment for the '171 application was 544 days.The PTO calculated 541 days of "A Delays," 62 days of"B Delays," and 59 days of "ApplicantDelays."

18. On September 11, 2012, the '171 application issued as the '237 patent,reflecting aPatent Term Adjustment of544 days. A true and correct copy ofthe '237 patent isattached hereto as Exhibit A.

Patent Term G u a r a n t e e

19. The Patent Term Guarantee Act of 1999, a part of the American InventorsProtection Act ("AIPA"), amended 35 U.S.C. 154(b) to address concerns that delays by thePTO during the prosecution ofpatent applications could result in a shorteningofthe effective lifeof theresulting patents to less thanseventeen years.

20. Amended 35 U.S.C. 154(b) broadened the universe ofcognizable administrativedelays by the PTO that could retroactively yield an extensionofthe patent term to compensate forsuch prosecution delays ("Patent Term Adjustment" or"PTA").

21. Patent Term Adjustment applies to original utility patent applications (includingcontinuations, divisional, and continuations-in-part) filed on orafterMay 29, 2000.

22. In calculating PTA, Defendant must take into account PTO delays under 35 U.S.C. 154(b)(1), any overlapping periods in the PTO delays under 35 U.S.C. 154(b)(2)(A), and anyapplicant delays under35 U.S.C. 154(b)(2)(C).

23. Under 35 U.S.C. 154(b)(1)(B), an applicant is entitled to additional PTAattributable to the PTO's "failure . .. to issue a patent within 3years after the actual Filing Date of


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the application in the United States," but not including "any time consumed by ContinuedExamination ofthe application requested by the applicant under section 132(b)" ("B Delay").

24. On November 1, 2012, the U.S. District Court for the Eastern District ofVirginia held that Patent Term Adjustment awards arising from the failure ofthe PTO to grant apatent within three (3) years ofthe filing date (known as "B delays") are not necessarily reducedby the filing of a Request for Continued Examination if the RCE is filed more than three (3)years after the patent filing date. Exelixis. Inc.. v. Kappos. No. l:12-cv-00096, 2012 U.S. Dist.LEXIS 157762 (E.D. Va. Nov. 1, 2012). Therefore, the "B delay" should becalculated from thedate threeyearsafter filingto the date the patent is issued, whetheror not RCEswerefiled. Id.

25. Under 35U.S.C. 154(b)(4)(A), "an applicant dissatisfied with a determinationmade by the Director under paragraph (3) shall have remedy bya civil action against the Directorfiled in the United States District Court for the Eastern District ofVirginia within 180 days afterthegrantof thepatent. Chapter 7 of title5 shall apply to such action."

Defendant's Abrogation of th e Patent Term Guarantee26. Defendant has improperly calculated PTA in amanner that deprives patentees of

BDelay due to an incorrect interpretation of the effect of the Continued Examination procedureunder 35U.S.C. 132(b) within thecontext of 35 U.S.C. 154(b)(1)(B).

27. Defendant has inappropriately promulgated and relied upon 37 C.F.R. 1.703(b)(1) to support its flawed interpretation of 35 U.S.C. 154(b)(1)(B) that B Delaypermanently ceases to accrue upon the filing ofanRCE byanapplicant.

28. Instead, 35 U.S.C. 154(b)(l)(B)(i) merely requires the exclusion of"any timeconsumed by Continued Examination of the application requested by the applicant under 35U.S.C. 132(b)" when calculating whether the PTO has satisfied the three-year pendency


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guarantee.

29. When properly construed, if the PTO fails to meet this three-year pendencyguarantee, the applicant is entitled to the full remedy afforded by 35 U.S.C. 154(b)(1)(B): "theterm ofthe patent shall beextended 1day for each day after the end ofthat 3-year period until thepatent is issued," subject only to the specific limitations set forth in 35 U.S.C. 154(b)(2).

30. None of the limitations included within 35 U.S.C. 154(b)(2) reduce orotherwise affect the PTA remedy in 35 U.S.C. 154(b)(1)(B) on the basis of time consumed byexaminationafter filingofan RCE.

