Japanese Foundation For Cancer Research v. Rea et al

Filing 31

MEMORANDUM OPINION. Signed by District Judge Anthony J Trenga on 7/26/13. (gwalk, )

IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF VIRGINIA
Alexandria Division

JAPANESE FOUNDATION FOR
CANCER RESEARCH

Plaintiff,
Civil Action No. l:13-cv-412

v.

(AJT/TRJ)

TERESA STANEK REA, Acting Under
Secretary of Commerce for Intellectual
Property and Acting Director of the United
States Patent and Trademark Office,
UNITED STATES PATENT AND

TRADEMARK OFFICE,
Defendants.

MEMORANDUM OPINION

On October 11,2011, a terminal disclaimer of U.S. Patent No. 6,194,187 was filed with

the United States Patent and Trademark Office ("PTO") on behalf of the patent owner, plaintiff

Japanese Foundation for Cancer Research (the "Foundation").1 After the disclaimer was filed,
but before it was published on the PTO's website or in the PTO's Official Gazette, the

1Generally, the term of a patent is twenty years from the filing date of the patent application. 35
U.S.C. § 154(a)(2). A "terminal disclaimer" refers to a patentee's formally disclaimer, and

dedication to the public, of part of a patent term. Such disclaimers are generally used by patent
applicants to avoid what is referred to as an "obviousness-type double patenting" rejection by the
PTO based on "an 'obvious' modification of the same invention [already patented]." In re
Longi, 759 F.2d 887, 892-93 (Fed. Cir. 1985). A rejection on this basis is intended to protect the
public from an "unjustified timewise extension" of a patent. Boehringer Ingelheim Intern.
GmbHv. Barr Lab., Inc., 592 F.3d 1340, 1347-48. (Fed. Cir. 2010). To avoid such a rejection of
a new patent application, a terminal disclaimer will be filed as part of the new patent application,
with the result that the new patent will issue with a term that expires at the same time as the
earlier, already issued patent. Id.