Case: 22-1640 Document: 36 Page: 1 Filed: 11/07/2022
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
EURICA CALIFORRNIAA,
Plaintiff-Appellant
v.
KATHERINE K. VIDAL, UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY
AND DIRECTOR OF THE UNITED STATES
PATENT AND TRADEMARK OFFICE,
Defendant-Appellee
______________________
2022-1640
______________________
Appeal from the United States District Court for the
Eastern District of Virginia in No. 1:20-cv-00985-MSN-
TCB, Judge Michael S. Nachmanoff.
______________________
Decided: Nov. 7, 2022
______________________
EURICA CALIFORRNIAA, Mahopac, NY, pro se.
DANA KAERSVANG, Appellate Staff, Civil Division,
United States Department of Justice, Washington, DC, for
defendant-appellee. Also represented by BRIAN M.
BOYNTON, DANIEL TENNY; JESSICA D. ABER, MEGHAN
LOFTUS, Office of the United States Attorney for the
Case: 22-1640 Document: 36 Page: 2 Filed: 11/07/2022
2 CALIFORRNIAA v. VIDAL
Eastern District of Virginia, United States Department of
Justice, Alexandria, VA; KAKOLI CAPRIHAN, BENJAMIN T.
HICKMAN, THOMAS W. KRAUSE, BRIAN RACILLA, FARHEENA
YASMEEN RASHEED, Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA.
______________________
Before LOURIE, DYK, and HUGHES, Circuit Judges.
PER CURIAM.
Eurica Califorrniaa appeals from the decision of the
United States District Court for the Eastern District of Vir-
ginia granting summary judgment in favor of the United
States Patent and Trademark Office (“PTO”). See Califorr-
niaa v. Hirshfeld, No. 1-20-cv-00985, 2021 WL 6196996
(E.D. Va. Dec. 20, 2021). We affirm.
BACKGROUND
Califorrniaa alleges that the PTO incorrectly calcu-
lated the Patent Term Adjustment (“PTA”) for his patent,
U.S. Patent 10,245,075 (the “’075 patent”), by improperly
deducting 51 days due to applicant delay.
Patent terms are generally extended by one day for
each day of PTO delay, minus one day for each day during
which the applicant fails to engage in reasonable efforts to
conclude prosecution of the application. 35 U.S.C.
§ 154(b)(2)(C). 1 Congress delegated to the PTO the
1 35 U.S.C. § 154(b)(2)(C): Reduction of period of ad-
justment. —
(i) The period of adjustment of the term of a patent un-
der paragraph (1) 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 appli-
cation.
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CALIFORRNIAA v. VIDAL 3
authority to define those situations that reflect a failure
to engage in reasonable efforts to conclude prosecution of
the patent. § 154(b)(2)(C)(iii). To avoid case-by-case de-
terminations of what constitutes a failure to engage in
reasonable efforts to conclude prosecution, it has promul-
gated regulations outlining examples of such efforts. See
65 Fed. Reg. 56366, 56378–79 (Sept. 18, 2000). It has de-
fined an applicant’s amendment of a patent application
after it issues a notice of allowance as one such failure.
37 C.F.R. § 1.704(c)(10). 2 Following our January 23, 2019
(ii) With respect to adjustments to patent term made
under the authority of paragraph (1)(B), an applicant shall
be deemed to have failed to engage in reasonable efforts to
conclude processing or examination of an application for
the cumulative total of any periods of time in excess of 3
months that are taken to respond to a notice from the Office
making any rejection, objection, argument, or other re-
quest, measuring such 3-month period from the date the
notice was given or mailed to the applicant.
(iii) The Director shall prescribe regulations establish-
ing the circumstances that constitute a failure of an appli-
cant to engage in reasonable efforts to conclude processing
or examination of an application.
2 37 C.F.R. § 1.704(c)(10) (2019): Submission of an
amendment under § 1.312 or other paper, other than a re-
quest for continued examination in compliance with §
1.114, after a notice of allowance has been given or mailed,
in which case the period of adjustment set forth in § 1.703
shall be reduced by the lesser of:
(i) The number of days, if any, beginning on the date
the amendment under § 1.312 or other paper was filed and
ending on the mailing date of the Office action or notice in
response to the amendment under § 1.312 or such other pa-
per; or
(ii) Four months.
