GLYCOBIOSCIENCES, INC. v. INNOCUTIS HOLDINGS, LLC et al

Filing 64

ORDER denying Defendants' Motion for Judgment on the Pleadings 55 . Signed by Judge Randolph D. Moss on June 10, 2015. (lcrdm1, )

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA

GLYCOBIOSCIENCES, INC.,
Plaintiff,
v.
INNOCUTIS HOLDINGS, LLC, et al.,

Defendants.

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Civil Action No. 12-1901 (RDM)

MEMORANDUM OPINION AND ORDER
On November 25, 2012, Plaintiff Glycobiosciences, Inc. brought this patent infringement
suit against Defendants Innocutis Holdings, LLC, and DARA BioSciences, Inc. (“Defendants”).
See Dkt. 1. Plaintiff’s amended complaint (Dkt. 23) alleges that Defendants indirectly or
contributorily infringed U.S. Patent No. 6,387,407 (“the ’407 patent”) by importing, selling, or
offering to sell Defendants’ BIONECT product. See Dkt. 23 at ¶¶ 18, 25, 32, 38; see also 35
U.S.C. §§ 271(b), (c). The ’407 patent expired in 2006 because the relevant maintenance fees
were not timely paid to the Patent and Trademark Office (“PTO”), as required by statute. In
April 2013, Plaintiff petitioned the PTO to reinstate the patent under the then-applicable
“unavoidable delay” standard for late payment of maintenance fees, and the PTO denied relief.
Subsequently, Plaintiff filed a second petition to reinstate the patent, this time under the recently
enacted Patent Law Treaties Implementation Act of 2012, P.L. 112-211, 126 Stat. 1527-1537
(“PLTIA” or “Act”), which replaced the “unavoidable delay” standard with the less demanding

“unintentional delay” standard. This time the PTO granted the petition and reinstated the patent.
Plaintiff then amended its complaint to allege infringement of the ’407 patent.
Pending before the Court is Defendants’ motion for judgment on the pleadings under
Rule 12(c) of the Federal Rules of Civil Procedure (Dkt. 55). Defendants’ motion presents a
single issue: whether the effective date provision of the PLTIA—which provides that the Act
will have “no effect with respect to any patent that is the subject of litigation in an action
commenced before” December 18, 2013—forecloses Plaintiff’s reliance on the reinstated ’407
patent. For the reasons given below, the Court concludes that it does not and, accordingly,
DENIES Defendants’ motion.

I. BACKGROUND
A.

Statutory Background
Under the Patent Act, the PTO is required to charge periodic maintenance fees “for

maintaining in force all patents based on applications filed on or after December 12, 1980.” 35
U.S.C. § 41(b)(1). These maintenance fees are due 3.5 years, 7.5 years, and 11.5 years after the
grant of a patent. See id. § 41(b)(1)(A)-(C). “Unless payment of the applicable maintenance fee
. . . is received [by the PTO] on or before the date the fee is due or within a grace period of 6
months thereafter, the patent shall expire as of the end of such grace period.” 35 U.S.C.
§ 41(b)(2).
At the end of the grace period, however, the patent is “only mostly dead.” See THE
PRINCESS BRIDE (Act III Communications 1987). Congress has authorized the PTO Director to
accept delayed fees and to revive an expired patent under certain circumstances. The patentee
must file a petition with the PTO and pay any delayed maintenance fees and applicable petition
fees. See 35 U.S.C. § 41(a)(7) (“[t]he Director shall charge . . . fees” on the filing of a “petition
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. . . for the delayed payment of the fee for maintaining a patent in force”); 37 C.F.R. § 1.378
(setting forth the requirements for a “petition to accept an unintentionally delayed payment of a
maintenance fee”). Once reinstated, “the patent shall be considered as not having expired at the
end of the grace period.” 35 U.S.C. § 41(c)(1). However, to “protect the rights of those who, in
reliance on the lapse, first began using the claimed invention or who first took steps to begin
using it during the lapse period,” Fonar Corp. v. GE Co., 107 F.3d 1543, 1554 (Fed. Cir. 1997),
Congress has provided that no reinstated patent “shall [ ] abridge or affect the right of any person
. . . who made, purchased, offered to sell, or used anything protected by the patent within the
United States, or imported anything protected by the patent into the United States after the 6month grace period but prior to the acceptance of a maintenance fee under this subsection.” 35
U.S.C. § 41(c)(2); see also Fonar Corp., 107 F.3d at 1554 (quoting the legislative history).
Prior to December 18, 2013, the PTO Director had discretion to accept delayed
maintenance fees for up to two years after the 6-month grace period ended, upon a showing that
the delay in paying the fees had been “unintentional.” See 35 U.S.C. § 41(c)(1) (2012); 37
C.F.R. § 1.378 (effective through Dec. 17, 2013); see also Manual of Patent Examining
Procedure § 2590 (2012). After this two-year window, the PTO Director could accept delayed
fees only if the patentee satisfied a more stringent standard and demonstrated that the delay was
“unavoidable.” See 35 U.S.C. § 41(c)(1) (2012); Burandt v. Dudas, 528 F.3d 1329, 1333 (Fed.
Cir. 2008).
Congress changed this regime when it enacted the Patent Law Treaties Implementation
Act of 2012, P.L. 112-211, 126 Stat. 1527-1537. The PLTIA implements the Patent Law Treaty,
which was ratified by the Senate on December 7, 2007, and harmonizes domestic patent
procedures with certain treaty requirements. See S. Exec. Rep. 110-6, at 1 (2007). Title II of the

