Japanese Foundation for Cancer Research v. Lee ( 2014 )

United States Court of Appeals
for the Federal Circuit
______________________
JAPANESE FOUNDATION FOR CANCER
RESEARCH,
Plaintiff-Cross-Appellant,
v.
MICHELLE K. LEE, Deputy Director, U.S. Patent
and Trademark Office, in her official capacity as
Deputy Under Secretary of Commerce for Intellec-
tual Property AND UNITED STATES PATENT AND
TRADEMARK OFFICE,
Defendants-Appellants.
______________________
2013-1678, 2014-1014
______________________
Appeals from the United States District Court for the
Eastern District of Virginia in No. 1:13-CV-00412-AJT-
TRJ, Judge Anthony J. Trenga.
______________________
Decided: December 9, 2014
______________________
MICHAEL J. LOCKERBY, Foley & Lardner LLP, of
Washington, DC, argued for plaintiff-cross-appellant.
ADAM C. JED, Attorney, Appellate Staff, Civil Division,
United States Department of Justice, of Washington, DC,
argued for defendants-appellants. With him on the brief
were STUART F. DELERY, Assistant Attorney General,
2 JAPANESE FOUNDATION v. LEE
DANA J. BOENTE, Acting United States Attorney; and
NATHAN K. KELLEY, Solicitor, United States Patent and
Trademark Office. Of counsel were MARK R. FREEMAN,
Attorney, and DAVID MOSKOWITZ, United States Attor-
ney’s Office, of Alexandria, Virginia.
______________________
Before PROST, Chief Judge, DYK and TARANTO, Circuit
Judges.
PROST, Chief Judge.
The United States Patent and Trademark Office
(“PTO”) appeals from the decision of the United States
District Court for the Eastern District of Virginia grant-
ing the Japanese Foundation for Cancer Research’s (“the
Foundation”) cross-motion for summary judgment that
the PTO acted arbitrarily and capriciously, and abused its
discretion, when it refused to withdraw the terminal
disclaimer on U.S. Patent No. 6,194,187 (“’187 patent”).
For the reasons stated below, we reverse.
I
The ’187 patent was issued and assigned to the Foun-
dation on February 27, 2001. On October 11, 2011, the
Foundation’s attorney of record responsible for the prose-
cution of the ’187 patent filed a statutory disclaimer
pursuant to 37 C.F.R. § 1.321(a) with the PTO, disclaim-
ing “the entire term of all claims in U.S. Patent 6,194,187”
and requesting that the disclaimer be “duly recorded.”
J.A. 894. On December 13, 2011, the Foundation’s attor-
ney of record filed a petition under 37 C.F.R. § 1.182 to
withdraw the statutory disclaimer. The petition indicated
that the disclaimer “was not filed in the context of any
litigation or an assertion of double patenting,” and that
the disclaimer had not yet been made public by either the
Foundation or the PTO, as it had not yet been entered
into the PTO’s electronic Patent Application Information
Retrieval (“PAIR”) database or the paper prosecution file.
JAPANESE FOUNDATION v. LEE 3
J.A. 900. The PTO issued a decision denying the Founda-
tion’s petition on January 17, 2012.
According to the PTO’s decision, the petition indicated
that the Foundation’s filed disclaimer included all of the
information as well as the fee required pursuant to 37
C.F.R. § 1.321(a). J.A. 928. The PTO also noted that
“[t]here is no indication that the power of attorney was
revoked or withdrawn,” and thus the attorney of record
“appears to be a proper party to file the statutory dis-
claimer.” J.A. 928-29. The PTO explained that the statu-
tory mechanisms available to correct a patent “are not
available to withdraw or otherwise nullify the effect of a
recorded terminal disclaimer,” and that the PTO’s estab-
lished policy was to deny any “request to withdraw or
amend a recorded terminal disclaimer in an issued patent
on the grounds that the rules of practice and 35 U.S.C.
