Howard Florey Institute v. Dudas, 87 U.S.P.Q.2d 1913 (E.D. Va. 2008), Court Opinion
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`Pagination
`* U.S.P.Q.2d
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`United States District Court, E. D. Virginia, Alexandria Division.
`
`HOWARD FLOREY INSTITUTE, et al., Plaintiffs, v. JONATHAN W. DUDAS, Defendant.
`
`Civil Action No.: 1 :07cv778 (LO/TRJ).
`July 7, 2008
`
`MEMORANDUM OPINIONr1914]_
`
`LIAM O'GRADY, District Judge
`
`Before the Court are Cross Motions for Summary Judgment with supporting Memoranda (Dkt. nos. 37-38, 41-43), the
`Oppositions (Dkt. nos. 47, 48), the Replies (Dkt. nos. 49, 50) and Supplemental Memoranda requested by the Court
`(Dkt. nos. 53, 54). Plaintiffs Howard Florey Institute, eta/., brought this action against Jonathan W. Dudas in his
`capacity as Under Secretary of Commerce and Director of the United States Patent and Trademark Office seeking
`judicial review of a final agency action pursuant to the Administrative Procedure Act, 5 U.S.C. §§ 701 et seq. Plaintiffs
`claim that the actions taken by the United States Patent and Trademark Office in denying their Petitions seeking a
`waiver of 37 C.F.R. § 1.10 pursuant to 37 C.F.R. § 1.183 was arbitrary, capricious, an abuse of discretion and
`otherwise not in accordance with law and should be set aside under 5 U.S.C. § 706(2)(A). Upon careful consideration
`of the parties' briefs and oral argument, and for the reasons stated in this Memorandum Opinion, the Court reluctantly
`finds that the decision of the United States Patent and Trademark Office must be affirmed and that the defendant is
`entitled to summary judgment in his favor.
`
`I. Factual Background
`
`The material facts underlying this Administrative Procedure Act dispute are contained in the Administrative
`Record that was filed with the Court (Dkt. no. 7) and are undisputed.[fn1] Plaintiffs are the Howard Florey Institute,
`Baker Medical Research Institute, Chrishan Samuel, Ross Bathgate, Geoffrey Tregear, and Xiao-Jun Du (collectively
`"HFI"). (Complaint mf 2-7). Defendant is Jonathan W. Dudas, named in his official capacity as the Under Secretary of
`Commerce and Director of the United States Patent and Trademark Office ("USPTO"). (Complaint~ 8).
`
`After business hours on May 19, 2005, an attorney at the law firm of Townsend and Townsend and Crew LLP ("the
`Firm") received an e-mail from HFI's Australian counsel with instructions to file the patent application r1915] that was
`attached to the e-mail on Friday, May 20, 2005. (AR 70, 79-80). On the morning of May 20, 2005, the attorney at the
`Firm acknowledged receipt of HFI's e-mail. (AR 70, 77-78). In accordance with HFI's instructions, the application was
`prepared following the Firm's standard procedures and dispatched by courier on the same day to the U.S. Post Office
`for Express Mail delivery to the USPTO. (AR 70, 83-86).
`
`On May 20, 2005, the Firm's courier, Mr. R, [fn2] left the Firm's Walnut Creek office at 5:55 p.m. with the patent
`application sealed in an Express Mail envelope. (AR 72, 205-6). Mr. R walked the two blocks from the Firm's office to
`board a Bay Area Rapid Transit ("BART") train at the Walnut Creek BART station to head to the MacArthur BART
`station in Oakland, California, which is the closest BART stop to the Main Post Office in West Oakland (AR 154,
`205-6). On the day in question, Mr. R's job responsibilities included delivering patent applications to the U.S. [**2] Post
`Office and depositing them for Express Mail delivery to the USPTO. (AR 205). This branch of the Post Office was
`open until midnight on that day, and this fact was known by Mr. R. (AR 154).