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PLTIA amends various statutory provisions relating to the filing and processing of patent
applications and payment of fees. As summarized in the final rule implementing these
amendments, “[t]he changes in title II . . . are divided into three groups: (1) The changes
pertaining to a patent application filing date; (2) the changes pertaining to the revival of
abandoned applications and acceptance of delayed maintenance fee payments; and (3) the
changes pertaining to the restoration of the right of priority to a foreign application or the benefit
of a provisional application.” Changes to Implement the Patent Law Treaty, 78 Fed. Reg. 62368,
62369 (Oct. 21, 2013).
The PLTIA makes it easier for patentees to reinstate expired patents by giving the PTO
Director the discretion to accept “any” delayed maintenance fees upon a showing that the delay
was “unintentional.” See P.L. 112-211 § 202(b)(1)(B) (amending 35 U.S.C. § 41(c)(1) to
provide that “[t]he Director may accept the payment of any maintenance fee required by
subsection (b) after the 6-month grace period if the delay is shown to the satisfaction of the
Director to have been unintentional”); see also 37 C.F.R. § 1.378 (effective Dec. 18, 2013). By
replacing the “unavoidable” language in former section 41(c)(1), the PLTIA permits
reinstatement of a patent that has been expired for even more than two years upon a showing of
“unintentional delay.” Other provisions of the Act similarly authorized the Director to apply the
“unintentional” standard to the revival of abandoned patent applications. See P.L. 112-211
§ 201(b) (authorizing the Director to “establish procedures . . . to revive an unintentionally
abandoned application for patent”); see also 78 Fed. Reg. 62371.
The effective date of the PLTIA is December 18, 2013, one year after it was enacted. See
P.L. 112-211 § 203(a)(1). Section 203(b), however, sets forth two “exceptions” to this effective
date provision. The first exception is not relevant here. The second states:

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(2) Patents in Litigation.—The amendments made by this title [i.e., title II]
shall have no effect with respect to any patent that is the subject of litigation
in an action commenced before the effective date set forth in subsection
(a)(1) [i.e., December 18, 2013].
P.L. 112-211 § 203(b)(2), reprinted at 35 U.S.C. § 27 note (2012) (emphasis added) (hereinafter
“litigation exception”).

B.