§ 253 do not include a mechanism for withdrawal or
amendment of such a terminal disclaimer.” J.A. 929. The
PTO concluded by noting that even though the disclaimer
had not been “fully processed” the “patent owner freely
dedicated to the public the entire term” of all the patent’s
claims when the disclaimer was filed. Id.
The Foundation’s terminal disclaimer subsequently
appeared in the ’187 patent’s prosecution file on the
electronic PAIR database. On February 27, the Founda-
tion filed a petition under 37 C.F.R. §§ 1.182 and 1.183
asking the PTO to withhold publication of the terminal
disclaimer in the Official Gazette, and indicating that it
would file a request for reconsideration, which it filed on
March 16. (The Foundation asked in the alternative for
relief under 37 C.F.R. §§ 1.182 and 1.183 “to invoke the
discretion of the director and suspend the rules.”). In
August, the Foundation’s attorney of record met with the
PTO and, following that meeting, filed a supplemental
petition addressing its argument concerning whether the
PTO had the inherent authority to grant the relief the
Foundation requested.
4 JAPANESE FOUNDATION v. LEE
The Foundation’s March petition described what the
Foundation characterized as “newly revealed information”
and “newly discovered evidence.” J.A. 976. This included
signed declarations from a number of personnel associat-
ed with one of the ’187 patent’s Japanese licensees,
Kyowa Hakko Kirin, Inc. (“KHK”), and KHK’s Japanese
patent counsel, Kyowa Law Group (“Kyowa Law”). 1
According to the declarations and the Foundation’s peti-
tion, the following series of events preceded the Founda-
tion’s attorney of record’s filing of the statutory
disclaimer.
First, on March 8, 2011, KHK’s in-house counsel con-
tacted a paralegal at Kyowa Law to inquire as to whether
a patent may be abandoned or disclaimed before it lapsed
because of non-payment of the next maintenance fee. The
paralegal’s declaration states that she contacted her
“boss” and together they “conducted research which
indicated that a disclaimer could be filed under U.S.
statutory and regulatory provisions.” J.A. 963. Then, the
next day, March 9, the paralegal declares that she sent a
letter by fax to the Foundation’s attorney of record’s law
firm, Foley & Lardner LLP (“Foley”), which reads, in
relevant part, as follows (below the subject line “Re: U.S.
Patent No. 6,194,187” and dated March 9):
Dear Sirs:
Our clients would like to abandon the captioned
patent positively and invalidate this patent before
the case lapses by non-payment of the next
maintenance fees, which will be due on August 27,
2012.
1 Despite sharing the name “Kyowa,” the licensee
and its counsel are unrelated entities.
JAPANESE FOUNDATION v. LEE 5
Would you please let us have the necessary forms
and/or information for the procedure of positive
abandonment, preferably by March 15, 2011.
We would appreciate your immediate reply by re-
turn facsimile.
J.A. 967. The paralegal’s declaration further states that
after the March 11 earthquake and subsequent tsunami
in Japan, her work “reporting and following up the pro-
gress of the disclaimer was adversely affected by the long
lasting irregular and abnormal situation after the Earth-
quake.” J.A. 964. She explained this was why she did not
send a copy of the March 9 letter to KHK or otherwise
inform KHK of its contents. Id. Then, on October 11, the
Foundation’s attorney of record filed the terminal dis-
claimer at the PTO. The paralegal’s declaration goes on
to state that she received a copy of the filed terminal
disclaimer from the Foundation’s attorney of record on
November 29, 2011, and then reported it to KHK. Id.
The next day, she was informed by KHK instructing
Kyowa Law to “urgently ask Foley to restore the patent.”
Id. (The Foundation’s attorney of record subsequently
filed the aforementioned December 2011 petition.)
The Foundation’s petition also included a declaration
from the Executive Director of the Foundation stating
inter alia, that the Foundation neither requested nor
authorized the disclaimer. J.A. 969. The petition also
included a declaration from the individual “in charge of
patents regarding biotechnology at KHK” stating that
KHK did not have the authority to disclaim the patent,
and that the declarant did not instruct nor authorize any
action leading to the ’187 patent’s disclaimer. J.A. 970.
