FILED

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF VIRGINIA

Z813 MAR II

P |: 3l

90 Industrial Way

MKS INSTRUMENTS, INC.

Wilmington, MA 01887-4610
Plaintiff,

CLERK US DISTRICT COURT

ALEXANDRIA. VIRGINIA

Civil Action No. / -/ 3 C\/2 3

HON. TERESA STANEK REA, in her

capacity as Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the
United States Patent and Trademark Office
Defendant.

COMPLAINT

Plaintiff MKS Instruments, Inc. ("MKS" or "Plaintiff), for its complaint against the Honorable Teresa Stanek Rea in her capacity as Acting Under Secretary of Commerce for
Intellectual Property and Acting Director of the United States Patent and Trademark Office (hereinafter "Ms. Rea" or "Defendant"), states as follows:

NATURE OF THE ACTION

1.

This is an action by MKS, the owner and assignee of United States Patent

No. 8,264,237 ("the '237 patent") for review of the determination by Defendant, pursuant to,

inter alia, 35 U.S.C. 154(b)(3)(B), of the Patent Term Adjustment of the '237 patent. MKS seeks a judgment that the patent term adjustment for the '237 patent be changed from 544 to
944 days.

2.

This action arises under 35 U.S.C. 154.

THE PARTIES

3.

MKS is a corporation organized and existing under the laws of the United

States of America, with its principal place of business at 90 Industrial Way, Wilmington,
Massachusetts 01887-4610.

4.

Ms. Rea is the Acting Under Secretary of Commerce for Intellectual Property

and Acting Director of the United States Patent and Trademark Office ("PTO"), acting in his official capacity. The Acting Director is the head of the PTO and is responsible for

superintending or performing all duties required by law with respect to the granting and issuing of patents. As such, Ms. Rea, in her capacity as Acting Director, is designated by statute as the official responsible for determining the period of Patent Term Adjustments under 35
U.S.C. 154(b)(3)(B).

JURISDICTION AND VENUE

5.

This Court has jurisdiction to hear this action and is authorized to issue the

relief sought pursuant to 28 U.S.C. 1331, 1338(a), 1361, 2201, & 2202; 35 U.S.C.
154(b); and 5 U.S.C. 701-706.

6.

Venue is proper in this district by virtue of the Leahy-Smith America Invents

Act, Pub. L. No. 112-29, 9, 125 Stat. 316 (2011).

7.
154(b)(4)(A).

This Complaint is being timely filed in accordance with 35 U.S.C.

ALLEGATIONS

The '237 Patent

8.

MKS is the assignee of all right, title, and interest in the '237 patent, as

evidenced by records on deposit with the PTO and the face of the '237 patent. As such, MKS

is the real party in interest in this case.

9. David J. Coumou is the inventor of patent application number 12/031,171

("the '171 application") which was filed (i.e., met all 371(c) requirements) on February 14,
2008 (the "Filing Date"). 10. On June 16, 2010, the PTO mailed a Non-Final Rejection as to the '171

application (the "First Office Action").

September 16,2010.

MKS responded to the First Office Action on

11.

On November 18, 2010, the PTO mailed a Final Rejection as to the '171 MKS responded to the Second Office Action on

application (the "Second Office Action").

March 18,2011.

12.

On April 1, 2011, the PTO mailed an Advisory Action Before the Filing of

an Appeal Brief as to the '171 application (the "Advisory Action").

13.
2011.

MKS filed a Request for Continued Examination ("RCE") on April 18,

14.

On December 9, 2011, the PTO mailed a Non-Final Rejection as to the '171

application (the "Third Office Action"). MKS responded to the Third Office Action on March
9,2012.

15.

On June 7, 2012, the PTO mailed a Notice of Allowance and Fees Due for the

'171 application (the "Notice of Allowance"). Included in the Notice of Allowance was a

Determination of Patent Term Adjustment wherein the PTO indicated that the Patent Term
Adjustment to date for the '171 application was 482 days.

16.

On August 14, 2012, MKS paid the issue fee for the '171 application, thereby

satisfying all outstanding requirements for issuance of a patent.

17.