Factual and Procedural Background
Plaintiff commenced this litigation on November 25, 2012. See Dkt. 1. Although the

original complaint alleged infringement of two other patents, see Dkt. 1 ¶¶ 10-17, 22, 29, 29, 46,
on August 25, 2014, Plaintiff filed an amended complaint that dropped the original infringement
claims and replaced them with claims based on the ’407 patent. The amended complaint alleges
that “[w]ithin the six years immediately preceding the filing of this complaint, [Defendants have]
indirectly [or contributorily] infringed [the ’407 patent]” by importing, selling, or offering to sell
Defendants’ BIONECT gel product. See Dkt. 23 ¶¶ 18, 25, 32, 38; see also 35 U.S.C. §§ 271(b),
(c).
As noted above, the ’407 patent, which issued on May 14, 2002, see Dkt. 23-1, expired in
2006 for failure to timely pay maintenance fees, see PTO Notice of Patent Expiration (June 14,
2006). 1 Plaintiff subsequently acquired the ’407 patent. In 2013, after commencing this suit, but
before asserting the ’407 patent in the pending litigation, Plaintiff petitioned the PTO to reinstate
the patent on the grounds that the failure to pay maintenance fees was “unavoidable,” as thenrequired for patents that had expired more than two years earlier. The PTO denied the petition,
concluding that Plaintiffs had failed to show the delay was “unavoidable.” See PTO Decision on

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The file history of the ’407 patent, including the cited administrative documents, may be
viewed at http://portal.uspto.gov/pair/PublicPair.
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Petition, at 5 (Feb. 10, 2014). Shortly thereafter, Plaintiff filed a new petition seeking
reinstatement under the PLTIA’s “unintentional” standard. On June 20, 2014, the PTO granted
that petition and reinstated the ’407 patent. See PTO Decision on Petition, at 1 (June 20, 2014)
(“The first, second and third maintenance fees are hereby accepted as having been
unintentionally delayed and the above identified patent is reinstated as of the mail date of this
decision.”). Plaintiff then filed the amended complaint alleging infringement of the ’407 patent.
See Dkt. 23.

II. DISCUSSION
Defendants’ motion presents a single issue of law: whether the effective date provision
of the PLTIA precludes Plaintiff from invoking the reinstated ’407 patent in this litigation. See
Dkt. 55. Defendants rely on the second “exception” to the PLTIA’s effective date provision,
section 203(b)(2), which states that “[t]he amendments made by [title II of the PLTIA] shall have
no effect with respect to any patent that is the subject of litigation in an action commenced
before the effective date” of the statute, i.e., December 18, 2013. P.L. 112-211 § 203(b)(2),
reprinted at 35 U.S.C. § 27 note. It is undisputed that this litigation is “an action commenced
before the effective date” of the PLTIA. Defendants argue that because the ’407 patent is
presently “the subject of litigation” in such an action, section 203(b)(2) mandates that the PLTIA
amendments—including the relaxed standard for the Director to accept delayed maintenance
fees—“have no effect with respect to” the ’407 patent. Thus, Defendants argue, the lower
“unintentional” standard does not apply to the reinstatement of the ’407 patent, at least for
purposes of this litigation.
Plaintiff argues, for its part, that the plain language of section 203(b)(2) applies only to a
patent that is “already the subject of litigation pending on the effective date,” in which case “that
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patent is not entitled to the benefit of the PLTIA at least during the pendency of that litigation.”
Dkt. 59 at 9 (emphases in original). As support, Plaintiff points to the PLTIA’s remedial purpose
and the “structure of the statutory scheme.” See Dkt. 59 at 9-11. Under Plaintiff’s reading,
although the ’407 patent is presently “the subject of litigation” commenced before the PLTIA,
section 203(b)(2) is inapplicable.
The parties ask the Court to resolve this dispute based solely on the text of the statute.
See Dkt. 55 at 4; Dkt. 59 at 9-10. Neither party identifies any pertinent legislative history, any
case law analyzing section 203(b)(2) or any analogous statutory language, or any administrative
interpretations of the provision. Section 203(b)(2) states that the amendments in title II of the
PLTIA “shall have no effect with respect to any patent that is the subject of litigation in an action
commenced before the effective date.” (Emphasis added). The question the Court must resolve
is when this inquiry should be conducted. Does the exception apply if the patent “is the subject
of [pre-PLTIA] litigation” on the PLTIA’s effective date; if the patent “is the subject of [prePLTIA] litigation” when the PTO applies the amended statutory provisions to the patent; or if the
patent “is the subject of [pre-PLTIA] litigation” at any point in time? Under Defendants’
reading, section 203(b)(2) applies to any patent that is asserted in pre-PLTIA litigation at any
point in time, including after the patent is reinstated pursuant to the PLTIA. Plaintiff, in contrast,
asks the Court to construe section 203(b)(2) to apply only if the patent is the subject of litigation
on the PLTIA’s effective date. As explained below, the Court concludes that neither party is
correct and that section 203(b)(2) is best read to apply where the patent subject to possible
reinstatement is, at the time the PTO acts on a petition to reinstate the patent, the subject of

