Chudik v. Hirshfeld ( 2021 )

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United States Court of Appeals
for the Federal Circuit
______________________
STEVEN C. CHUDIK,
Plaintiff-Appellant
v.
ANDREW HIRSHFELD, PERFORMING THE
FUNCTIONS AND DUTIES OF THE UNDER
SECRETARY OF COMMERCE FOR
INTELLECTUAL PROPERTY AND DIRECTOR OF
THE UNITED STATES PATENT AND TRADEMARK
OFFICE,
Defendant-Appellee
______________________
2020-1833
______________________
Appeal from the United States District Court for the
Eastern District of Virginia in No. 1:19-cv-01163-AJT-JFA,
Judge Anthony J. Trenga.
______________________
Decided: February 8, 2021
______________________
ERIC RYAN WALTMIRE, Erickson Law Group, PC,
Wheaton, IL, argued for plaintiff-appellant.
CATHERINE YANG, Office of the United States Attorney
for the Eastern District of Virginia, United States Depart-
ment of Justice, Alexandria, VA, argued for defendant-ap-
pellee. Also represented by G. ZACHARY TERWILLIGER;
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2 CHUDIK v. HIRSHFELD
KAKOLI CAPRIHAN, DANIEL KAZHDAN, THOMAS W. KRAUSE,
BRIAN RACILLA, FARHEENA YASMEEN RASHEED, Office of the
Solicitor, United States Patent and Trademark Office, Al-
exandria, VA.
______________________
Before TARANTO, BRYSON, and HUGHES, Circuit Judges.
TARANTO, Circuit Judge.
Dr. Steven Chudik applied to the Patent and Trade-
mark Office (PTO) for a patent on his “Guide for Shoulder
Surgery” on September 29, 2006. When the assigned PTO
examiner issued a second rejection of all then-pending
claims as unpatentable in 2010, Dr. Chudik took a step
that would turn out to have consequences for the patent
term adjustment awarded under 35 U.S.C. § 154(b) when
his application ultimately issued as a patent. Rather than
immediately taking an appeal to the Patent Trial and Ap-
peal Board under 35 U.S.C. § 134(a), Dr. Chudik requested
a continued examination under 35 U.S.C. § 132(b). In
2014, the examiner again rejected his claims, and Dr.
Chudik then appealed to the Board. But instead of filing
an answer, the examiner reopened prosecution, only to re-
ject the claims as unpatentable on a different ground, in
early 2015. That 2014–2015 process—notice of appeal
filed, prosecution reopened before answer, new rejection on
a new ground—occurred again in 2015. It occurred once
more in 2016. Finally, in 2017, while Dr. Chudik’s fourth
notice of appeal from an examiner rejection was pending,
the examiner issued yet another new rejection, but this one
led, in 2018, to a notice of allowance after Dr. Chudik al-
tered some of his claims. Dr. Chudik’s U.S. Patent No.
9,968,459 issued on May 15, 2018, eleven and a half years
after the application was filed.
The PTO ultimately awarded Dr. Chudik a patent term
adjustment of 2,066 days under 35 U.S.C. § 154(b), but it
rejected Dr. Chudik’s argument that he was entitled to an
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CHUDIK v. HIRSHFELD 3
additional 655 days, under 35 U.S.C. § 154(b)(1)(C)(iii) (C-
delay), for the time his four notices of appeal were pending
in the PTO. The C-delay provision covers delay due to “ap-
pellate review by the Patent Trial and Appeal Board or by
a Federal court in a case in which the patent was issued
under a decision in the review reversing an adverse deter-
mination of patentability.” 35 U.S.C. § 154(b)(1)(C)(iii).
The PTO concluded that the provision does not apply here
because, in light of the examiner’s reopening of prosecu-
tion, (1) the Board’s jurisdiction over the appeals never at-
tached and (2) there was no Board (or reviewing court)
reversal. The United States District Court for the Eastern
District of Virginia affirmed the PTO’s decision. Chudik v.