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`Howard Florey Institute v. Dudas, 87 U.S.P.Q.2d 1913 (E.D. Va. 2008), Court Opinion
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`After boarding the BART train , Mr. R inadvertently fell asleep, and he awoke just as the conductor announced his
`stop. (AR 206). Mr. R. became distracted and left the train while leaving behind the patent application and his personal
`bag containing his wallet, car and house keys, and cell phone. (AR 206). Mr. R immediately notified a clerk at the
`BART station that the bag with his belongings had been left on the train. (AR 206). The clerk called the next stations
`on the route to alert them of the situation and advised Mr. R that nothing could be done unless the bag was turned in
`and if it was turned in, a BART representative would notify him. (AR 206). Mr. R's Declaration indicates that he
`became overwhelmed with confusion , disorientation and panic since he no longer had his car or house keys, his cell
`phone and he had no cash or additional value on his BART train ticket. (AR 206). He states that he walked for miles
`from one BART station to the next in the hopes that his bag had been found and turned into a station agent. (AR 206).
`Mr. R then walked to the home of a friend who had a spare key to Mr. R's house. (AR 206). Mr. R's friend arrived
`home at approximately 11:45 p.m. and gave Mr. R the spare key and drove Mr. R to his house. (AR 206). Mr. R
`arrived home after midnight and discovered a voice message from a BART clerk stating that his bag had been
`recovered, and it would be available at the lost and found booth at the BART terminal. (AR 206-7). Mr. R regained
`possession of his bag with the patent application and Express Mail materials around 7:30a.m. on Saturday, May 21,
`2005. (AR 206-7). Mr. R then contacted the attorney at the Firm and advised him that the package of documents
`containing the subject application had been lost on the way to the Post Office the night before. (AR 207). Mr. R then
`returned the documents to the attorney at the Firm. (AR 207).
`
`The attorney at the Firm met Mr. R at the Firm's office on the morning of May 21 , 2005. (AR 71 ). The application
`documents were then re-dated and delivered to the U.S. Post Office for Express Mail delivery to the USPTO
`approximately one hour after the U.S. Post Office opened for business on Saturday, May 21 , 2005. (AR 71 ). The
`patent application (Application No. 11/133,763) received a filing date of May 21 , 2005 by the USPTO. (AR 1-64).
`
`On June 22, 2005, a psychological evaluation was performed on Mr. R by Jules Burstein, Ph.D., a clinical and forensic
`psychologist. (AR 153). Mr. R was interviewed and underwent three psychological tests. (AR 153). Dr. Burstein
`diagnosed Mr. R. with having suffered an acute panic attack on May 20, 2005. (AR 157-8). The DSM-IV-TR
`(Diagnostic and Statistical Manual of Mental Disorders-Text Revised , page 432) criteria for the clinical condition of
`"acute panic attack" requires the presence of four or more of thirteen distinct symptoms. (AR 157). Dr. Burstein
`concluded that Mr. R satisfied at least nine of the thirteen symptoms, which included pounding heart, sweating,
`shortness of breath, chest pain or discomfort, [**3] nausea or abdominal distress, dizzy, lightheaded, or faint, fear of
`losing control or going crazy, and hot flushes in the face. (AR 157). Dr. Burstein opined that the acute panic attack
`clouded Mr. R's consciousness and impaired his thinking and reasoning. (AR 157). Dr. Burstein also indicated that the
`extraordinary level of distress which eventually became a full-fledged panic attack [*1916] prevented Mr. R from
`considering the option of calling on the Firm's attorneys during the evening of May 20, 2005, so the documents could
`be reprinted, signed and delivered to the U.S. Post Office by midnight, thereby guaranteeing that they were mailed
`within the specified deadline. (AR 158).
`
`A. HFI's First Petition for Waiver of Rules Under 37 C.F.R § 1.183
`
`On October 31 , 2005, HFI filed a Petition for Waiver of Rules Under 37 C.F.R. § 1.183, requesting a waiver of Rule 37
`C.F .R. § 1.10 in order that Application No. 11/133,763 be accorded a filing date of May 20, 2005 ("First Petition"). (AR
`69-158). In support of the First Petition, HFI submitted six exhibits: Exhibit A was the email correspondence dated May
`19 and 20, 2005, between HFI's Australian counsel and the Firm (AR 77-82); Exhibit B was a Declaration by R. Gwen
`Peterson describing the Firm's established procedure for filing documents with the USPTO by Express Mail under 37
`C.F.R. § 1.10 that was in effect on May 20, 2005 (AR 83-84); Exhibit C was a Declaration by Judith Cotham stating(cid:173)
`that the Firm's standard procedure for effecting the filing of documents under 37 C.F .R. § 1.10 was adhered to without
`deviation for the subject application and that once the subject application had been dispatched to the U.S. Post Office
`for delivery, a facsimile was sent to HFI's Australian counsel indicating the subject application had been filed (AR
`85-87); Exhibit D was the facsimile sent by the Firm to HFI's Australian counsel at 6:00 p.m. on May 20, 2005,
`indicating the application had been filed with the USPTO (AR 87); Exhibit E was a copy of the Express Mail materials
`and application that was provided to Mr. R for delivery to the U.S. Post Office on May 20, 2005 (AR 88-151 ); and
`Exhibit F was a report dated July 5, 2005, from Jules Burstein, Ph.D. concerning his evaluation of Mr. Ron June 22,
`
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`2005. (AR 152-58).