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pending litigation commenced before December 18, 2013. 2 Because the ’407 patent was not
asserted in this suit until after it was reinstated by the PTO, the exception in section 203(b)(2) is
inapplicable.
Although the language of the effective date provision does not clearly define the scope of
the pre-PLTIA litigation exception, the substantive provisions of the PLTIA provide substantial
guidance. Most importantly, rather than purporting directly to effect any change in the
enforceability, validity or status of any patents, title II of the Act addresses the authority of the
PTO Director and the consequences of her actions. It thus authorizes the Director to “accept the
payment of any maintenance fee required [by statute] after the 6-month grace period if the delay
is shown to the satisfaction of the Director to have been unintentional,” see P.L. 112-211
§ 202(b)(1)(B), codified at 35 U.S.C. § 41(c)(1), it provides that “[t]he Director may require the
payment of [a petition fee] as a condition of accepting [late] payment of any maintenance fee,”
id., and it stipulates that, “[i]f the Director accepts payment of a [late] maintenance fee . . . the
patent shall be considered as not having expired,” id. In this context, where the PLTIA is
conferring new authority on the Director, the litigation exception to the effective date provision
is most reasonably construed to define when the Director may exercise that new authority.
To be sure, the action of the Director in accepting a late maintenance fee is not merely an
administrative matter, but may potentially affect the rights and interests of third parties, like
Defendants here. Most notably, the PLTIA re-enacted language in section 41(c)(1), providing
that, once reinstated, an expired patent “shall be considered as not having expired at the end of
the grace period.” 35 U.S.C. § 41(c)(1). But, many—if not most—PTO actions (e.g., issuance

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Because the question is not presented, the Court does not decide which version of the law
would apply where a patent became the subject of pre-PLTIA litigation between the filing of the
petition and the Director’s decision.
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of a patent, cancellation, reinstatement) can alter a patent’s status and affect third parties’ rights.
The pertinent point for present purposes is that the relevant provisions of the PLTIA define the
Director’s authority, even though the exercise of that authority may affect the interests of others.
Here, moreover, there is no dispute that the PLTIA was “effective” at the time the
Director accepted Plaintiff’s late-payment of the ’407 patent’s maintenance fees. Putting aside
for a moment the pre-PLTIA litigation exception, the Act took effect on December 18, 2013.
Plaintiff filed its second petition to reinstate the patent on February 27, 2014, and the PTO
granted the petition on June 20, 2014—well after the PLTIA had taken effect. Moreover, at the
time the PTO granted the petition, the ’407 patent was not “the subject of litigation;” the
complaint was not amended until after the patent was reinstated. Accordingly, under any tenable
construction of the effective date provision and the litigation exception, the Director was
authorized to apply the “unintentional delay” standard at the time she granted the petition and
reinstated the ’407 patent.
As a result, for Defendants’ theory to hold, the Court would need to conclude that either
(1) the filing of the amended complaint acted to undo the Director’s decision reinstating the ’407
patent or (2) although properly reinstated, the ’407 patent may not be asserted in any litigation
commenced before December 18, 2013, the effective date of the PLTIA. Neither theory is
viable, for a number of common and separate reasons.
First, both theories ignore the fact that the PLTIA speaks most directly to the authority of
the PTO Director. Once that authority is exercised, the patent is reinstated. The filing of a
subsequent claim, even in a long-pending lawsuit, cannot deprive the PTO Director of any
authority that was previously—and properly—exercised. Had Congress intended such an
unlikely result, it would almost certainly have spoken more directly and clearly to the issue.