The in-house patent counsel for KHK who originally
communicated with the paralegal at Kyowa Law also
provided a declaration, stating that the request was not
for the disclaimer of the ’187 patent but rather a question
about “whether it was possible to actively disclaim a U.S.
6 JAPANESE FOUNDATION v. LEE
patent, rather than allow it to lapse by non-payment of
maintenance fees.” J.A. 973.
The Foundation’s March petition and August supple-
ment argued that in light of the aforementioned “new and
extraordinary facts,” the disclaimer was erroneous and
unauthorized, and, therefore, the PTO had the inherent
authority to withdraw it. J.A. 982.
On February 22, 2013, the PTO issued a final agency
decision denying the Foundation’s petition. J.A. 990-1001
(“Final Decision”). 2 The Foundation thereafter filed an
action in district court appealing the PTO’s decision under
the Administrative Procedure Act (“APA”), 5 U.S.C. § 551.
The PTO subsequently agreed to withhold publication of
the ’187 patent’s disclaimer in the Official Gazette. In
May, the PTO and the Foundation filed cross motions for
summary judgment. The district court granted the Foun-
dation’s motion and denied the PTO’s motion. It directed
the PTO “to withdraw the disclaimer, absent a finding
that the Foundation actually authorized its filing.” Japa-
nese Found. for Cancer Research v. Rea, No. 13-412, 2013
WL 3894156, at *10 (E.D. Va. July 26, 2013) (“District
Court Op.”).
The PTO appeals. The Foundation’s APA claim raises
“a substantial question under the patent law.” Helfgott &
Karas, P.C. v. Dickinson, 209 F.3d 1328, 1334 (Fed. Cir.
2000). Accordingly, we have jurisdiction under 28 U.S.C.
§ 1295(a)(1).
2 The final agency decision, as well as all the vari-
ous petitions and filings concerning the ’187 patent, is
contained in the prosecution file, which is available on the
Internet through the PTO’s electronic PAIR database at
http://portal.uspto.gov/pair/PublicPair.
JAPANESE FOUNDATION v. LEE 7
II
We review the district court’s grant of summary
judgment de novo, applying the same standard as the
district court. Arnold P’ship v. Dudas, 362 F.3d 1338,
1340 (Fed. Cir. 2004). Under the APA, we set aside an
agency’s action that is “arbitrary, capricious, an abuse of
discretion, or otherwise not in accordance with law.” 5
U.S.C. § 706(2)(A). 3 “Under the arbitrary and capricious
standard the scope of review is a narrow one.” Bowman
Transp., Inc. v. Ark.-Best Freight Sys., Inc., 419 U.S. 281,
285 (1974). In particular, “the court is not empowered to
substitute its judgment for that of the agency.” Id. To the
extent that the PTO’s decision relied on statutory inter-
pretation, “[t]his court reviews questions of statutory
interpretation without deference.” Liesegang v. Sec’y of
Veterans Affairs, 312 F.3d 1368, 1372 (Fed. Cir. 2003). An
agency abuses its discretion “where the decision is based
on an erroneous interpretation of the law.” Burandt v.
Dudas, 528 F.3d 1329, 1332 (Fed. Cir. 2008). Otherwise,
an agency acts arbitrarily or capriciously only if the
decision was not based on the relevant factors or it fails to
“examine the relevant data and articulate a satisfactory
explanation for its action including a rational connection
between the facts found and the choice made.” Motor
Vehicle Mfrs. Ass’n of U.S., Inc. v. State Farm Mut. Auto.
Ins. Co., 463 U.S. 29 (1983).
3 The Foundation argues that the PTO’s decision
should be reviewed under an “abuse of discretion” stand-
ard that is somehow less deferential than “arbitrary and
capricious.” However, we generally review agency deci-
sions pursuant to the APA § 706(2)(A) using the terms
“abuse of discretion” and “arbitrary and capricious” inter-
changeably, as indicated by the plain text of the statute.