`
`In the First Petition, HFI argued that extraordinary circumstances evolved after HFI's attorneys first dispatched the
`application on May 20, 2005, resulting in an unavoidable delay in filing and that equity mandated that the subject
`application be afforded a filing date of May 20, 2005. (AR 69). As set forth in the First Petition, the subject application
`was received by the Firm on the morning of May 20, 2005; prepared in accordance with the Firm's standard
`procedures for filing with the USPTO by Express Mail delivery in accordance with 37 C.F .R. § 1.1 0; given to a Firm
`employee for delivery to the U.S. Post Office; the courier fell asleep while riding the BART train to the U.S. Post Office;
`the courier exited the train without his personal belongings including the subject application; the courier then suffered
`an acute panic attack that precluded him from employing any rational means for ensuring that the subject application
`was filed timely; the subject [**4] application was retrieved by the courier from the lost and found the following
`morning; and the courier then contacted an attorney at the Firm who immediately re-dated the subject application and
`had it mailed to the USPTO by Express Mail during the morning of May 21, 2005. (AR 70-72).
`
`HFI cited the case of Sturzinger v. Commissioner of Patents, 377 F. Supp. 1284 (D. D.C. 1974) in support of the
`argument that the extraordinary circumstances set forth above justified a waiver of Rule 37 C.F.R. § 1.10 and that the
`subject application should be afforded its intended filing date of May 20, 2005. (AR 73-74). In the alternative, HFI
`argued that the facsimile sent to HFI's Australian counsel on May 20, 2005 (Exhibit D to the First Petition, AR 87}
`should be acknowledged as the "date-in" in lieu of the Express Mail label since it is proof that the subject application
`was intended to be filed on May 20, 2005. (AR 75).
`
`On November 18,2005, the USPTO issued its Decision dismissing the First Petition Under 37 C.F.R. § 1.183. The
`USPTO stated in its Decision that in order to submit a "grantable" petition under 37 C.F.R. § 1.183, the "Petitioner
`must show ( 1) that this is an extraordinary situation where (2) justice requires waiver of the rule" citing In re Sivertz,
`227 U.S.P.Q. 255 (Com'r Pat. 1985). (AR 162). The USPTO found that "Petitioner has not established that either
`condition exists in this case." (AR 162). The USPTO based its dismissal on the premise that the courier was an agent
`of the Petitioner; that the Petitioner was responsible for the actions of the courier; that the courier failed to exercise
`reasonable care and diligence; that there is nothing extraordinary about a courier falling asleep on a train and leaving
`his belonging on the train; and that the USPTO did not cause or contribute to the delay. (AR 162-63). The USPTO
`also r1917] noted that the Petition did not contain a statement from Mr. R or an individual with firsthand knowledge of
`the underlying events. (AR 159).
`
`The USPTO stated that the decision in Sturzingerwas distinguishable because in that case the application was stolen
`while in the custody of the U.S. Postal Service, and there was no indication that the applicant was culpable for the
`theft. (AR 164-65). The USPTO also stated that Sturzinger did not provide any support for the application of an
`"intended" filing date since the court found that the filing date should be the date the "proposed application" was
`delivered to the USPTO and not the date when the original application was mailed to the USPTO. (AR 164-66).
`
`The USPTO concluded its Decision by finding that even if there was an extraordinary situation such that justice
`required a waiver of 37 C.F.R. § 1.1 O(a)(1 ), the request to waive or suspend the requirements of a statute pursuant to
`37 C.F .R. § 1.183 is beyond the discretion or the authority of the USPTO. (AR 166).
