FILED

IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF VIRGINIA

Alexandria Division
HOSSEIN MOHSENZADEH

2013 JUN 28 P

35

30 Revere Beach Parkway

Medford, MA 02155
Plaintiff,

CLERK US DISTRICT COURT ALEXANDRIA. VIRGINIA

Civil Action No. i; 13CV >Q3

HON. TERESA STANEK REA

chh/ctpA

Acting Under Secretary of

Commerce for Intellectual

Property and Director of the United States

Patent and Trademark Office Office of the General Counsel United States Patent and Trademark Office

P.O. Box 1450, Arlington, VA 22313 Madison Building East, Room 10B20 600 Dulany Street, Alexandria, VA 22314
Defendant.

COMPLAINT

Plaintiff Hossein Mohsenzadeh ("Plaintiff or "Mr. Mohsenzadeh"), for his Complaint against Defendant, the Honorable Teresa Stanek Rea ("Defendant"), respectfully states as
follows:

1.

This is an action by Mr. Mohsenzadeh, the assignee and owner of United States

Patent No. 8,346,659 ("the '659 patent"), seeking review of inaccurate and erroneous patent term
adjustment calculations made by the United States Patent & Trademark Office ("PTO").

Specifically, this is an action by Mr. Mohsenzadeh under 35 U.S.C. 154(b)(4)(A) seeking a judgment that the patent term adjustment for the '659 patent be changed from 1,560 days to
2,783 days.

2.

This action arises under 35 U.S.C. 154 and the Administrative Procedure Act, 5

U.S.C. 701-706.
THE PARTIES

3.

Plaintiff Hossein Mohsenzadeh is an individual with a primary residence at 30

Revere Beach Parkway, Medford, MA 02155. 4. Defendant Honorable Teresa Stanek Rea is both Acting Under Secretary of

Commerce for Intellectual Property and Director of the United States Patent and Trademark
Office, and is sued here in her official capacity.
JURISDICTION AND VENUE

5.

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

requested relief sought by Plaintiff pursuant to 28 U.S.C. 1331, 1338(a) and 1361; 35 U.S.C.
154(b)(4)(A) and 5 U.S.C. 701-706.

6.
7.

Venue is proper in this district pursuant to 35 U.S.C. 154(b)(4)(A).

This Complaint is timely filed in accordance with 35 U.S.C. 154(b)(4)(A).
BACKGROUND

8.

Plaintiff is the assignee of all right, title and interest in the '659 patent, a true and

correct copy of which is attached hereto as Exhibit A. 9. The '659 patent was duly issued on January 1, 2013, and is based on U.S. Patent

Application No. 10/375,501, filed on February 26, 2003.

10. 11.

The '659 patent is not subject to a terminal disclaimer. Under 35 U.S.C. 154(b)( 1), the PTO calculates patent term adjustment ("PTA")

in the following manner: (A) an "A-clause," which awards PTA for delays arising when the
PTO fails to act by certain examination deadlines; (B) a "B-clause," which awards PTA for

application pendency exceeding three years; and (C) a "C-clause," which awards PTA for delays
2

due to interferences, secrecy orders, and appeals. The PTO calculates PTA by adding the A-C

Delays, and subtracting any overlapping days, and any days attributable to applicant delay. 12. The PTO awarded the '659 patent 1,421 days for A Delays and 1,278 days for B

Delays. The PTO calculated a total of 389 days for Applicant Delay, and found that there were
750 days of overlapping A and B Delays. Thus, subtracting the Applicant Delay from the non-

overlapping PTO delays, the PTO originally awarded the '659 patent 1,560 days of patent term
adjustment under 35 U.S.C. 154(b), as is reflected on the face of the patent. A true and correct
copy of the PTO PTA Determination is attached hereto as Exhibit B.

13.

When the PTO issued the '659 patent on January 1,2013, it erroneously

calculated the patent term adjustment for the '659 patent as 1,560 days. Had the PTO calculated

the patent term adjustment properly, the '659 patent would be entitled to no less than 2,783 days
of patent term adjustment.

14.

35 U.S.C. 154(b)(1)(B), entitled "Guarantee of no more than 3-year application

pendency," provides for an extension of one day of patent term for each day following three

years from the actual filing date of a patent application, until the patent issues. This provision
applies "if the issue of an original patent is delayed due to the failure of the United States Patent

and Trademark Office to issue a patent within 3 years after the actual filing date of the application in the United States, not including (i) any time consumed by continued

examination of the application requested by the applicant under section 132(b) [or] (ii) any time consumed by a proceeding under section 135(a), any time consumed by the imposition of an
order under section 181, or any time consumed by appellate review by the Board of Patent

Appeals and Interferences or by a Federal court."

15.

The PTO's interpretation of 35 U.S.C. 154(b)(1)(B) is set forth in 37 C.F.R.