Iancu, No. 1:19-cv-01163 (E.D. Va. March 25, 2020), ECF
No. 33.
We now affirm. The statutory language regarding C-
delay for “appellate review” requires a “decision in the re-
view reversing an adverse determination of patentability.”
35 U.S.C. § 154(b)(1)(C)(iii). That language, we conclude,
is reasonably interpreted—indeed, is best interpreted—to
require a reversal decision made by the Board or a review-
ing court, thus excluding time spent on a path pursuing
such a decision when, because of an examiner reopening of
prosecution, no such decision is ever issued.
I
A
In 1994, Congress changed the length of a patent term
from 17 years (measured from the patent’s issue date) to 20
years (measured from the patent’s earliest effective non-
provisional-filing date). See Mayo Found. for Med. Educ.
& Research v. Iancu, 938 F.3d 1343, 1345 (Fed. Cir. 2019).
Because time spent in the PTO could now eat up part of the
patent term, Congress also provided a list of specific situa-
tions in which the patent owner could seek an adjustment
of the patent’s term to offset delays in the PTO. Id.; see
Uruguay Round Agreements Act, Pub. L. No. 103-465,
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4 CHUDIK v. HIRSHFELD
§ 532, 108 Stat. 4809, 4983–85_(1994); 35 U.S.C. § 154(b)
(1994 ed.). In 1999, Congress supplemented and modified
the list and gave the provision its current structure. See
American Inventors Protection Act of 1999, Pub. L. No.
106-113, § 4402, 113 Stat. 1501, 1501A-557 to -559 (codi-
fied at 35 U.S.C. § 154(b)).
The statute sets forth three broad categories of delay
for which a patent may receive a patent term adjustment.
See 35 U.S.C. § 154(b)(1)(A)–(C). First, patent owners may
seek an adjustment where the PTO fails to meet certain
prescribed deadlines for its actions during prosecution (A-
delay). Id. § 154(b)(1)(A). Next, adjustment is generally
authorized for each day that the patent application’s pen-
dency extends beyond three years (B-delay), subject to cer-
tain exclusions, such as—critically for Dr. Chudik—for
“time consumed by continued examination of the applica-
tion requested by the applicant under section 132(b).” Id.
§ 154(b)(1)(B). Finally, patent owners may seek an adjust-
ment for “delays due to derivation proceedings, secrecy or-
ders, and appeals,” including “appellate review by the
[Board] . . . in a case in which the patent was issued under
a decision in the review reversing an adverse determina-
tion of patentability” (C-delay). Id. § 154(b)(1)(C). In the
case of a C-delay, “the term of the patent shall be extended
1 day for each day of the pendency of the proceeding, order,
or review.” Id. 1
1 The 1994 statute contained a provision for adjust-
ment based on appellate review that required “a decision
in the review reversing an adverse determination of pa-
tentability” but differed in certain other ways from the
1999 provision. 35 U.S.C. § 154(b)(2) (1994 ed.). The 1994
provision and the PTO’s 1995 implementing regulations,
see Changes To Implement 20-Year Patent Term and Pro-
visional Applications, 60 Fed. Reg. 20,195, 20,196, 20,219,
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CHUDIK v. HIRSHFELD 5
The statute states that the Director of the PTO “shall
prescribe regulations establishing procedures for the appli-
cation for and determination of patent term adjustments.”
35 U.S.C. § 154(b)(3)(A); see Wyeth v. Kappos, 591 F.3d
1364, 1367 (Fed. Cir. 2010) (emphasizing the word “proce-
dures” in the statutory provision). Two of those regulations
are at issue in the present case: 37 C.F.R. §§ 1.702, 1.703.
Section 1.702(e) pertains to “[d]elays caused by successful
appellate review” and provides:
[T]he term of an original patent shall be adjusted if
the issuance of the patent was delayed due to re-
view by the Patent Trial and Appeal Board under
35 U.S.C. 134 or by a Federal court under 35 U.S.C.
141 or 145, if the patent was issued under a deci-
sion in the review reversing an adverse determina-
tion of patentability.
