Mohsenzadeh v. Lee

United States Court of Appeals
for the Federal Circuit
______________________

HOSSEIN MOHSENZADEH,
Plaintiff-Appellant

v.

MICHELLE K. LEE, DIRECTOR, U.S. PATENT AND
TRADEMARK OFFICE, DEPUTY UNDER
SECRETARY OF COMMERCE FOR
INTELLECTUAL PROPERTY AND DEPUTY
DIRECTOR OF THE UNITED STATES PATENT
AND TRADEMARK OFFICE,
Defendant-Appellee
______________________

2014-1499
______________________

Appeal from the United States District Court for the
Eastern District of Virginia in No. 1:13-cv-00824-GBL-
TCB, Judge Gerald Bruce Lee.
______________________

Decided: June 25, 2015
______________________

MICHAEL OAKES, Hunton & Williams LLP, Washing-
ton, 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
2 MOHSENZADEH v. LEE

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 en-
try 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.
I. BACKGROUND
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
MOHSENZADEH v. LEE 3

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 applica-
tion 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 re-
quirement.
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 issue a restriction requirement, which requires the
applicant to elect to prosecute only one of the inventions
as part of that application. 35 U.S.C. § 121. For the
remaining inventions, the applicant may file a divisional
application, which entitles the invention in the divisional
application to the benefit of the filing date of the original
application. Id.
After a patent is granted, the Director of the PTO
must issue a patent term adjustment that adds one day of
patent term for each day of A or B Delay attributable to
the PTO. 35 U.S.C. 154(b)(1)(A). The adjustment is
statutorily reduced for delays attributable to the appli-
cant’s unreasonable prosecution efforts:
4 MOHSENZADEH v. LEE

The period of adjustment of the term of a patent . . .
shall be reduced by a period equal to the period of
time during which the applicant failed to engage in
reasonable efforts to conclude prosecution of the ap-
plication.
35 U.S.C. § 154(b)(2)(C)(i) (emphasis added). The statute
instructs the PTO to “prescribe regulations establishing
the circumstances that constitute a failure of an applicant
to engage in reasonable efforts to conclude processing or
examination of an application.” Id. § 154(b)(2)(C)(iii).
B. MOHSENZADEH’S PATENT APPLICATIONS
Mohsenzadeh filed Application No. 09/899,905 (“ ’905
application”) on July 6, 2001. The ’905 application in-
cluded 58 claims. Though the 14-month notification
period of 35 U.S.C. § 154(b)(1)(A) ended on September 6,
2002, the PTO did not notify Mohsenzadeh that the ’905
application was subject to a restriction requirement until
September 21, 2006. The restriction requirement includ-
ed four groupings of claims, each corresponding to a single
invention. In response to the restriction requirement,
Mohsenzadeh elected to prosecute claims 1–21 and 51–58.
At that point, the non-elected claims were cancelled via
examiner amendment.
The claims Mohsenzadeh elected to prosecute issued
on June 22, 2010 as U.S. Patent No. 7,742,984 (“ ’984
patent”). When the patent issued, the PTO granted a
patent term adjustment of 2,104 days for the ’984 patent.
That figure includes 1,476 days of A Delay attributable to
the delay occurring between September 6, 2002 and
September 21, 2006, i.e., the time between when notice
was due and when the PTO actually provided notice of the
restriction requirement.
Mohsenzadeh filed two divisional applications from
the ’905 application on January 8, 2010. Each divisional
application corresponded to a group of claims identified as
MOHSENZADEH v. LEE 5

a separate invention in the original restriction require-
ment. Both applications issued as patents. The first, U.S.
Patent No. 8,352,362 (“ ’362 patent”), issued on January
8, 2013, and the second, U.S. Patent No. 8,401,963 (“ ’963
patent”), issued on March 19, 2013. Both patents claim
priority to the ’984 patent. The PTO granted 0 days of
patent term adjustment for both the ’362 and ’963 pa-
tents.
C. MOHSENZADEH’S CHALLENGES TO TERM ADJUSTMENTS
Pursuant to agency regulations, Mohsenzadeh re-
quested reconsideration of the patent term adjustments
for both the ’362 and ’963 patents. He argued that each
patent was entitled to the 1,476 days that the PTO de-
layed in issuing the restriction requirement for the ’984
patent. The PTO denied both requests, reasoning that 37
C.F.R. § 1.704(c)(14) provides that when prosecution
occurs via a continuing application, any delays arising
prior to the actual filing date of the application will not
apply to the application that results in the patent.
Mohsenzadeh filed an action challenging the denials
of his reconsideration requests under 35 U.S.C.
§ 154(b)(4)(A), which provides applicants a remedy in the
form of a civil action against the Director of the PTO in
the Eastern District of Virginia. The government moved
for summary judgment, principally arguing that the
repeated use of singular nouns throughout
§ 154(b)(1)(A)—“an original patent,” “an application”—
followed by instructions on extending the term of “the
patent” shows that an applicant “is entitled to ‘A delay’
only for the patent that yielded from the initial applica-
tion.” J.A. 687–88. The district court granted the gov-
ernment’s motion for summary judgment on two grounds.
First, the court held that 35 U.S.C. § 154 unambiguously
requires that a patent term adjustment apply for delays
that occurred during prosecution of the actual application
from which the patent directly issued, not the application
6 MOHSENZADEH v. LEE