`
`B. HFI's Renewed Petition for Waiver of Rules Under 37 C.F.R. § 1.183
`
`On January 17, 2006, HFI filed a Renewed Petition for Waiver of Rules Under 37 C.F.R. § 1.183 with the USPTO,
`again requesting a waiver of Rule 37 C.F.R. § 1.10 in order that the subject application be accorded a filing date of
`May 20, 2005. (AR 200-209). To address the concerns raised in the initial Decision that no statement was provided
`from an individual [**5] with firsthand knowledge of the underlying events, HFI provided a Declaration from Mr. R
`detailing the events that occurred on May 20 and 21, 2005, relating to the subject application. (AR 205-207). In
`response to the portion of the Decision finding that Mr. R's falling asleep did not rise to the level of an extraordinary
`circumstance, HFI argued that the extraordinary situation occurred after Mr. R departed the train without his
`belongings, including the subject application. (AR 202). HFI asserted that the "extraordinary situation" occurred when
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`Mr. R suffered an acute panic attack, thereby clouding Mr. R's mind and judgment and preventing him from employing
`any rational means for ensuring the subject application was filed timely. (AR 203).
`
`On March 3, 2006, the USPTO dismissed the Renewed Petition. (AR 211-16}. That Decision stated that it was still not
`clear what alternative course of action Mr. R could have undertaken absent the acute panic attack and that equitable
`relief was not justified since it was the actions of Petitioner's agent and not the USPTO which caused the delay in
`filing. (AR 214). The Decision also stated that the Renewed Petition did not address the earlier finding that the
`Sturzinger decision was more in line with the USPTO's reasoning to dismiss the Petition and that the request to treat
`the facsimile sent to HFI's Australian counsel on May 20, 2005, as the functional equivalent of a "date-in" on a U.S.
`Postal Service Express Mail label would require the USPTO to waive "a Law." (AR 215).
`
`C. HFI's Second Renewed Petition for Waiver of Rules Under 37 C. F .R. § 1.183
`
`HFI filed a Second Renewed Petition for Waiver of Rules Under 37 C.F.R. § 1.183 with the USPTO on August 2,
`2006. (AR 219-33). The Second Renewed Petition addressed the four points raised by the USPTO in the March 3,
`2006 dismissal. (AR 221-22).
`
`HFI responded to the USPTO's inquiry concerning what other responses or activities Mr. R could have taken in order
`to secure the recovery or timely filing of the subject application if he had not had an acute panic attack. {AR 223-25).
`As set forth in the Second Renewed Petition, a reasonable person in control of his or her faculties would have
`attempted to contact the Firm to ask for help and instruction. (AR 223}. If Mr. R had contacted the Firm or one of its
`attorneys at home soon after he departed the BART train, there was ample time to have the subject application
`reprinted and delivered to the U.S. Post Office for Express Mail delivery before the midnight deadline. (AR 224). In
`addition, Mr. R could have waited at the MacArthur BART station (where he reported the missing items to a BART
`agent and that BART agent made calls to the next stations on the route) to see if there was any response to the
`inquiries to the other BART stations concerning the lost bag. (AR 224-25).
`
`HFI argued that Mr. R's acute panic attack constituted an extraordinary situation where justice requires a
`extraordinary remedy. (AR 225). HFI distinguished Mr. R's situation from those relied upon by the USPTO
`involving ignorance of USPTO rules or an accident caused by a party's inadvertent failure to comply. (r1918] AR
`225-26). Absent r*6] the acute panic attack, Mr. R could have taken reasonable, rationale steps to ensure that the
`subject application was reprinted and that reprinted version was delivered to the U.S. Post Office for delivery by
`Express Mail before the midnight deadline. (AR 226). HFI also contends that since the lost bag was recovered that
`evening by BART personnel, if Mr. R had remained at the BART station he may have been able to retrieve his lost bag
`in time to deliver the subject application to the U.S. Post Office. (AR 226).
`
`The Second Renewed Petition discussed the facts underlying the Sturzingerdecision and the ultimate decision to
`award the plaintiff a filing date for a "proposed application" that failed to meet the statutory requirements for a patent
`application. (AR 226-28). As set forth in the Second Renewed Petition, at the time the Sturzingerapplication was
`mailed to the USPTO in 1971, there was no provision allowing a filing date other than when a proper application was
`delivered to the USPTO. (AR 227). In Sturzingerthe court allowed a filing date that predated the applicant's actual
`compliance with the statutory filing requirements. Sturzinger, 377 F. Supp. at 1286. (AR 228).