37 C.F.R. § 1.702(e). In promulgating the regulation, the
PTO explained that the condition that the patent be “‘is-
sued under a decision in the review reversing an adverse
determination of patentability’ . . . requires a [Board] or
Federal court decision in the review that reverses all of the
rejections of at least one claim.” Changes To Implement
Patent Term Adjustment Under Twenty-Year Patent
Term, 65 Fed. Reg. 56,366, 56,370 (Sept. 18, 2000).
Section 1.703(e), the other regulation primarily at is-
sue here, explains how to calculate C-delay. See 37 C.F.R.
§ 1.703(e). In its current form, adopted in 2012 and appli-
cable to this case, § 1.703(e) states:
The period of adjustment under § 1.702(e) is the
sum of the number of days, if any, in the period be-
ginning on the date on which jurisdiction passes to
the [Board] under § 41.35(a) of this chapter and
20,228 (Apr. 25, 1995), do not materially aid in the analysis
of the issue we decide.
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6 CHUDIK v. HIRSHFELD
ending on the date of a final decision in favor of the
applicant by the [Board] . . . .
Id. Under 37 C.F.R. § 41.35(a), jurisdiction passes to the
Board in an applicant’s appeal, not when the applicant files
a notice of appeal or brief, and not when the examiner files
an answer, but only when the applicant files a reply brief
or the time for filing a reply has expired, whichever is ear-
lier.
Before 2012, § 1.703(e) provided that the adjustment
period for C-delay began “on the date on which a notice of
appeal to the [Board] was filed.” See 65 Fed. Reg. 56,366,
56,369–70. When the PTO revised the regulation in 2012,
it specifically stated that an applicant “is not entitled to
patent term adjustment for the reopening of prosecution”
by a patent examiner under the regulations for C-delay;
but it also explained that “under certain circumstances, the
reopening of prosecution by the examiner may lead to ad-
ditional patent term adjustment” under the provisions for
B-delay (generally covering, with exceptions, prosecution
time beyond three years). Revision of Patent Term Adjust-
ment Provisions Relating to Appellate Review, 77 Fed. Reg.
49,354, 49,357, Resp. to Cmt. 11 (Aug. 16, 2012). The PTO
also explained that it was making the revision to align the
regulations on patent term adjustment with recently
adopted general rules of practice before the Board provid-
ing that jurisdiction passes to the Board only when an ap-
plicant’s reply brief is filed or due (whichever dates comes
first). See id. at 49,354–55; see also Rules of Practice Before
the Board of Patent Appeals and Interferences in Ex Parte
Appeals, 76 Fed. Reg. 72,270, 72,273 (Nov. 22, 2011).
B
1
On September 29, 2006, Dr. Chudik filed U.S. Patent
Application No. 11/529,197, entitled “Guide for Shoulder
Surgery.” J.A. 107. On December 23, 2009, the examiner
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CHUDIK v. HIRSHFELD 7
issued a non-final rejection, and on August 18, 2010, the
examiner issued a final office action rejecting all pending
claims as unpatentable. J.A. 269–70. It is not disputed
before us that Dr. Chudik, whose claims had been “twice
rejected,” could have appealed the final rejection to the
Board. 35 U.S.C. § 134(a). Instead of pursuing that path,
however, on January 21, 2011, he sought further engage-
ment with the examiner by filing a Request for Continued
Examination under 35 U.S.C. § 132(b). J.A. 303.
Almost three years later, the examiner issued a non-
final rejection, followed by a final rejection on September
9, 2014, which relied on prior art different from the art in-
voked in the 2010 rejection. J.A. 372–73. At that point,
Dr. Chudik filed a notice of appeal to the Board, followed
one month later by an opening brief. J.A. 382–83. The pa-
tent examiner elected not to file an answer to the appeal.
Instead, as permitted by 37 C.F.R. § 41.39(b)(1), the exam-
iner reopened prosecution and issued another rejection, in
April 2015, on a ground different from the one stated in the
2014 rejection. J.A. 414–16.