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Second, both versions of Defendants’ theory ignore the fact that the PLTIA merely lessened the
relevant standard for reinstating a patent that had expired for failure to pay the maintenance fee.
Although in this case the PTO had previously concluded that the ’407 patent was not subject to
reinstatement under the more demanding “unavoidable delay” standard, in other cases the
patentee would be entitled, at a minimum, to show that it could satisfy that standard instead of
the “unintentional delay” standard. Defendants’ theory, however, leaves no room for this option.
These problems are highlighted by two Federal Circuit decisions. In the first, Aristocrat
Technologies Australia Pty Ltd. v. International Game Technology, 543 F.3d 657 (Fed. Cir.
2008), the Court of Appeals for the Federal Circuit held that the allegedly improper revival of a
patent application under the “unintentional delay” standard was not a cognizable defense in an
infringement action, see id. at 662-63. And, in the second, Exela Pharma Sciences LLC v. Lee,
781 F.3d 1349 (Fed. Cir. 2015) (per curiam), it held that the PTO’s decision to revive an
application under the “unintentional” standard is “not subject to third party challenge under the
APA,” id. at 1353. Moreover, in the context of expired and reinstated patents, three district
courts have held that “[t]he Patent Act does not give rise to an implied affirmative defense of
erroneous reinstatement.” Allied Tube & Conduit Corp. v. John Maneely Co., 125 F. Supp. 2d
987, 1001-02 (D. Ariz. 2000); Laerdal Med. Corp. v. Ambu, Inc., 877 F. Supp. 255, 259-60 (D.
Md. 1995); Cal. Med. Prods., Inc., v. Tecnol Med. Prods., Inc., 921 F. Supp. 1219, 1256-57 (D.
Del. 1995). Neither party has addressed any of these cases—or, for that matter, any relevant
patent law precedent. However, the relief Defendants seek would effectively require an
affirmative defense to be available, i.e., it would require the litigation exception to impose a
condition on reinstatement that could be asserted in litigation, after the PTO has already
reinstated a patent. Had Congress intended to create an affirmative defense, it could have done

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so expressly, as it has in other parts of the Patent Act. See, e.g., 35 U.S.C. § 282(b) (setting forth
a list of matters that “shall be defenses in any action involving the validity or infringement of a
patent,” including “[a]ny other fact or act made a defense by” the Patent Act); id. § 282(c)
(setting forth matters that “shall be a defense” to infringement “during the period of [a patent
term] extension”). The fact that the PLTIA was enacted against a backdrop in which courts had
declined to find even an implied affirmative defense based on improper reinstatement suggests
that Congress did not intend the litigation exception to apply in circumstances in which it could
be asserted only as an affirmative defense.
In addition to these problems, each of the two theories described above also suffers from
further, separate flaws. Most notably, the first theory—that an amendment to a pre-PLTIA
complaint to assert a reinstated patent undoes the PTO’s reinstatement of the patent—invites
bizarre results and confusion. Under this theory, the PLTIA would disconcertingly take effect on
its effective date with respect to a given patent, then later cease to take effect if that patent is
asserted in pre-PLTIA litigation, only to take effect again if the pre-PLTIA litigation is dropped
so that the patent “is [no longer] the subject of [pre-PLTIA] litigation.” To make matters worse,
this theory would seem to permit an adverse party to amend a pre-PLTIA declaratory judgment
complaint or counterclaim to assert that the reinstated patent is either not infringed or invalid,
thus rendering the patent “the subject of [pre-PLTIA] litigation,” and thereby depriving the
patentee of the benefit of the reinstatement. It is difficult to imagine that in implementing a
treaty designed to promote the “simplification of formal procedures” and to “reduce costs for
patent . . . owners . . . seeking to . . . preserve their rights in inventions on a worldwide basis,” S.
Exec. Rep. 110-6, at 1 (2007), Congress would have intended to adopt such a convoluted set of
rules.