`
`HFI advanced the position that the language in 35 U.S. C. § 21 (a) "but for postal service interruptions or
`emergencies" does not rule out the possibility that other exigencies such as a medical emergency could be an
`emergency designated by the Director.[fn3) HFI also argued that the stated goals of 37 C.F.R. § 1.10 were satisfied in
`that on May 20, 2005, the subject application was in the physical custody of a governmental agency (BART) with no
`interest in the subject application. (AR 229-30). HFI noted that the USPTO had not taken the position that the
`application that was deemed filed on May 21, 2005, was any different than the application that was lost on May 20,
`2005, recovered by BART personnel and then returned to Mr. R. (AR 230-31).
`
`On January 19, 2007, the Second Renewed Petition was denied by the USPTO. (AR 235-44). In that Decision, the
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`USPTO questions whether Mr. R could have reached anyone at the Firm by phone since it was after business hours
`on a Friday or whether he could have contacted any of the Firm's lawyers at home. (AR 238). The USPTO also took
`issue with the argument that Mr. R may have been able to retrieve the lost application before the midnight deadline if
`he had waited at the BART station since it is unclear when during that evening Mr. R's belongings were located. (AR
`238). The decision reiterates the earlier position that had Mr. R remained awake and not left his bag on the train, the
`application would have been filed in a timely manner. According to the USPTO, the "but for" cause of the missed filing
`deadline was the inattentiveness of Mr. Rand not the acute panic attack that followed. (AR 240-41 ). The USPTO's
`final Decision also found that HFI's arguments that the USPTO has the authority to waive the filing requirements in 37
`C.F.R. § 1.10 were unavailing. (AR 243).
`
`D. HFI's Complaint
`
`On March 19, 2007, HFI filed a Complaint in the United States District Court for the District of Columbia under the
`Administrative Procedure Act, 5 U.S. C. §§ 701 et seq., seeking judicial review [**7] of a final agency action, namely
`the USPTO's decision to deny the Petition under 37 C.F.R. § 1.183 that 37 C.F.R. § 1.10 be waived to provide HFI
`with a filing date which precedes the date on which the application was mailed by one day. (Complaint 1f 1, Dkt. no. 1 ).
`HFI claims that the Decision of the USPTO is a final agency action for which there is no other adequate remedy and is
`subject to judicial review pursuant to 5 U.S.C. § 704. (Complaint 1f 27, Dkt. no. 1 ). HFI asserts that the Decision to
`deny the Petition was arbitrary, capricious, an abuse of discretion and otherwise not in accordance with law and
`should be set aside under 5 U.S.C. § 706(2)(A). (Complaint 1f 26, Dkt. no. 1). On July 10, 2007, the case was
`transferred to this Court following the filing of a motion to transfer. (Dkt. no. 4).
`
`On August 17, 2007, the USPTO filed its Answer to the Complaint. (Dkt. no. 6). The Administrative Record was filed
`with the Court on August 22, 2007. (Dkt. no. 7). As set forth in an Order entered on January 10, 2008, the parties
`agreed to a briefing schedule for Motions for Summary Judgment and to have those motions heard on March 7, 2008.
`(Dkt. no. 36). The parties filed their Motions for Summary Judgment, Memoranda in Support, Oppositions and Replies.
`(Dkt. nos. 38, 40, 41, 42, 43, 4 7, 48, 49 and 50). The Court [*1919] heard oral argument on the Motions for Summary
`Judgment on March 7, 2008, and they were taken under advisement. (Dkt. no. 51). On March 17, 2008, the Court
`entered an Order finding that the language in 35 U.S.C. § 21 (a) applies specifically to Postal Service emergencies and
`is not applicable to the facts presently before the Court and requested supplemental briefing. (Dkt. no. 52). The parties
`filed Supplemental Briefs on March 21, 2008. (Dkt. nos. 53, 54).
`
`II. Statutes and Regulations at Issue
`
`A. 37 C.F.R. § 1.183- Suspension of Rules
`
`In an extraordinary situation, when justice requires, any requirement of the regulations in this part which is not a
`requirement of the statutes may be suspended or waived by the Director or the Director's designee, sua sponte, or on
`petition of the interested party, subject to such other requirements as may be imposed. Any petition under this section
`must be accompanied by the petition fee set forth in § 1.17(f).