Dr. Chudik filed a second notice of appeal, followed by
a second opening brief. J.A. 424–26. The examiner re-
sponded by again reopening prosecution and again reject-
ing the claims on new grounds in November 2015. J.A.
459–61. Dr. Chudik filed a third notice of appeal and open-
ing brief, leading to a reopening and a new rejection, fol-
lowed by a fourth notice of appeal and opening brief. See
J.A. 473, 2 477, 484, 492, 526–27, 540, 546. In December
2017, while the fourth notice of appeal was pending, the
examiner withdrew some rejections; and after some claim
alterations, the examiner issued a notice of allowance on
2 In May 2016, the PTO notified Dr. Chudik that his
third notice of appeal was deficient and gave him a month
to refile it correctly, which he did.
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8 CHUDIK v. HIRSHFELD
March 14, 2018. The application issued as U.S. Patent No.
9,968,459 on May 15, 2018. J.A. 107. In accordance with
35 U.S.C. § 154(b), after calculating the term extension to
account for A-delay and B-delay (excluding delays attribut-
able to Dr. Chudik), the PTO added to the title page of the
’459 patent a statement that the term of the patent had
been extended by 1,967 days. J.A. 632.
2
On July 13, 2018, Dr. Chudik filed a petition with the
PTO arguing that 754 days should be added to the patent
term (for 2,721 days total) to account for the time his four
appeals had been pending before the Board. J.A. 633. He
contended that the identified time qualified as C-delay. He
did not challenge the PTO’s findings about the proper
amount of A-delay, B-delay, overlapping delay, and appli-
cant delay. J.A. 634; see also J.A. 652.
The PTO rejected the argument for C-delay, but added
132 days on unrelated grounds, resulting in a new patent
term adjustment of 2,099 days. J.A. 652–56. Regarding C-
delay, the PTO reasoned that the time at issue did not qual-
ify as C-delay because there was no Board decision or court
decision “reversing an adverse determination of patentabil-
ity.” J.A. 653–54. It also determined that the Board never
had jurisdiction over Dr. Chudik’s four appeals because the
appeals ended before Board jurisdiction attached under the
reply-brief rule. Id.; see 37 C.F.R. §§ 1.703(b)(4), 41.35(a).
Without jurisdiction, the PTO continued, there could be “no
successful appellate review within the meaning of 37
C.F.R. 1.702 & 1.703, and, consequently, no entitlement to
a period of adjustment for C delay.” J.A. 654. The PTO
added that, in promulgating the 2012 rules, it had ex-
plained that applicants were “‘not entitled to patent term
adjustment for the reopening of prosecution’” under
§ 154(b)(1)(C)(iii). J.A. 654–55 (quoting 77 Fed. Reg. at
49,357 (Resp. to Cmt. 11)).
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CHUDIK v. HIRSHFELD 9
Dr. Chudik twice asked the PTO to reconsider its con-
clusion, but the PTO twice reaffirmed its position. J.A.
682–90; J.A. 723–32. In the course of reconsidering the
matter, the PTO made a final change in the awarded ad-
justment, reducing it (on grounds unrelated to the C-delay
issue) from 2,099 days to 2,066 days. J.A. 690. The PTO
included that number in the patent through a certificate of
correction. J.A. 143.
3
On September 6, 2019, Dr. Chudik filed a complaint
against the PTO’s Director in the United States District
Court for the Eastern District of Virginia under 35 U.S.C.
§ 154(b)(4)(A), alleging that he was entitled to 655 addi-
tional days of C-delay for the ’459 patent. J.A. 55. The
parties filed cross-motions for summary judgment. Dr.
Chudik argued that C-delay applies in situations of “appel-
late review,” which, he urged, refers to the entire process
for review by the Board, beginning when a notice of appeal
is filed (and not only at the later time when the Board re-
ceives jurisdiction). Chudik, No. 1:19-cv-01163, ECF No.