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4 CALIFORRNIAA v. VIDAL
decision in Supernus, the PTO revised its regulations gov-
erning the calculation of PTA, including § 1.704(c)(10).
Supernus Pharms., Inc. v. Iancu, 913 F.3d 1351 (Fed. Cir.
2019); 85 Fed. Reg. 36335, 36335 (June 16, 2020). This
subsection was amended in June 2020 to (1) distinguish
between after-allowance amendments expressly requested
by the PTO, and those not, and (2) change the relevant
timeframe for the calculation of a reduction in PTA.
37 C.F.R. § 1.704(c)(10) (2020) 3; 85 Fed. Reg. at 36335.
After an extensive prosecution involving numerous
amendments, the examiner found that Califorrniaa’s pa-
tent could issue if minor additional changes were made to
the claim language. C.A. 101–03. 4 The examiner made the
amendment on his own authority and mailed the Notice of
Allowance on December 11, 2018. C.A. 100. On January
7, 2019, Califorrniaa requested an additional interview, at-
taching a new proposed amendment to the interview re-
quest. C.A. 112–16. The interview was held the following
day and included discussion of the potential amendment.
Id. On January 10, 2019, Califorrniaa accordingly submit-
ted a new amendment making minor changes (e.g., the ad-
dition of a comma) to some of the examiner-amended claim
limitations, and several substantive changes (e.g., the
3 37 C.F.R. § 1.704(c)(10) (2020): Submission of an
amendment under § 1.312 or other paper, other than an
amendment under § 1.312 or other paper expressly re-
quested by the Office or a request for continued examina-
tion in compliance with § 1.114, after a notice of allowance
has been given or mailed, in which case the period of ad-
justment set forth in § 1.703 shall be reduced by the num-
ber of days, if any, beginning on the day after the date of
mailing of the notice of allowance under 35 U.S.C. 151 and
ending on the date the amendment under § 1.312 or other
paper was filed.
4 “C.A.” refers to Appellee’s Corrected Appendix.
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CALIFORRNIAA v. VIDAL 5
deletion of limitations) unrelated to the examiner amend-
ment. C.A. 117–36. On February 26, 2019, the examiner
responded and accepted the amendment. C.A. 140–161.
The patent issued on April 2, 2019. C.A. 162.
The PTO, in calculating PTA, subtracted 51 days for
the time that the plaintiff's after-allowance amendment
was pending pursuant to 37 C.F.R. § 1.704(c)(10) (2019).
At the time of calculation, § 1.704(c)(10) required a reduc-
tion of PTA for “[s]ubmission of an amendment under §
1.312 . . . after a notice of allowance has been given or
mailed” by “the lesser of: (i) The number of days, if any,
beginning on the date the amendment under § 1.312 or
other paper was filed and ending on the mailing date of the
Office action or notice in response to the amendment under
§ 1.312 or such other paper; or (ii) Four months.”
Pursuant to 35 U.S.C. § 154(3)(B)(ii), Califorrniaa
timely filed a request for redetermination of PTA. C.A.
163–165. Califorrniaa argued that his only possible course
of action to address the examiner’s amendment was to file
his own after-allowance amendment, and therefore his ac-
tions did not constitute a failure to engage in reasonable
efforts to conclude prosecution. The PTO found that the
situation still fell within the rule, and that Califorrniaa
would not benefit from an exception anyway because he
sought changes unrelated to the examiner’s amendment
and that it could have been made earlier. C.A. 6–7.
Califorrniaa then sought review in the U.S. District
Court for the Eastern District of Virginia under 35 U.S.C.
§ 145. Califorrniaa argued again that the PTA should not
be reduced because the PTO’s rule that all after-allowance
amendments constitute applicant delay was contrary to
§ 154(b)(2)(C). Califorrniaa also argued that (1) he had not
approved the examiner’s amendment; and (2) that his PTA
should be recalculated using the method outlined in the
June 16, 2020 amendment to § 1.704(c)(10) because the
prior version of the regulation was invalid in light of our
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6 CALIFORRNIAA v. VIDAL
ruling in Supernus, 913 F.3d at 1358–61. The court, apply-
ing Chevron deference, concluded that the applicant’s filing
of an after-allowance amendment met the criteria for a re-
duction of PTA, and that Califorrniaa’s other arguments
were forfeited because they were not made before the PTO.