`
`B. 37 C.F.R. § 1.10- Filing of correspondence by "Express Mall"
`
`(a)(1) Any correspondence received by the U.S. Patent and Trademark Office (USPTO) that was delivered by the
`"Express Mail Post Office to Addressee" service of the United States Postal Service (USPS) will be considered filed
`with the USPTO on the date of deposit with the USPS.
`
`(2) The date of deposit with USPS is shown by the "date in" on the "Express Mail" label or other official USPS
`notation . If the USPS deposit date cannot be determined, the correspondence will be accorded the USPTO receipt
`date as the filing date. See§ 1.6(a).
`
`C. 35 U.S. C.§ 21(a) - Filing date and day for taking action
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`The Director may by rule prescribe that any paper or fee required to be filed in the Patent and Trademark Office will be
`considered filed in the Office on the date on which it was deposited with the United States Postal Service or would
`have been deposited with the United States Postal Service but for postal service interruptions or emergencies
`designated by the Director.
`
`D. 35 U.S.C. § 111 (a) - Application [**8] in general
`
`(1) Written application. An application for patent shall be made, or authorized to be made, by the inventor, except as
`otherwise provided in this title, in writing to the Director.
`
`(2) Contents. Such application shall include -
`
`(A) a specification as prescribed by section 112 of this title;
`
`(B) a drawing as prescribed by section 113 of this title; and
`
`(C) an oath by the applicant as prescribed by section 115 of this title.
`
`(3) Fee and oath. The application must be accompanied by the fee required by law. The fee and oath may be
`submitted after the specification and any required drawing are submitted, within such period and under such
`conditions, including the payment of a surcharge, as may be prescribed by the Director.
`
`(4) Failure to submit. Upon failure to submit the fee and oath within such prescribed period, the application shall be
`regarded as abandoned, unless it is shown to the satisfaction of the Director that the delay in submitting the fee and
`oath was unavoidable or unintentional. The filing date of an application shall be the date on which the specification
`and any required drawing are received in the Patent and Trademark Office.
`
`Ill. Jurisdiction and Venue
`
`This Court has jurisdiction pursuant to 5 U.S.C. § 702 and 28 U.S.C. §§ 1338(a) and 1361. Venue is proper in this
`Court pursuant to 28 U.S.C. § 1391(e) and 5 U.S.C. § 703.
`
`IV. Standard of Review
`
`Under the Administrative Procedure Act, 5 U.S.C. § 706(2)(A), a reviewing Court shall hold unlawful and set aside
`agency action, findings, and conclusions found to be arbitrary, r1920] capricious, an abuse of discretion, or otherwise
`not in accordance with law. Citizens to Preserve Overton Park v. Volpe, 401 U.S. 402,413-15 (1971). Summary
`judgment is appropriate when "there is no genuine issue as to any material fact and that the movant is entitled to
`judgment as a matter of law." Fed.R.Civ.P. 56( c). The focal point for the review of a claim under the Administrative
`Procedure Act such as this one is the Administrative Record. Camp v. Pitts, 411 U.S. 138, 142 (1973).
`
`V. Discussion
`
`The Cross Motions for Summary Judgment raise two issues that must be decided by the Court. The first issue is
`whether the USPTO's decision to deny the Petition for a waiver of 37 C.F.R. § 1.10 pursuant to 37 C.F.R. § 1.183 was
`arbitrary, capricious, an abuse of discretion or otherwise not in accordance with law and should be set aside pursuant
`to 5 U.S.C. § 706(2)(A). The second issue is whether the USPTO has the ability under 37 C.F.R. § 1.183 to waive the
`requirements contained in 37 C.F.R. § 1.10. After a full review of the Administrative Record, the pleadings submitted
`by the parties and the argument presented by counsel , the Court finds that the USPTO's decision that HFI failed to
`establish that this was an extraordinary situation where justice requires waiver of a rule was arbitrary, capricious, an
`abuse of discretion and otherwise not in accordance with law. However, the Court finds that the USPTO does not
`have the authority under 37 C.F.R. § 1.183 to provide HFI with a filing date of May 20, 2005. Accordingly, the
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`Howard Florey Institute v. Dudas, 87 U.S.P.Q.2d 1913 (E.D. Va. 2008}, Court Opinion
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`USPTO's Motion for Summary Judgment will be granted and the USPTO's decision is hereby affirmed.