33 at 8. Dr. Chudik also argued that the statutory lan-
guage, “a decision in the review reversing an adverse de-
termination of patentability,” covers an examiner’s own
decision, through a reopening of prosecution, to undo her
final action that is the subject of a notice of appeal. Id.The district court rejected Dr. Chudik’s challenge. The
court concluded that, although Dr. Chudik’s position was
“based on a reasonable construction of the statutory text,”
id. at 9, that was not enough for him to prevail. The court
concluded that the statutory language is ambiguous, id. at
11, and that under Chevron U.S.A. Inc. v. Natural Re-
sources Defense Council, Inc., 467 U.S. 837 (1984), the
PTO’s position must be affirmed because that position,
adopted through regulation, itself is reasonable. Chudik,
No. 1:19-cv-01163, ECF No. 33 at 9–11. The court
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10 CHUDIK v. HIRSHFELD
explained that (1) “appellate review by the [Board]” could
“reasonably be understood to refer to the actual process of
substantive review by the [Board] rather than the period
initiated procedurally as part of an administrative se-
quence” and (2) “a decision in the review” reasonably can
refer to an actual Board (or court) decision, not an exam-
iner reopening. Id. at 11–12.
The district court entered final judgment against Dr.
Chudik on March 25, 2020. Dr. Chudik timely appealed.
We have jurisdiction under 28 U.S.C. § 1295(a)(1) and
§ 1295(a)(4)(C).
II
We review the district court’s decision on summary
judgment de novo. See Supernus Pharms., Inc. v. Iancu,
913 F.3d 1351, 1356 (Fed. Cir. 2019) (applying Fourth Cir-
cuit law). “Patent term adjustment decisions of the [PTO]
are reviewed in accordance with the Administrative Proce-
dure Act.” Id.; 35 U.S.C. § 154(b)(4)(A) (providing for re-
view under 5 U.S.C. §§ 701–706). The APA requires that
courts “set aside agency action, findings, and conclusions”
if they are “arbitrary, capricious, an abuse of discretion, or
otherwise not in accordance with law,” or if they are “in ex-
cess of statutory jurisdiction, authority, or limitations.” 5
U.S.C. § 706(2)(A), (C).
Where an agency interpretation of a statute is subject
to the framework of Chevron, we follow an unambiguous
meaning on the point at issue if we identify such a meaning
in the statute using “traditional tools of statutory construc-
tion,” and we defer to a “reasonable” agency interpretation
if the statute is ambiguous on the point at issue. Chevron,
467 U.S. at 842–44, 843 n.9; see also Encino Motorcars,
LLC v. Navarro, 136 S. Ct. 2117, 2124–25 (2016). We have
applied that framework to PTO positions based on certain
regulations adopted under 35 U.S.C. § 154(b)(3)(A). See,
e.g., Intra-Cellular Therapies v. Iancu, 938 F.3d 1371,
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CHUDIK v. HIRSHFELD 11
1379–84 (Fed. Cir. 2019); Supernus, 913 F.3d at 1356–61;
Gilead Sciences, Inc. v. Lee, 778 F.3d 1341, 1346–51 (Fed.
Cir. 2015); cf. Wyeth, 591 F.3d at 1367, 1372 (emphasizing
the word “procedures” in the statutory provision and find-
ing no deference warranted under Chevron because the
statute unambiguously resolved the issue). Where the
Chevron framework is inapplicable, we determine the “best
interpretation” of the statute for ourselves, Rimini Street,
Inc. v. Oracle USA, Inc., 139 S. Ct. 873, 880 (2019); Exxon
Mobil Corp. v. Allapattah Servs., Inc., 545 U.S. 546, 567
(2005), while giving the agency’s position such weight as
warranted under Skidmore v. Swift & Co., 323 U.S. 134,
139–40 (1944). See Encino, 138 S. Ct. at 1142; Nat’l Cable
& Telecomms. Ass’n v. Brand X Internet Servs., 545 U.S.
967, 982–83 (2005); United States v. Mead Corp., 533 U.S.