C.A. 18 n.3. The court then granted summary judgment in
favor of the PTO. C.A. 15–19. Califorrniaa timely filed a
request for rehearing, which was denied. C.A. 21–24.
Califorrniaa then appealed the district court’s grant of
the PTO’s motion for summary judgment to this court. C.A.
28. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(C).
DISCUSSION
We review a grant of summary judgment according to
the law of the regional circuit. Intra-Cellular Therapies,
Inc. v. Iancu, 938 F.3d 1371, 1379 (Fed. Cir. 2019). The
Fourth Circuit reviews grants of summary judgment de
novo. Norfolk S. Ry. Co. v. City of Alexandria, 608 F.3d
150, 156 (4th Cir. 2010).
Applying a de novo standard, we review the PTO’s PTA
decision in accordance with the Administrative Procedure
Act (“APA”). See 35 U.S.C. § 154(b)(4)(A); Chudik v.
Hirshfeld, 987 F.3d 1033, 1039 (Fed. Cir. 2021). The APA
requires that courts only “set aside agency action, findings,
and conclusions” if they are “arbitrary, capricious, an abuse
of discretion, or otherwise not in accordance with law.” 5
U.S.C. § 706(2)(A). When reviewing an agency’s statutory
interpretation, we apply the two-step framework estab-
lished in Chevron, U.S.A., Inc. v. Nat. Res. Def. Council,
Inc., 467 U.S. 837 (1984). The parties disagree as to
whether Chevron applies, but, consistent with our prior de-
cisions concerning PTA calculation, we find that it does.
See Supernus, 913 F.3d at 1356–57; Intra-Cellular Thera-
pies Inc. v. Iancu, 938 F.3d 1371, at 1379, 1383 (Fed. Cir.
2019); Gilead Scis., Inc. v. Lee, 778 F.3d 1341, 1346 (Fed.
Cir. 2015).
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CALIFORRNIAA v. VIDAL 7
Califorrniaa challenges the validity of § 1.704(c)(10)
under two different statutory subsections: 35 U.S.C.
§§ 154(b)(2)(C)(i) and 154(b)(2)(C)(iii). We address each in
turn.
I
Califorrniaa argues that § 1.704(c)(10) (2019), and the
PTO’s calculation of applicant delay in accordance with
that rule, violate § 154(b)(2)(C)(i) and our holding in Su-
pernus. The PTO responds that this argument was for-
feited and that its determination of PTA was consistent
with § 154(b)(2)(C)(i) because all the time consumed by
the PTO’s consideration of the amendment was attributa-
ble to Califorrniaa’s decision to file it. The district court
declined to consider this issue, finding it had been for-
feited by not being argued before the PTO. We agree with
the PTO on the merits, and we therefore do not reach the
issue of forfeiture.
Subsection 154(b)(2)(C)(i) mandates that “[t]he 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 con-
clude prosecution of the application.” § 154(b)(2)(C)(i)
(emphasis added). In Supernus, we found the language of
§ 154(b)(2)(C)(i) to be “plain, clear, and conclusive.” 913
F.3d at 135. We found that, pursuant to the plain lan-
guage of the statute, “PTA cannot be reduced by a period
of time during which there is no identifiable effort in
which the applicant could have engaged to conclude prose-
cution because such time would not be ‘equal to’ and
would instead exceed the time during which an applicant
failed to engage in reasonable efforts.” 913 F.3d at 1359.
Applying that logic, we found that the PTO’s assessment
of applicant delay in that case exceeded its statutory au-
thority under step one of Chevron. Id. at 1360–61. Step
one of Chevron asks whether Congress “directly addressed
the precise question at issue.” Chevron, 467 U.S. at 842.
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8 CALIFORRNIAA v. VIDAL
As the statute is unambiguous, there was no need to pro-
ceed to Chevron step two, and deference was not in play.
Where the facts of Supernus and the present case dif-
fer, however, is that the applicant in Supernus had no fea-
sible actions it could have taken to conclude prosecution
between the filing of its Request for Continued Examina-
tion and the European Patent Office’s Notice of Opposi-
tion. Here, Califorrniaa could have, at any time in the 51
days between the filing of his after-allowance amendment
and the examiner’s acceptance of the proposal, withdrawn
his after-allowance amendment, concluding prosecution.