See, e.g., Helfgott, 209 F.3d at 1334-35.
8 JAPANESE FOUNDATION v. LEE
A
On appeal, the Foundation argues that the PTO has
the authority to issue a certificate of correction for
the ’187 patent to withdraw the terminal disclaimer
under the statute that governs such certificates, 35 U.S.C.
§ 255. This statutory section provides that a certificate of
correction may be issued “[w]henever a mistake of a
clerical or typographical nature, or of minor character,
which was not the fault of the Patent and Trademark
Office, appears in a patent and a showing has been made
that such mistake occurred in good faith . . . if the correc-
tion does not involve such changes in the patent as would
constitute new matter or would require re-examination.”
35 U.S.C. § 255.
The Foundation did not ask for relief pursuant to
§ 255 in its petition to the PTO. However, it argues that
it did not waive this ground for relief because it would
have been futile to raise it, due to the PTO’s established
policy. In particular, the Manual of Patent Examining
Procedure (MPEP) provides that “[a] mistake in filing a
terminal disclaimer does not fall within any categories of
mistake for which a certificate of correction of applicant’s
mistake is permissible.” MPEP § 1490.
In support of its position that § 255 is available as a
mechanism for withdrawing a mistakenly filed terminal
disclaimer, the Foundation cites the disclaimer at issue in
Carnegie Mellon Univ. v. Schwartz, 105 F.3d 863 (3d Cir.
1997). Carnegie Mellon, which was a malpractice case,
describes the circumstances by which the patentee’s
attorney of record mistakenly entered the serial number
and filing date of an issued patent, rather than the appli-
cation for which he had intended to file a disclaimer, and
filed it with the PTO. Id. at 865. The PTO subsequently
granted his petition to withdraw the disclaimer and
issued a certificate of correction, indicating that all refer-
ences to the disclaimer in the notice of disclaimer at-
JAPANESE FOUNDATION v. LEE 9
tached to the patent and published in the Official Gazette
should be deleted. Id.; see also U.S. Patent No. 4,767,708.
The Foundation argues that the facts of Carnegie Mellon
indicate that a certificate of correction may be used to
effect the withdrawal of a terminal disclaimer on an
issued patent and, moreover, that its filing of the dis-
claimer on the ’187 patent analogously represented a
“clerical or typographical error” that occurred in “good
faith” as required by § 255.
As an initial matter, the PTO’s policy in fact does
acknowledge the possibility of correcting a terminal
disclaimer in the scenario that the Foundation argues was
described in Carnegie Mellon. To wit:
Where a terminal disclaimer was submitted to
overcome a nonstatutory double patenting rejec-
tion (made during prosecution of an application
which has now issued as a patent), and the num-
bers for the patent being disclaimed in the termi-
nal disclaimer were inadvertently transposed
(e.g., 6,444,316 written as 6,444,136), a petition
under 37 CFR 1.182 may be filed to withdraw the
terminal disclaimer with the incorrect (trans-
posed) patent number (recorded in the issued pa-
tent), and replace it with a corrected terminal
disclaimer having the correct patent number. In
this instance, the inadvertency is clear from the
record.
MPEP § 1490 (emphasis added). This paragraph follows a
description of the related situation in which a terminal
disclaimer identifies “the wrong target application or
patent,” and in which the PTO undertakes an office action
that “make[s] it clear that ‘the second terminal disclaimer
replaces the first terminal disclaimer, and the first termi-
nal disclaimer is thus void.’” Id.