218, 227, 234–35 (2001); Mead Corp. v. United States, 283
F.3d 1342, 1345–46 (Fed. Cir. 2002). In this case, the
choice of framework makes no difference to the result, be-
cause we conclude that the best interpretation of the “deci-
sion . . . reversing” language, even without Skidmore
deference, is the one the PTO adopted, which means that
the position must be given effect to deny Dr. Chudik the
requested C-delay.
Section 154(b)(1)(C)(iii) provides, in relevant part, that
applicants are entitled to C-delay where the delay is due to
appellate review by the Patent Trial and Appeal
Board or by a Federal court in a case in which the
patent was issued under a decision in the review
reversing an adverse determination of patentabil-
ity.
35 U.S.C. § 154(b)(1)(C)(iii). The statute’s words, in their
most natural meaning when applied to an examiner’s un-
patentability ruling, require that the patent issue under a
Board decision that reversed the examiner’s unpatentabil-
ity ruling or under a court decision that reversed a Board
unpatentability ruling in the matter. Dr. Chudik’s
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12 CHUDIK v. HIRSHFELD
interpretation—that the provision also covers an exam-
iner’s reopening that withdraws a rejection—is, if not lin-
guistically impossible, strained.
It is not unheard of to say that a tribunal “reversed it-
self” when speaking about the tribunal having changed a
position it formerly took. See, e.g., City of Cuyahoga Falls,
Ohio v. Buckeye Community Hope Found., 538 U.S. 188,
193 (2003). But in the context of “appellate review” of a
particular reviewable ruling, the term “reverse” is typically
reserved for action taken by the appellate reviewer to undo
the ruling being reviewed. “Appellate review” itself com-
monly means what a distinct reviewing authority does, not
a reconsideration of one’s own decision. Review (Appellate
Review), Black’s Law Dictionary (8th ed. 2004) (“Examina-
tion of a lower court’s decision by a higher court, which can
affirm, reverse, or modify the decision.”); see also Review
(Appellate Review), Black’s Law Dictionary (7th ed. 1999)
(same). And in an appellate review, the normal meaning
of “reverse” is an action by the reviewer with respect to the
decision being reviewed. See Reverse, Black’s Law Diction-
ary (8th ed. 2004) (“[t]o overturn (a judgment) on appeal”);
see also Reverse, Black’s Law Dictionary (6th ed. 1990)
(“[t]o overthrow, vacate, set aside, make void, annul, re-
peal, or revoke; as, to reverse a judgment, sentence or de-
cree of a lower court by an appellate court”). This ordinary
meaning does not include the examiner’s repeated reopen-
ing in this case to withdraw her own decision.
The Patent Act supports this ordinary-usage distinc-
tion. It provides that “[t]he Patent Trial and Appeal Board
shall . . . on written appeal of an applicant, review adverse
determinations of examiners.” 35 U.S.C. § 6(b)(1) (empha-
sis added). We too have recognized the distinction. See
Hyatt v. U.S. Patent & Trademark Office, 904 F.3d 1361,
1375 (Fed. Cir. 2018) (“The [Board]’s rules allow applicants
to seek review of examiners’ final rejections before a higher
authority, the [Board]. . . . Allowing examiners to reopen
prosecution does not deprive applicants of their right to
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CHUDIK v. HIRSHFELD 13
appeal final examiner rejections because reopening prose-
cution cannot circumvent [Board] review.” (emphases
added)). And our ordinary use of “reverse” in this context
refers to decisions by the Board. See, e.g., Hologic, Inc. v.
Smith & Nephew, Inc., 884 F.3d 1357, 1361 (Fed. Cir. 2018)
(“[T]he Board reversed the examiner’s rejections of the ’359
patent’s claims.”).