from which it derived priority. Second, the court held
that the PTO’s interpretation of 35 U.S.C. § 154 was
“reasonable and entitled to some deference.” The court
then entered final judgment in favor of the government.
Mohsenzadeh appeals from the grant of summary
judgment to the government. We have jurisdiction under
28 U.S.C. § 1295(a)(1).
II. DISCUSSION
Both Mohsenzadeh and the government focus their
arguments on the text of 35 U.S.C. § 154. Mohsenzadeh
argues that the statute was enacted to adjust the terms of
all patents impacted by delays caused by the PTO.
Mohsenzadeh contends this is shown by the language of
the statute, which considers the delay caused to the
issuance of “an original patent” based on the PTO’s failure
to provide certain notifications within 14 months of the
date on which “an application” was filed. 35 U.S.C.
§ 154(b)(1)(A)(i)(I). He relies on the sequence of the
pronouns in the following excerpt of the statute:
if 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;
...
the term of the patent shall be extended 1 day for
each day [of delay]
MOHSENZADEH v. LEE 7

35 U.S.C. § 154(b)(1)(A) (emphases added). Mohsenzadeh
claims that delays in the issuance of “an original patent,”
here each of the ’362 and ’963 patents, was caused by
delays in providing notice for “an application,” here the
’905 application. Thus, the consecutive uses of the indefi-
nite article “an”—before “original patent” and “applica-
tion”—allows delays in the prosecution of one patent to be
counted in the patent term adjustment of more than one
patent.
The government responds by arguing that 35 U.S.C.
§ 154(b)(1)(A) does not contemplate parent and continuing
applications through use of the terms “an original patent”
and “an application,” but rather one single application.
The government points out that Congress expressly
referred to both “applications” (i.e., continuing applica-
tions) and “earlier filed applications” (i.e., parent applica-
tions) in § 154(a)(2). 1 This, the government contends,
undermines Mohsenzadeh’s contention that Congress
intended to impute delays from the prosecution of a
parent application to any continuing applications deriving
therefrom. The government also argues that the history
of amendment of § 154(b)(1)(A)(i) confirms that Congress
was referring to a single application throughout. Earlier
drafts of the statute only provided a deadline for issuing a
notice as to an application filed under section 111(a), at
which time the definite article was used: “the application
was filed under section 111(a).” When the statute was
amended to include notice for international applications

1 The relevant language from this statutory section
provides that “if the application contains a specific refer-
ence to an earlier filed application or applications under
section 120, 121, or 365(c),” i.e., if the application is a
continuing application, the 20-year patent term will begin
to run “from the date on which the earliest such applica-
tion was filed.” 35 U.S.C. § 154(a)(2) (emphases added).
8 MOHSENZADEH v. LEE

in § 154(b)(1)(A)(ii), the indefinite article was used in both
provisions to indicate alternative types of applications
that would be subject to the notification proceeding. The
government separately argues that the PTO did not act
arbitrarily or capriciously in promulgating 37 C.F.R.
§ 1.704(c)(14), 2 which states:
(14) Further prosecution via a continuing applica-
tion, in which case the period of adjustment . . .
shall not include any period that is prior to the ac-
tual filing date of the application that resulted in
the patent.
A. STANDARD OF REVIEW
We review a district court’s grant of summary judg-
ment under the law of the regional circuit, in this case the
Fourth Circuit. Fox Grp., Inc. v. Cree, Inc., 700 F.3d 1300,
1303 (Fed. Cir. 2012). The Fourth Circuit reviews the
grant of summary judgment de novo, “viewing all facts
and reasonable inferences therefrom in the light most
favorable to the nonmoving party.” Fraternal Order of
Police Metro Transit Police Labor Comm., Inc. v. Wash.
Metro. Area Transit Auth., 780 F.3d 238, 241 (4th Cir.
2015). Similarly, we review questions of pure statutory
interpretation without deference to the district court. AD
Global Fund, LLC v. United States, 481 F.3d 1351, 1353
(Fed. Cir. 2007).