Indeed, the PTO’s decision on the Foundation’s peti-
tion noted this rule of practice, contrasting it with the
10 JAPANESE FOUNDATION v. LEE
Foundation’s request to simply withdraw a recorded
disclaimer on an issued patent. Final Decision at 6, n.4. 4
Importantly, in the hypothetical scenarios described in
the MPEP, the patentee sought to file a terminal dis-
claimer but indicated the wrong target patent or applica-
tion. The Carnegie Mellon disclaimer, for example,
indicated the number of a patent that was related to the
patent application that was the intended target. Carne-
gie, 105 F.3d at 865. There, the relief accorded by the
PTO only nullified the terminal disclaimer on the wrongly
identified patent, while then enforcing the terminal
disclaimer on the intended patent or application. Here,
the Foundation has not identified an error in the patent
number or application that is apparent on its face—like a
transposed number or the number of a related patent—
which would entail redirecting the disclaimer to the
correct target. It instead claims that the filing of the
disclaimer was itself the “clerical or typographical error”
that may be corrected under § 255.
The Foundation’s argument here is that, first, “cleri-
cal or typographical error” in the statute should be read
disjunctively, such that § 255 is operative where there is a
“clerical error.” Second, the Foundation argues that since
the terminal disclaimer was filed due to the mistake of
4 During oral argument, the PTO’s counsel suggest-
ed that the Vectra decision, which issued after Carnegie
Mellon and emphasized the importance of the “finality
and certainty” of disclaimers as filed, called into question
whether a certificate of correction may still be available
under these circumstances. See Vectra Fitness, Inc. v.
TNWK Corp., 162 F.3d 1379, 1383 (Fed. Cir. 1998) (“This
court has interpreted the term ‘considered as part of the
original patent’ in section 253 to mean that the patent is
treated as though the disclaimed claims never existed.”);
accord Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996).
JAPANESE FOUNDATION v. LEE 11
Kyowa Law’s paralegal, the mistaken filing constitutes a
“clerical error” because she was a clerical employee per-
forming clerical work. This reading of the statute is not
only strained but also lacks support in case law, including
those cases cited in the Foundation’s briefing.
The Foundation argues that in our previous decision
interpreting “clerical or typographical error” in § 255, we
defined “clerical” as “relating to an office clerk or office
work” and “typographical” as “relating to the setting of
type, printing with type, or the arrangement of matter
printed from type.” Superior Fireplace Co. v. Majestic
Prods. Co., 270 F.3d 1358, 1369-70 (Fed. Cir. 2001).
However, in that case, while we noted these separate
definitions, we went on to interpret the combined phrase
as a whole within the context of § 255, holding that “cleri-
cal or typographical mistakes are generally understood to
include simple mistakes such as obvious misspellings that
are immediately apparent.” Id. An erroneous identifica-
tion of a patent number, as in Carnegie Mellon, represents
the outer edge of such an error, in which a patent applica-
tion number was transposed with a related patent num-
ber. However, this definition of “clerical or typographical
error” applies only to an error that appears on the face of
the document, as opposed to the filing of the document
itself.
To further support its reading of “clerical error,” the
Foundation points to our interpretation of the term in the
context of 19 U.S.C. § 1520(c)(1), a provision involving
refunds of customs duties and fines from the U.S. treas-
ury. In that context, we held that a “clerical error” arises
when a subordinate acts contrary to binding instructions,
distinguishing the subordinate from one whose duty
involves exercising “original thought or judgment.” Ford
Motor Co. v. United States, 157 F.3d 849, 860 (Fed. Cir.
1998). Setting aside whether this reading would apply to
Kyowa Law’s paralegal, the terminal disclaimer in this
case was actually filed by the Foundation’s attorney of
12 JAPANESE FOUNDATION v. LEE
record. Indeed, the PTO’s rules require that terminal
disclaimers be signed by “the patentee, or an attorney or
agent of record.” 37 C.F.R. § 1.321(a)(1). Therefore, even
if the Foundation’s reading of “clerical error” was correct,
it would be impossible for a subordinate who lacks the
duty of exercising judgment to file a valid terminal dis-
claimer on his own.
In sum, there is no basis for withdrawing the terminal
disclaimer on the ’187 patent by means of a certificate of
correction under § 255. 5
B
The Foundation also argues, as the district court held,
that the PTO has the inherent authority to withdraw a
mistakenly filed terminal disclaimer and should have
exercised its discretion to do so here.