This meaning is the best understanding of the C-delay
provision in particular. The statutory language speaks of
“appellate review by” the Board or a court. In light of that
language, the subsequent reference to a “decision in the re-
view” is most naturally understood to refer to a decision by
the appellate tribunal, i.e., the Board or a court, not, e.g.,
an examiner’s “decision” to reopen prosecution made dur-
ing the review (whether the review is deemed to start when
the notice of appeal is filed or later). This understanding
is bolstered by the language specifying that what the deci-
sion must be is a “revers[al].” Considering the language as
an integrated whole, we conclude that the provision is most
fairly read to require a Board or court decision reversing
an adverse ruling (e.g., by the Board of the examiner or by
a court of the Board). 3
That this is the most natural reading of the provision
is reinforced by its adoption by the PTO shortly after en-
actment of the 1999 amendments to the statute. In 2000,
when promulgating 37 C.F.R. § 1.702(e), the PTO ex-
plained that “decision in the review reversing an adverse
determination of patentability,” 35 U.S.C. § 154(b)(1)(C),
requires “a [Board] or Federal court decision . . . that re-
verses all of the rejections of at least one claim.” 65 Fed.
Reg. at 56,370. Although the PTO later considered depart-
ing from that view, and might even have departed from it
3 We do not consider what Board or court decisions
might fairly come under the “reversing” language, as there
was no Board (or court) decision at all in this case.
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14 CHUDIK v. HIRSHFELD
in practice, see 77 Fed. Reg. at 49,354–55; Revision of Pa-
tent Term Extension and Adjustment Provisions Relating
to Appellate Review and Information Disclosure State-
ments, 76 Fed. Reg. 18,990, 18,991–92 (proposed Apr. 6,
2011), the PTO in 2012 decided not to change its 2000 in-
terpretation of the “decision” language of the C-delay pro-
vision, 77 Fed. Reg. at 49,358 (Resp. to Cmt. 15); see also
id. at 49,357 (Resp. to Cmt. 11) (“The applicant is not enti-
tled to [C-delay] patent term adjustment for the reopening
of prosecution of the application per se.”). We reiterate that
we do not decide here whether the C-delay statutory provi-
sion unambiguously forbids the PTO to adopt a position dif-
ferent from its current one, only what the best
interpretation of the statutory provision is as applied to Dr.
Chudik’s situation.
Our conclusion requires affirmance of the district
court’s upholding of the PTO’s denial to Dr. Chudik of the
requested C-delay. We do not address the PTO’s other
ground for its denial—concerning when jurisdiction over an
appeal to the Board attaches. But we add one point rele-
vant to some scenarios involving examiners reopening
prosecution after a notice of appeal has been filed.
When adopting its 2012 regulations, the PTO ex-
plained that the limitations on C-delay adjustments—the
interpretation of “appellate review” not to start until Board
jurisdiction attaches, and the requirement of a Board deci-
sion—may be offset by an increased availability of B-delay
adjustments for time that exceeds three years of prosecu-
tion if an examiner’s reopening occurs before Board juris-
diction attaches: “[T]he patent term adjustment awarded
pursuant to the ‘B’ delay may increase when the examiner
reopens prosecution after a notice of appeal is filed.” 77
Fed. Reg. at 49,355. In this case, however, as the parties
agreed (Oral Arg. 3:00–3:35, 13:00–13:28), no such B-delay
increase occurred because Dr. Chudik, rather than appeal-
ing to the Board after his 2010 final rejection, sought
Case: 20-1833 Document: 31 Page: 15 Filed: 02/08/2021
CHUDIK v. HIRSHFELD 15
continued examination, triggering a statutory exclusion
from the time counted for a B-delay adjustment. See 35
U.S.C. § 154(b)(1)(B)(i) (excluding “any time consumed by
continued examination of the application requested by the
applicant under [35 U.S.C. § 132(b)]”). The unavailability
of B-delay for nearly two years (655 days) of delay in the
PTO illustrates what applicants should understand when
deciding whether to request a continued examination ra-
ther than take an immediate appeal. The potential benefit
of immediate re-engagement with the examiner through
such continued examination comes with a potential cost.
III
For the foregoing reasons, the judgment of the District
Court for the Eastern District of Virginia is affirmed.
AFFIRMED