On August 22, 2012, the PTO mailed an Issue Notification for the '171

application. Included in the Issue Notification was aDetermination ofPatent Term Adjustment in

which the PTO indicated that the Patent Term Adjustment for the '171 application was 544 days. The PTO calculated 541 days of "A Delays," 62 days of"B Delays," and 59 days of "Applicant
Delays."

18.

On September 11, 2012, the '171 application issued as the '237 patent,

reflecting a Patent Term Adjustment of544 days. Atrue and correct copy ofthe '237 patent is
attached hereto as Exhibit A.

Patent Term Guarantee

19.

The Patent Term Guarantee Act of 1999, a part of the American Inventors

Protection Act ("AIPA"), amended 35 U.S.C. 154(b) to address concerns that delays by the
PTO during the prosecution ofpatent applications could result in a shortening ofthe effective life
of theresulting patents to less thanseventeen years.

20.

Amended 35 U.S.C. 154(b) broadened the universe ofcognizable administrative

delays by the PTO that could retroactively yield an extension ofthe patent term to compensate for
such prosecution delays ("Patent Term Adjustment" or"PTA").

21.

Patent Term Adjustment applies to original utility patent applications (including

continuations, divisional, and continuations-in-part) filed on orafter May 29, 2000.

22. In calculating PTA, Defendant must take into account PTO delays under 35 U.S.C.

154(b)(1), any overlapping periods in the PTO delays under 35 U.S.C. 154(b)(2)(A), and any
applicant delays under 35 U.S.C. 154(b)(2)(C).

23.

Under 35 U.S.C. 154(b)(1)(B), an applicant is entitled to additional PTA

attributable to the PTO's "failure ... to issue a patent within 3 years after the actual Filing Date of

the application in the United States," but not including "any time consumed by Continued

Examination ofthe application requested by the applicant under section 132(b)" ("B Delay").
24. On November 1, 2012, the U.S. District Court for the Eastern District of

Virginia held that Patent Term Adjustment awards arising from the failure ofthe PTO to grant a
patent within three (3) years ofthe filing date (known as "B delays") are not necessarily reduced

by the filing of a Request for Continued Examination if the RCE is filed more than three (3)
years after the patent filing date. Exelixis. Inc.. v. Kappos. No. l:12-cv-00096, 2012 U.S. Dist. LEXIS 157762 (E.D. Va. Nov. 1, 2012). Therefore, the "B delay" should becalculated from the
date three years after filing to the date the patent is issued, whetheror not RCEs were filed. Id.

25.

Under 35 U.S.C. 154(b)(4)(A), "an applicant dissatisfied with a determination

made by the Director under paragraph (3) shall have remedy by a civil action against the Director

filed in the United States District Court for the Eastern District ofVirginia within 180 days after
thegrantof thepatent. Chapter 7 of title5 shall apply to such action."
Defendant's Abrogation of the Patent Term Guarantee

26.

Defendant has improperly calculated PTA in a manner that deprives patentees of

B Delay due to an incorrect interpretation ofthe effect of the Continued Examination procedure
under 35 U.S.C. 132(b) within thecontext of 35 U.S.C. 154(b)(1)(B).

27.

Defendant has inappropriately promulgated and relied upon 37 C.F.R.

1.703(b)(1) to support its flawed interpretation of 35 U.S.C. 154(b)(1)(B) that B Delay

permanently ceases to accrue upon the filing of an RCE byan applicant.

28.

Instead, 35 U.S.C. 154(b)(l)(B)(i) merely requires the exclusion of"any time

consumed by Continued Examination of the application requested by the applicant under 35

U.S.C. 132(b)" when calculating whether the PTO has satisfied the three-year pendency

guarantee.

29.

When properly construed, if the PTO fails to meet this three-year pendency

guarantee, the applicant is entitled to the full remedy afforded by 35 U.S.C. 154(b)(1)(B): "the
term ofthe patent shall be extended 1day for each day after the end ofthat 3-year period until the

patent is issued," subject only to the specific limitations set forth in 35 U.S.C. 154(b)(2).
30. None of the limitations included within 35 U.S.C. 154(b)(2) reduce or

otherwise affect the PTA remedy in 35 U.S.C. 154(b)(1)(B) on the basis of time consumed by
examination after filing ofan RCE.

