UNITED STATES DISTRICT COURTEASTERN DISTRICT OF WISCONSINDennis L. Schmirler,Plaintiff, Case No. 10-C-144v.Hon. David J. Kappos,In his official capacity asSecretary of Commerce forIntellectual Property and Director of theUnited States Patent and Trademark Office,Defendant.DEFENDANT’S MEMORANDUM OF LAW IN OPPOSITION TOPLAINTIFF’S MOTION FOR SUMMARY JUDGMENT AND INSUPPORT OF DEFENDANT’S CROSS-MOTION FOR SUMMARY JUDGMENTDefendant David Kappos, Under Secretary of Commerce for Intellectual Property andDirector of the United States Patent and Trademark Office (“Director”), by his undersignedcounsel, respectfully submits this memorandum in opposition to plaintiff Dennis L. Schmirler’s(“Mr. Schmirler”) motion for summary judgment, and in support of the Defendant’s cross-motion for summary judgment.
SUMMARY OF THE ARGUMENT
In this patent case, three inventors, one of whom is Dennis Schmirler, successfullyrevived an abandoned patent application by affirming that the abandonment had been“unintentional.” The U.S. Patent and Trademark Office (“USPTO”) accepted thatrepresentation, and the application proceeded to issuance. But when Mr. Schmirler’s co-inventor, Dr. Edward Portman, requested and received a refund of the patent issue fee through
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2American Express, this (1) left the statutorily-required issue fee unpaid, and (2) raised asubstantial question as to whether the applicants’ previous averment of unintentionalabandonment of the patent was accurate. The USPTO notified the inventors, through theirattorney of record, of these problems and gave them an opportunity to respond. Seven monthsafter sending the notice, and after receiving confirmation from counsel that no response wasforthcoming, the USPTO vacated the patent.The final USPTO decision now under review is its decision denying Mr. Schmirler’srequest to proceed unilaterally in the patent application, without the support of his co-owners.Based on a straightforward application of USPTO rules, the USPTO determined that Mr.Schmirler had not shown sufficient cause and/or an extraordinary situation, as needed for theUSPTO to waive its requirement that all co-inventors and/or co-owners of a patent applicationproceed with one voice before the USPTO. This rule is necessary to avoid embroiling theUSPTO in disputes between inventors, disputes that the USPTO does not have the ability orresources to resolve. The USPTO’s interpretation and application of its own rules was notarbitrary or capricious, and is entitled to significant deference.Even if Mr. Schmirler is a “patentee,” as he contends, the result is no different. Thealleged patent lapsed when the applicants failed to respond to the USPTO’s notice that the patentwould be vacated. To revive the lapsed patent, Mr. Schmirler must follow appropriateadministrative procedures for doing so. As set forth in the final decision in this case, and in theManual of Patent Examining Procedure, the USPTO interprets its rules to require that allpatentees act with a single voice before the Office, for the same reason that applicants arerequired to do so. This interpretation of the USPTO’s procedural rules is entitled to controllingweight, and is by no means arbitrary or capricious.
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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.
1
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.
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