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Although the second version of Defendants’ theory—that the revived patent is merely
ineffective in the particular litigation “commenced before the effective date” of the PLTIA—
mitigates these anomalies, it suffers from other difficulties. Most significantly, the text of the
litigation exception says that the PLTIA will “have no effect with respect to any patent” that falls
within the exception. See P.L. 112-211 § 203(b)(2) (emphasis added). That is, it is the “patent”
that is either reinstated or not. The language, accordingly, does not invite an interpretation under
which the patent is reinstated for other purposes, but cannot be asserted in a particular litigation.
Rather, the PLTIA is either effective with respect to the relevant patent, or it is not. Indeed, the
very next paragraph of the statute demonstrates that Congress knows how to limit the
applicability of a reinstated patent in particular circumstances. Thus, 35 U.S.C. § 41(c)(2)
provides that a reinstated patent “shall not abridge or affect the right of any person . . . who
made, purchased, offered to sell, or used anything protected by the patent within the United
States . . . after the 6-month grace period but prior to the acceptance of a maintenance fee under
this subjection . . . .” Had Congress intended to authorize the PTO Director to reinstate a patent,
while precluding the patentee from asserting the reinstated patent in any pre-PLTIA litigation, it
could have adopted language similar to section 41(c)(2). The fact that Congress did not enact
such language is difficult to square with the contention that the pre-PLTIA litigation exception
narrowly precludes the assertion of a reinstated patent in a case that was pending before the Act’s
effective date.
Plaintiffs’ interpretation, which simply asks whether section 203(b)(2) applied on the
PLTIA’s effective date, fares better than Defendants’ interpretation, but it also fails to explain
the statutory text. The statute creates two separate requirements with temporal dimensions—
first, that at some point the patent “is the subject of litigation,” and second, that such litigation

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was “commenced before the effective date.” P.L. 112-211 § 203(b)(2) (emphasis added). If, as
Plaintiffs urge, the exception applied only to patents that were “the subject of litigation” on the
effective date, these separate temporal requirements would become redundant: every patent that
was the subject of litigation when the amendments took effect would necessarily have been the
subject of litigation “commenced before the effective date.” In contrast, Congress’s limitation of
the litigation exception to patents asserted in litigation “commenced before the effective date”
can be given meaning by adopting the middle course set forth above: the reinstatement
provisions amended by the PLTIA are applicable to decisions made by the PTO Director after
December 18, 2013, unless at the time the PTO Director makes her determination the patent “is
the subject of litigation” in an action that was commenced before December 18, 2013.
Plaintiff’s interpretation also suffers from one of the flaws in Defendants’ position: both
parties’ interpretations fail to recognize that the PLTIA is principally directed at the authority of
the PTO Director. That aspect of the statute strongly supports the conclusion that the effective
date inquiry should, similarly, focus on the timeframe when the Director acts. Plaintiff,
however, would apply the law before the Director acts, while Defendants would apply the law
after the Director has already acted. The Court, in contrast, concludes that the proper focus is on
whether the Director has authority to act at the time she either grants or denies the petition to
reinstate the patent.
That conclusion, however, requires that the Court address one final question, premised on
the general presumption “that statutes do not contain surplusage.” Arlington Central School
Dist. Bd. of Ed. v. Murphy, 548 U.S. 291, 299 n.1 (2006). That question is whether, as construed
by the Court, the litigation exception to the effective date provision would have any meaningful
application. Although not foreclosed as a matter of logic, it seems unlikely that the litigation

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exception, as construed by the Court, would have any meaningful application to the
reinstatement of patents that have expired for failure to make timely maintenance payments.
First, it is improbable that Congress was concerned with pending litigation in which the parties
had asserted claims for infringement of expired patents. And, even if an asserted patent might
have accidentally been allowed to expire during litigation for failure to timely pay a maintenance
fee, the PLTIA is still unlikely to have made a difference, as the omission would need to have
gone unnoticed for two years beyond the six-month grace period before the pre-PLTIA
“unavoidable delay” standard would have been triggered. Second, although it is possible that the
litigation exception might apply to a pre-PLTIA administrative suit brought against the PTO by a
patentee dissatisfied with the Director’s denial of reinstatement, that possibility also seems to
make little sense of Congress’s concern about the effect of the PLTIA on pending litigation,
because a dissatisfied patentee could simply file a new petition with the PTO after December 18,
2013, in order to take advantage of the less demanding “unintentional delay” standard.
Even assuming the litigation exception has little meaningful application to reinstated
patents, however, the Court still concludes that it is not surplusage because other provisions in
the Act might have affected patents in pending litigation. In particular, the pre-PLTIA
“unavoidable delay” standard also applied where the patentee sought to revive an abandoned
patent application. See Ray v. Lehman, 55 F.3d 606, 609 (Fed. Cir. 1995); see also 35 U.S.C.
§ 133 (specifying when an “application shall be regarded as abandoned by the parties thereto”).
Under the PLTIA, the revival of an abandoned application, like the acceptance of delayed
maintenance fees, is governed by the “unintentional delay” standard. See P.L. 112-211
§§ 202(b)(5), (9) (amending 35 U.S.C. § 133 and § 371(d) to delete language relating to
“unavoidable” delay); id. § 201(b) (authorizing the Director to “establish procedures . . . to