31.

The PTO also promulgated regulations pursuant to 35 U.S.C. 154(b)(2)(C)

specifying applicant actions that will result in a reduction ofthe additional patent term available
under 35 U.S.C. 154(b)(1)(B). These regulations, set forth at 37 C.P.R. 1.704, likewise do

not include any reduction or limitation based upon time consumed by examination after the filing
of an RCE.

32.

Accordingly, the plain language of 35 U.S.C. 154(b)(l )(B) dictates that ifan

RCE is not filed within three (3) years after the actual Filing Date ofapatent application, the filing
ofthe RCE has no effect upon the accrual ofBDelay for that patent. Under such circumstances,

the applicant is entitled to BDelay from the day after the three-year pendency period through the

date of issuance of the patent, the explicit remedy set forth in 35 U.S.C. 154(b)(1)(B), subject only to the specific limitations set forth at 35 U.S.C. 154(b)(2). See Exelixis. Inc.. v. Kappos.
No. l:12-cv-00096,2012 U.S. Dist. LEXIS 157762 (E.D. Va. Nov. 1,2012).
The Proper Calculation of PTA for the (581 Patent

33.

Under 35 U.S.C. 154(b)(1)(B), MKS isentitled to an additional adjustment of

the term ofthe '237 patent for a period of400 days. This BDelay period consists ofthe period

from February 14, 2011 (three (3) years after the Filing Date) through September 11, 2012 (the
issue date of the '237 patent) (575 days of BDelay).

34.
'237 patent.

Under 35 U.S.C. 154(b)(1)(A), 541 days of A Delay was calculated for the

35.

There are 113 days overlapping between A Delay and BDelay for the '237

patent pursuantto 35 U.S.C. 154(b)(2)(A).

36.

Under 35 U.S.C. 154(b)(2)(C)(i), 59 days ofdelay is attributable to MKS.

37.

The correct PTA for the '237 patent is 944 days: the sum of the 541 days of A

Delay and the 575 days ofB Delay, minus 113 overlapping days and 59 days ofApplicant Delay.
CLAIM FOR RELIEF
COUNT I

(Patent Term Adjustment Under 35 U.S.C. 154)

38.

The allegations of paragraphs 1-37 are incorporated in this claim for relief as if

fully set forth herein.

39.

The PTO's calculation ofBDelay for the '237 patent was based upon a flawed

interpretation of35 U.S.C. 154(b)(1)(B) that wrongly excluded all otherwise compensable PTO
delay that accrued after MKS filed the RCE.

40.

MKS filed one (1) RCE during prosecution ofthe '171 application, which was

filed more than three (3) years after the actual Filing Date ofthat application.
41. MKS' filing ofthe RCE during prosecution ofthe '171 application has no effect

uponthe accrual of B Delay for the '237 patent.

42.

Continued examination of the '171 application by the PTO concluded on the

date the PTO mailed to MKS the Notice of Allowance.

43.

The '237 patent accrued B Delay for the period from February 14, 2011 (three

(3) years after the Filing Date) through September 11, 2012 (the issue date of the '237 patent),
for a total of 575 days of B Delay.

44.

The PTO's erroneous interpretation of 35 U.S.C. 154(b)(l )(B) resulted in an

incorrect calculation of B Delay for the '237 patent that deprived MKS of the appropriate PTA
for this patent.

45.

MKS is entitled to additional patent term for the '237 patent such that the 544

days of PTA granted by thePTO should bechanged to 944 days.

WHEREFORE, MKS respectfully prays that this Court:

A.

Issue an Order changing the period of PTA for the '237 patent from 544 days

to 944 days, and requiring Defendant to alter the term of the '237 patent to reflect such
additional PTA; and

B.

Grant such other and further relief as the nature of the case may admit or

require and as may be just and equitable.

Respectfully submitted,

HARNESS, DICKEY & PIERCE, P.L.C.

Dated: March 11,2013

Virginia Bar No. 66234 Attorney for MKS Instruments, Inc. 11730 Plaza America Drive, Suite 600 Reston, Virginia 20190 Telephone: 703-668-8000
Facsimile: 703-668-8200

Email: dhaarz@hdp.com
17549568.1