1.703(b), which provides in relevant part for an award of PTA under 35 U.S.C. 154(b)(1)(B)

equal to "the number of days, if any, in the period beginning on the day after the date that is three years after the date on which the application was filed ... and ending on the date a patent was
issued, but not including ... (i) The number of days, if any, in the period beginning on the date on

which a request for continued examination of the application under 35 U.S.C. 132(b) was filed [or] (ii) any time consumed by a proceeding under section 135(a), any time consumed by the imposition of an order under section 181, or any time consumed by appellate review by the
Board of Patent Appeals and Interferences or by a Federal court and ending on the date the
patent was issued." That is, the PTO does not award PTA under 35 U.S.C. 154(b)(1)(B) for

any time after a Request for Continued Examination ("RCE") is filed.

16. During prosecution of the application that issued as the '659 patent, Mr.

Mohsenzadeh filed a first RCE on August 28, 2009. When calculating PTA for the '659 patent, the PTO relied on its interpretation of 35 U.S.C. 154(b)(1)(B) and did not award any PTA under this provision of the statute for the days following the filing of the RCE until the patent
issued (e.g., from August 28,2009 to January 1,2013, totaling 1,223 days). This was an error

because an RCE filed after the three year period has passed has no effect on PTA.
17. Under 35 U.S.C. 154(b)(4)(A), "[a]n applicant dissatisfied with a determination

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

Director filed in the United States District Court for the Eastern District of Virginia within 180
days after the grant of the patent. Chapter 7 of Title 5 shall apply to such action." The revisions

of the PTA statute that changed the time for filing a civil action as 180 days after the receipt of a
decision on reconsideration from the PTO apply only to patents issued on or after January 14,

2013. See Leahy-Smith America Invents Technical Corrections, Public Law 112-274 (Jan. 14, 2013). Because the '659 patent issued before January 14, 2013, this action is timely and
properly filed within 180 days of the date the '659 patent's January 1,2013 issue date.
COUNT 1: U.S. PATENT NO. 8,346,659

18.

Plaintiff incorporates by reference the allegations in paragraphs 1-17 above, as if

fully set forth herein. 19. The PTO determined that the patent term adjustment for the '659 patent is 1,560

days, calculated as follows: 1,421 days of "A-Delay," plus 1,278 days of "B-Delay," less 750
days of overlapping delay, less 389 days of applicant delay. 20. This determination is erroneous because it improperly limits the PTA under 35

U.S.C. 154(b)(1)(B) awarded to the '659 patent to the period beginning three years from the
filing date and ending one day prior to the August 28, 2009 RCE date. Under this erroneous

interpretation, the PTO awarded the '659 patent 1,278 days of B delay. The PTO's
determination fails to include within the PTA, as required by 35 U.S.C. 154(b)(1)(B), the

1,223-day period of time from Plaintiffs first RCE filing date to the issue date.

21.

The RCEs filed on August 28,2009, December 2, 2010, and August 23,2011

during prosecution of the application that issued as the '659 patent were filed after the three year
deadline had passed. Thus, these RCEs should have had no impact on PTA, and PTA awarded

under 35 U.S.C. 154(b)(1)(B) should have continued to run from three years from the February

26, 2003 date of the application that issued as the '659 patent to the January 1,2013 issue date.
22. According to 35 U.S.C. 154(b), the 1223-day period from the date of filing the

RCEs to the patent issue date should have no impact on the patent term adjustment for the '659
patent. The correct PTA for the '659 patent is thus 2,783 days, which is calculated as follows:

1,421 days of "A-Delay," plus 2,501 days of "B-Delay," less 750 days of overlapping delay, less
389 days of applicant delay.

WHEREFORE, Plaintiff respectfully prays that this Court:

A. Issue an Order changing the period of PTA for the '659 patent term from 1,560

days to no less than 2,783 days and requiring Defendant to alter the term of the '659 patent to
reflect the at least 2,783 days of actual PTA due the '659 patent.

B.

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

including additional patent term for the '659 patent if further errors are identified and found in

the PTO's PTA calculation, and any such other and further relief as may be deemed just and
equitable by this Court.

Dated:

June 28.2013

Respectfully submitted,

Michael A. Oakes (VA Bar No. 47245)

moakes @ hunton.com HUNTON & WILLIAMS LLP

2200 Pennsylvania Avenue, NW Washington, DC 20037 Telephone: (202) 419-2172 Facsimile: (202) 778-7459 Attorneysfor PlaintiffHossein Mohsenzadeh

Of Counsel: JeffB. Vockrodt

jvockrodt @hunton.com
HUNTON & WILLIAMS LLP

2200 Pennsylvania Avenue, NW Washington, DC 20037 Telephone: (202)419-2021 Facsimile: (202)778-2021