31. The PTO also promulgated regulations pursuant to 35 U.S.C. 154(b)(2)(C)specifying applicant actions that will result in a reduction ofthe additional patent term availableunder 35 U.S.C. 154(b)(1)(B). These regulations, set forth at 37 C.P.R. 1.704, likewise donot include any reduction or limitation based upon time consumed by examination after the filingo f an RCE.

32. Accordingly, the plain language of35 U.S.C. 154(b)(l )(B) dictates that ifanRCE is not filed within three (3) years after the actual Filing Date ofapatent application, the filingofthe RCE has no effect upon the accrual ofBDelay for that patent. Under such circumstances,the applicant is entitled to BDelay from the day after the three-year pendency period through thedate of issuance of the patent, the explicit remedy set forth in 35 U.S.C. 154(b)(1)(B), subjectonly to the specific limitations set forth at 35 U.S.C. 154(b)(2). See Exelixis. Inc.. v. Kappos.No. l:12-cv-00096,2012 U.S. Dist. LEXIS 157762 (E.D. Va. Nov. 1,2012).

The Proper Calculation ofPTA for th e (581 Patent33. Under 35 U.S.C. 154(b)(1)(B), MKS isentitled to an additional adjustment of

the term ofthe '237 patent for a period of400 days. This BDelay period consists ofthe period


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from February 14, 2011 (three (3) years after the Filing Date) through September 11, 2012 (theissue date of the '237 patent) (575 days ofBDelay).

34. Under 35 U.S.C. 154(b)(1)(A), 541 days ofADelay was calculated for the'237 patent.

35. There are 113 days overlapping between ADelay and BDelay for the '237patent pursuantto 35U.S.C. 154(b)(2)(A).

36. Under 35 U.S.C. 154(b)(2)(C)(i), 59 days ofdelay is attributable to MKS.37. The correct PTA for the '237 patent is 944 days: the sum of the 541 days ofA

Delay and the 575 days ofBDelay, minus 113 overlapping days and 59 days ofApplicant Delay.C L A I M FOR R E L I E F

C O U N T I

(Patent Term Adjustment Under 35U.S.C. 154)38. The allegations of paragraphs 1-37 are incorporated in this claim for relief as if

fully set forth herein.39. The PTO's calculation ofBDelay for the '237 patent was based upon a flawed

interpretation of 35 U.S.C. 154(b)(1)(B) that wrongly excluded all otherwise compensable PTOdelay that accrued after MKS filed the RCE.

40. MKS filed one (1) RCE during prosecution of the '171 application, which wasfiled more than three (3) years after the actual FilingDate ofthat application.

41. MKS' filing of the RCE during prosecution of the '171 application has no effectupontheaccrual of BDelayfor the '237 patent.

42. Continued examination of the '171 application by the PTO concluded on thedate the PTO mailed to MKS the Notice ofAllowance.


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43. The '237 patent accrued B Delay for the period from February 14, 2011 (three(3) years after the Filing Date) through September 11, 2012 (the issue date of the '237 patent),for a total of 575 days ofB Delay.

44. The PTO's erroneous interpretation of 35 U.S.C. 154(b)(l )(B) resulted inanincorrect calculation of BDelay for the '237 patent that deprived MKS of the appropriate PTAfor this patent.

45. MKS is entitled to additional patent termfor the '237 patent suchthat the 544days of PTA granted bythePTO should bechanged to 944 days.WHEREFORE, MKS respectfully prays that this Court:

A. Issue an Order changing the period of PTA for the '237 patent from 544 daysto 944 days, and requiring Defendant to alter the term of the '237 patent to reflect suchadditional PTA; and

B. Grant such other and further relief as the nature of the case may admit orrequire and as may bejust and equitable.Respectfully submitted,

HARNESS,DICKEY& PIERCE, P.L.C.

Dated: March 11,2013

17549568.1

Virginia Bar No. 66234Attorney for MKS Instruments, Inc.11730 Plaza America Drive, Suite 600Reston, Virginia 20190Telephone: 703-668-8000Facsimile: 703-668-8200Email: [email protected]

MKS Instruments v. Rea

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