2 At the time Mohsenzadeh instituted this case, the
quoted regulation was paragraph 12. Subsequently, the
regulation was amended twice, resulting in the relevant
paragraph being renumbered to 14. The district court
order from which the appeal was taken and Mohsen-
zadeh’s brief refer to paragraph 12. The government’s
brief refers to paragraph 13. We refer to paragraph 14 to
aid reference to the current numbering.
MOHSENZADEH v. LEE 9

B. THE STATUTE’S PLAIN LANGUAGE
RESOLVES THE DISPUTE
The language of the provision of the patent term ad-
justment statute at issue, 35 U.S.C. § 154(b)(1)(A), clearly
shows that Congress intended delay in the prosecution of
an application to be restored to a single patent, the patent
issuing directly from that application. In other words, the
term of any patent arising from a continuing application
is not restored for delay in the prosecution of the parent
patent’s application.
The statute’s reference to “an original patent” and lat-
er to “an application” does not conclusively show that
Congress intended the provision to refer to multiple
applications merely because it used “an” in the second
instance instead of “the.” Had Congress intended for the
period of delay during prosecution of a parent application
to be restored for all continuing applications deriving from
it, it would have done so expressly. We need only look to
the previous subsection of the same statute to find an
example of express congressional intent to address the
relationship between parent applications and continuing
applications, 35 U.S.C. § 154(a)(2). In § 154(a)(2), Con-
gress provided that the term of a patent arising from a
non-continuing application should end “20 years from the
date on which the application for the patent was filed.” In
that same subsection, Congress specified that for an
application that “contains a specific reference to an earlier
filed application or applications under section . . . 121,”
i.e., a divisional application, the term ends 20 years “from
the date on which the earliest such application was filed.”
Id. Congress’ intent that the statute clearly address both
parent and continuing applications, where necessary,
suggests that Congress did not provide patent term
adjustments in continuing applications based on delays in
the prosecution of parent applications in § 154(b)(1)(A).
See generally Bates v. United States, 522 U.S. 23, 29-30
(1997) (noting that Congress acts intentionally where it
10 MOHSENZADEH v. LEE

“includes particular language in one section of a statute
but omits it in another section”); BFP v. Resolution Trust
Corp., 511 U.S. 531, 537 (1994) (same).
As the government argues, Congress’ insertion of the
provision governing international applications in
§ 154(b)(1)(A)(ii) when it amended the statute in 2000 also
signifies that Congress did not intend for patent term
adjustments in continuing applications to be made for
delays in parent applications. A previous version of the
bill addressed only adjustments to domestic applications,
referring to “the application” in § 154(b)(1)(A)(i). H.R.
Rep. No. 106-287, at 105 (1999) (Comm. Rep.) (emphasis
added). Congress revised the bill so as to address adjust-
ments to patents arising out of both domestic applica-
tions, in § 154(b)(1)(A)(i)(I), and international
applications, in § 154(b)(1)(A)(i)(II). When it did so, it
used the indefinite article “an” before the word “applica-
tion” in both §§ 154(b)(1)(A)(i)(I) and (II). H.R. Rep. No.
106-464, at 48 (1999) (Conf. Rep.). This later version was
identical to the final text of § 154(b)(1)(A)(i). The indefi-
nite article, thus, appears not to allow for reference to a
different application than the one ripening into “an origi-
nal patent,” but simply to signify Congress’ adjustment of
the statute to account for the fact that a patent may arise
either from a domestic application or an international
application. Because we hold that the plain language of
§ 154(b)(1)(A) shows that Congress did not intend to
provide patent term adjustments in continuing applica-
tions based on delays in the prosecution of parent applica-
tions, it is not necessary to reach whether 37 C.F.R.
§ 1.704(c)(14) is a proper exercise of the PTO’s delegated
rule making authority under 35 U.S.C. § 154(b)(2)(C)(iii).
CONCLUSION
Because the plain language of 35 U.S.C. § 154(b)(1)(A)
does not provide patent term adjustments in continuing
MOHSENZADEH v. LEE 11

applications based on delays in the prosecution of parent
applications, we affirm the judgment of the district court.
AFFIRMED
COSTS
No costs.