03/21/15

President & Fellows of Harvard v. Lee: Evidence of Terminal Disclaimer Payment


Category: Administrative Law  
 
 
 
By: Christian Hannon, Contributor
 
TitlePresident & Fellows of Harvard v. Lee, No. 2013-1628 (Fed. Cir. Oct. 29, 2014) (Non-Precedential).
Issue[Is there] evidence that [Harvard] had [not actually] paid the requisite terminal disclaimer fee [for U.S. Patent No. 5,087,571 (the '571 patent)] and that, as a result, the terminal disclaimer was not legally entered into the prosecution history for the ’571 patent and was therefore invalid.
President & Fellows of Harvard, at *4.
HoldingWe conclude that the evidence as a whole provides a rational basis for the PTO’s conclusion that the terminal disclaimer fee was paid. As such, we find that the district court properly concluded that the PTO’s decision was not arbitrary or capricious.
Id. at *9.
 
 
 
Procedural HistoryThe President and Fellows of Harvard College and E.I. du Pont de Nemours and Company (collectively, Harvard) appeal from the district court’s grant of summary judgment affirming the United States Patent and Trademark Office’s (PTO) finding that U.S. Patent No. 5,925,803 had expired as a result of a terminal disclaimer and refusal to enter new claims during the reexamination of the patent on that basis.
President & Fellows of Harvard, at *2.
 
 
Legal Reasoning (Lourie, MOORE, O'Malley)
Analysis
The First Two Harvard Mouse PatentsThis appeal relates to the family of patents directed to the "Harvard mouse" inventions. [...] [U.S. Patent No. 4,736,866 (the '866 patent)] was the first Harvard Mouse patent. The second Harvard Mouse patent, the '571 patent, was filed as a divisional of the '866 patent. During prosecution of the '571 patent, the PTO rejected certain claims for obviousness-type double patenting in view of the claims of the '866 patent. Harvard responded to the double patenting rejection by filing a terminal disclaimer. [...] Harvard's terminal disclaimer disclaimed any portion of the term "of any patent granted on the above-identified application or on any application which is entitled to the filing date of this application under 35 U.S.C. § 120. It stated that the applicant intended that it run with any patent so granted and that it bind any of its successors or assignees. The terminal disclaimer also stated that accompanying this disclaimer is the fee set forth in 37 C.F.R. § 1.20(d). In its submission to the PTO, which included the terminal disclaimer, Harvard authorized the PTO to charge any fees to its attorney's deposit account. Upon receipt of the terminal disclaimer, the PTO [...] withdrew its obviousness-type double patenting rejection in view of Applicant's arguments.
President & Fellows of Harvard, at *2-3. (internal citations and quotations omitted).
The Third Harvard Mouse Patent: The Patent At IssueThe '803 patent at issue in this case is the third Harvard Mouse patent and was filed as a continuation of the '571 patent. During an ex parte reexamination of the '803 patent, the examiner rejected the claims on double patenting grounds and found that the '803 patent had expired based on the terminal disclaimer filed during prosecution of the '571 patent. In response to the PTO's rejection, Harvard filed an amendment adding several new claims, arguing that the '803 patent had not expired based on the terminal disclaimer and that the double patenting rejection was improper. In the next office action, the examiner withdrew the claim rejections and issued a notice of intent to issue a reexamination certificate for the original claims of the '803 patent. However, the examiner refused to allow Harvard to add new claims reasoning that the '803 patent had expired based on the terminal disclaimer entered during prosecution of the '571 patent and that new claims cannot be entered into an expired patent. [Harvard then sought appeal with the PTO director and separately via the Administrative Procedure Act, each time the authority sided with the PTO]
Id. at *3-4.
Three Factors Suggesting Terminal Disclaimer Fee Was Actually PaidWe find that the record contains a rational basis to support the PTO’s factual finding that Harvard paid the terminal disclaimer fee. First, Harvard expressly stated, in the terminal disclaimer itself, that “accompanying this disclaimer is the fee set forth in 37 C.F.R. § 1.20(d).” [...] Next, the agency’s factual finding that the terminal disclaimer fee was submitted is supported by the examination history. [...] Finally, the PTO recorded the terminal disclaimer without making any mention of a missing filing fee, which it likely would have had the fee been absent. Collectively, this evidence provides a rational basis for the PTO’s factual finding that the terminal disclaimer fee was filed.
Id. at *7-8.
Conclusion
We conclude that the evidence as a whole provides a rational basis for the PTO’s conclusion that the terminal disclaimer fee was paid. As such, we find that the district court properly concluded that the PTO’s decision was not arbitrary or capricious. We affirm.
President & Fellows of Harvard, at 9.
 
 
© 2000-2019, Journal of the Patent & Trademark Office Society
Disclaimer & Privacy Policy