Therefore, unlike in Supernus, there was an “identifiable
effort” in which Califorrniaa could have engaged to con-
clude prosecution.
That the PTO later amended § 1.704(c)(10) to change
the period of pendency does not affect our decision. Nor
can the later-amended version somehow apply to calcula-
tion of PTA for the ’075 patent. The effective date of the
amendment to the regulation was July 16, 2020, after the
issuance of the ’075 patent and calculation of its PTA. 85
Fed. Reg. at 36,335. Because we resolve this issue on the
merits, we do not reach the issue of forfeiture.
II
Califorrniaa further argues that § 1.704(c)(10) (2019),
and the PTO’s calculation of applicant delay in accordance
with that rule, violate § 154(b)(2)(C)(iii) because his ac-
tions did not constitute a failure to engage in reasonable
efforts to conclude prosecution since he was responding to
an examiner-made amendment. The PTO responds that
its interpretation of the statute to include all after-allow-
ance amendments as applicant delay should be sustained,
particularly given Chevron deference, and, regardless,
Califorrniaa’s after-allowance amendment could have
been made earlier. We agree with the PTO.
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CALIFORRNIAA v. VIDAL 9
Unlike the statutory terms at issue in Supernus, the
meaning of “reasonable efforts” in subsection
154(b)(2)(C)(iii) is ambiguous here. See Gilead, 778 F.3d at
1346–49 (finding what constituted “failure to engage in
reasonable efforts” not clearly addressed by Congress). Alt-
hough subsection 154(b)(2)(C)(ii) provides one instance
where Congress provided an example of applicant delay,
the third subsection of the statute directs the PTO to pre-
scribe other instances in which applicant behavior “consti-
tutes a failure of an applicant to engage in reasonable
efforts to conclude processing or examination of an applica-
tion.” 35 U.S.C. § 154(b)(2)(C)(iii). Therefore, Congress did
not clearly answer whether after-allowance amendments
constitute a failure to engage in reasonable efforts to con-
clude prosecution and we must proceed to Chevron step two
to decide this issue.
In step two, Chevron requires determining “whether
the [PTO’s] answer is based on a permissible construction
of the statute.” Chevron, 467 U.S. at 842–43. At this stage
of the Chevron analysis, an agency’s construction of a stat-
utory scheme is afforded considerable weight. Id. at 844.
Chevron teaches that, when Congress explicitly leaves a
gap for an agency to fill, “[s]uch legislative regulations are
given controlling weight unless they are arbitrary, capri-
cious, or manifestly contrary to the statute.” Id. Therefore,
we accept an agency’s construction of the statute even if the
agency’s reading differs from what a court believes is the
best statutory interpretation. Id.
Here, Congress expressly delegated authority to “[t]he
Director [to] prescribe regulations establishing the circum-
stances that constitute a failure of an applicant to engage
in reasonable efforts to conclude processing or examination
of an application.” 35 U.S.C. § 154(b)(2)(C)(iii). As permit-
ted by statute, the PTO promulgated § 1.704(c)(10), which
encompasses the precise situation in this case—when the
applicant files an after-allowance amendment. “Such
broad language demonstrates Congress intended the PTO
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10 CALIFORRNIAA v. VIDAL
to employ its expertise in identifying applicant conduct
demonstrating a lack of ‘reasonable efforts to conclude pro-
cessing or examination of an application.’” Gilead, 778 F.3d
at 1349 (citing § 154(b)(2)(C)(iii)). After-allowance amend-
ments predictably delay the close of prosecution, and we
cannot say that it was arbitrary for the PTO to conclude
that applicants that elect to file amendments after having
their claims allowed generally should be charged with de-
lay. We therefore find that the PTO’s interpretation of the
statute was permissible here.
Califorrniaa asserts that an exception should be made
for after-allowance amendments made in response to ex-
aminer-made amendments in the Notice of Allowance, as
they could not have been raised earlier. But this is not the
situation at hand. Califorrniaa filed a substantive after-
allowance amendment unrelated to the minor amendment
made by the examiner and he has not provided any reason
that the amendment could not have been made earlier.
C.A. 101–136. We decline to consider a situation not before
us.
CONCLUSION
We have considered Califorrniaa’s remaining argu-
ments but find them unpersuasive. For the foregoing rea-
sons, we affirm the judgment of the district court.
AFFIRMED