`
`A. The USPTO's Decision under 37 C._F.R. § 1.183
`
`All parties agree that under 37 C.F .R. § 1.183 a petitioner must establish (1) that there was an extraordinary situation
`where (2) justice [**9] requires waiver of the rules. See 37 C.F.R. § 1.183; In re Sivertz, 227 U.S.P.Q. 255 (Com'r Pat.
`1985); In re Bachler, 229 U.S.P.Q. 553 (Com'r Pat. 1986). As recently stated by the Federal Circuit in Burandt v.
`Dudas, [528 F.3D 1329], 2008 U.S. App. LEXIS 12328, at *7 (Fed. Cir. June 10, 2008):
`
`The APA provides that "[t]he reviewing court shall ... hold unlawful and set aside agency action, findings, and
`conclusions found to be arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law."§
`U.S.C. § 706(2)(A). Under an arbitrary and capricious standard, the scope of review is narrow and a court may not
`"substitute its judgment for that of the agency." Motor Vehicle Mfrs. Ass'n of U.S., Inc. v. State Farm Mut. Auto. Ins.
`Co., 463 U.S. 29, 43, 103 S. Ct. 2856,77 L. Ed. 2d 443 (1983). A court reviewing the agency decision "must consider
`whether the decision was based on a consideration of the relevant factors and whether there has been a clear error of
`judgment." Bowman Transp., Inc. v. Ark.-Best Freight Sys., Inc., 419 U.S. 281, 285, 95 S. Ct. 438, 42 L. Ed. 2d 447
`(1974) (quotations omitted). "An abuse of discretion occurs where the decision is based on an erroneous interpretation
`of the law, on factual findings that are not supported by substantial evidence, or represents an unreasonable judgment
`in weighing relevant factors." Star Fruits v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005).
`
`HFI argues that the USPTO disregarded the clear and undisputed evidence in the Administrative Record that Mr. R
`suffered an acute panic attack after leaving his bag on the BART train; that the panic attack prevented Mr. R from
`acting in a manner in which a rational person would have acted under the circumstances; and that if Mr. R had not
`suffered a panic attack, steps could have been taken to ensure the timely filing of the application. HFI contends that
`the USPTO improperly focused on the events leading up to the panic attack (Mr. R falling asleep on the train and
`exiting the train without his bag) and ignored the fact that if Mr. R had acted in a rational manner once he left the train
`without his belongings, the application could have been filed in a timely manner. HFI states that the evidence before
`the USPTO established that "but for'' the acute panic, the application would have been filed in a timely manner.
`
`There is no dispute concerning the evidence that was before the USPTO as shown in the Administrative Record . The
`Administrative Record clearly shows that as a result of Mr. R falling asleep on a BART train and leaving his bag on the
`train at some point soon after 5:55 p.m. on May 20, 2005, he suffered an acute panic attack. The evidence in the
`Administrative r1921] Record also establishes that if Mr. R had not suffered an acute panic attack, there was
`sufficient time for corrective action to be taken so that the application could have been filed in a timely manner. The
`USPTO's unrealistic and unsupported view that Mr. R would not be able to contact anyone at the Firm after 6:00 p.m.
`to inform them of the mishap and to take corrective action was not supported by the evidence in the Administrative
`Record and was contrary to the evidence presented by HFI including the sending of a facsimile to HFI's Australian
`counsel by a secretary at the Firm after the close of normal business hours (AR 85-87) and Mr. R contacting [**1 0] a
`Firm attorney at home early the following morning (AR 207, 155, 71).
`
`Unfortunately the USPTO's Decision focuses on the events leading up to the time when Mr. R left his bag on the
`BART train and ignored the importance of the intervening acute panic attack. T he USPTO's Decision improperly
`characterizes the situation as an "inadvertent failure to comply with the requirements" and states that the cause of the
`failure to file in a timely manner was the "inattentiveness" of Mr. R by falling asleep and leaving this bag on the train.
`Based on that faulty premise, the USPTO found there was nothing extraordinary about a courier falling asleep and
`leaving his belongings on the train. (AR 163). However, the Administrative Record reveals that the application could
`have been filed in a timely manner if Mr. R had not suffered an acute panic attack and the failure to consider that
`evidence was an abuse of discretion. Accordingly, the Court finds that an acute panic attack such as the one suffered
`by Mr. R is an "extraordinary situation" as set forth in 37 C. F .R. § 1.183 and that the USPTO's finding that there was
`n