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revive an unintentionally abandoned application for patent”); see also 78 Fed. Reg. 62371. The
PLTIA also authorized the Director to restore priority rights based on a prior international
application (or provisional application) where the filing of a subsequent U.S. application or
priority claim had been unintentionally delayed. See P.L. 112-211 § 201(c)(1) (amending 35
U.S.C. §§ 119(a), (e) and § 365(b)); see also 78 Fed. Reg. 62372. Thus, the changes made in the
PLTIA could have affected a pending suit in which the patentee relied on a predecessor
application to secure an earlier priority date and avoid potentially invalidating prior art. Cf.
Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 491 F. Supp. 2d 916, 924-29 (N.D. Cal.
2008) (granting summary judgment to an alleged infringer where an abandoned application was
revived on a showing of “unintentional,” rather than “unavoidable,” delay); rev’d, 543 F.3d 657
(Fed. Cir. 2008).
This scenario is not an empty hypothetical. Patentees do at times file petitions during
litigation, upon realizing that an abandoned application has left a gap in the asserted patent’s
priority chain. E.g., Avanir Pharms., Inc. v. Actavis S. Atlantic LLC, 987 F. Supp. 2d 504, 517
(D. Del. 2013) (holding that plaintiffs’ petition to revive a predecessor application was
inoperative due to a procedural deficiency). And at the time the PLTIA was enacted, litigants
had challenged the PTO’s authority to revive abandoned applications under the “unintentional”
standard. See 78 Fed. Reg. 62382 (“The patent laws formerly provided for revival of an
unintentionally abandoned application only in the patent fee provisions . . . [which] raised
questions concerning the [agency’s] authority to revive an unintentionally abandoned application
(without a showing of unavoidable delay) in certain situations.”); Aristocrat Techs., 543 F.3d at
660.

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It can be presumed that when Congress enacted the PLTIA, it knew that the revival of
abandoned applications was an important and recurring theme in patent litigation. It makes
sense that the litigation exception was enacted, at least in part, to prevent the PTO from taking
administrative actions that could affect the validity of an asserted patent midway through
infringement litigation, by enabling the patentee to secure an earlier priority date based on a
revived application. This inference is bolstered by the similarity between the litigation exception
and a similar exception in a provision enacted in the American Inventors Protection Act of 1999.
See P.L. 106-113, Div. B, § 1000(a)(9), 113 Stat. 1536 (enacting into law § 4801 of Subtitle H of
Title IV of S. 1948 (113 Stat. 1501A-589), as introduced on Nov. 17, 1999). Like the PLTIA,
section 4801 amended statutory provisions relating to priority and prior applications, see id.; see
also 35 U.S.C. § 119(e), but did not address maintenance fees, expiration, or reinstatement. Its
“effective date” provision, section 4801(d), contains language strikingly similar to the prePLTIA litigation exception: “[t]he amendments made by subsections (b) and (c) shall have no
effect with respect to any patent which is the subject of litigation in an action commenced before
[the effective date].” Id. (emphasis added), reprinted at 35 U.S.C. § 119 note. Section 4801’s
legislative history is no more informative than the PLTIA’s with respect to the meaning of this
language. But the similarity between the two “effective date” exceptions supports the conclusion
that Congress did not intend section 203(b)(2) merely to constitute a special limitation on the
enforceability of reinstated patents.
Accordingly, the Court rejects Defendants’ contention that section 203(b)(2) of the
PLTIA effectively voids, in whole or in part, the PTO’s reinstatement of the ’407 patent.

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III. CONCLUSION
For the foregoing reasons, it is hereby ORDERED that Defendants’ motion for judgment
on the pleadings (Dkt. 55) is DENIED.

It is SO ORDERED.
/s/ Randolph D. Moss
RANDOLPH D. MOSS
United States District Judge

Date: June 10, 2015

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