3Mr. Schmirler also purports to challenge the USPTO’s decision to vacate theerroneously-issued patent, yet that challenge seeks to bypass USPTO procedures and asks thisCourt for relief that it cannot grant. Because the patent was erroneously issued in the first place,there is nothing to reinstate. On the other hand, if Mr. Schmirler’s argument is that the USPTO’saction withdrawing the patent in 2004 had no force and effect, then the patent has surely lapsedfor failure to pay maintenance fees that came due in 2004 and 2008. Either way, the question of whether the patent can be revived must be addressed in the first instance by the USPTO. Sincerevival is a matter of USPTO procedure, and the inventors have not exhausted their remediesbefore the USPTO as to revival, this Court is in no position to rule on whether the patent shouldbe reinstated at this juncture.1. On May 22, 1996, Co-inventors Dennis Schmirler, Edward Portman, and MichaelChristensen filed U.S. Application No. 08/652, 280 (“the ’280 application”), entitled“Compositions, Methods and Devices for the Transdermal Delivery of Drugs.” A1-85.
STATEMENT OF UNDISPUTED FACTS
2. On April 21, 1999, the attorneys who had been prosecuting the patent applicationwithdrew from representation, citing their client’s non-payment of $16,880.34 in legal fees.A139-48. The withdrawal letter identified the client as Diversified Pharmaceuticals, Inc.(“DPI”), and referred to an assignment of co-inventors Portman and Christensen to DPI. A143.The letter indicated that the prosecution file was being shipped to Dr. Portman, and that Mr.Schmirler had been informed of the shipment. A145.
In this brief, the letter “A” followed by a number refers to a page of the CertifiedAdministrative Record, previously filed with the Court as Document 10. As a review of anagency decision under the Administrative Procedure Act, separate findings of fact are notrequired under Civ. L.R. 56.
Case 2:10-cv-00144-LA Filed 05/10/11 Page 3 of 25 Document 19