As an initial matter, the Foundation argues that the
PTO erred by failing to account for the fact that the
terminal disclaimer was not yet recorded, because it had
not been placed in the ’187 patent’s paper or electronic
prosecution file at the time of its first petition, nor was it
published in the Official Gazette. The Foundation sub-
mits that this is important because the statute governing
patent disclaimers provides that a “disclaimer shall be in
writing, and recorded in the Patent and Trademark
Office.” 35 U.S.C. § 253 (emphasis added). However, we
have held that “nothing in the statutes or regulations
requires any action by the PTO for a disclaimer to be
‘recorded.’” Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d
1379, 1382 (Fed. Cir. 1998). Therefore, a disclaimer is
considered to be “recorded” on the date that it was filed,
as long as it was “received by the PTO in proper form and
5 The district court also agreed with the PTO that
§ 255 did not authorize the disclaimer’s withdrawal. See
District Court Op., 2013 WL 3894156, at *7 n.12.
JAPANESE FOUNDATION v. LEE 13
with the appropriate filing fee,” regardless of any delay in
its processing by the PTO. Id. The Foundation attempts
to limit Vectra to its facts because, in that case, the pa-
tentee was seeking to reissue broad patent claims that
were previously disclaimed, which we noted “would ne-
gate the finality and certainty of the disclaimer.” Id. at
1384. But we did not so limit our holding in Vectra.
Rather, we squarely indicated that our conclusion was
based on interpreting the text of § 253 and 37 C.F.R.
§ 1.321, the regulation that sets forth the requirements
for a terminal disclaimer to be recorded. Id. at 1382.
Therefore, whether the PTO had finished processing
the ’187 patent’s disclaimer before the Foundation’s
petition has no bearing on whether the PTO could or
should have withdrawn it.
The first question, then, is the scope of the PTO’s au-
thority, if any, to withdraw an effectively recorded dis-
claimer. We have held that “administrative agencies
possess inherent authority to reconsider their decisions,
subject to certain limitations, regardless of whether they
possess explicit statutory authority to do so.” Tokyo Kikai
Seisakusho, Ltd. v. United States, 529 F.3d 1352, 1360
(Fed. Cir. 2008). This principle is reflected in the PTO’s
regulations that allow the review of petitions in “situa-
tions not specifically provided for” in its regulations and,
moreover, provide that “any requirement of the regula-
tions in part which is not a requirement of the statutes”
may be waived “[i]n an extraordinary situation.” 37
C.F.R. §§ 1.182, 1.183. Indeed, the Foundation petitioned
the PTO for relief pursuant to these regulations.
The PTO’s denial of the Foundation’s petition ex-
pressed its position that, as to terminal disclaimers
recorded under § 253, there was no administrative deter-
mination for it to reconsider. Final Decision, at 7. Ac-
cording to the PTO, the only “determination” is whether
the disclaimer satisfied the requirements of 37 C.F.R.
§ 1.321(b), i.e., was signed by the applicant or an attorney
14 JAPANESE FOUNDATION v. LEE
or agent of record, stated the applicant’s ownership inter-
est and what portion of the term was being disclaimed,
and was accompanied by a fee. Indeed, the PTO indicated
that it found that these requirements were met when it
denied the Foundation’s initial petition. J.A. 928-29. In
that sense, the PTO already reviewed its determination
that the terminal disclaimer was valid.
The district court, however, held that as the PTO re-
ceives disclaimer filings and is responsible for placing
them in the public record, the PTO has the inherent
authority to reconsider whether it should have filed an
unauthorized terminal disclaimer. District Court Op.,
2013 WL 3894156, at *8. The district court also noted
that during its hearing, the PTO “appeared to concede
that it had inherent discretionary authority to withdraw a
fraudulently filed disclaimer but not an unauthorized
one.” Id. at *8 n.15. However, it is also not our place to
define what hypothetical circumstances might allow or
require the PTO’s action, where those circumstances are
not at issue here. The PTO has sufficiently stated its
reasoning that, in this case, the existence of a mistake by
an attorney other than the type falling under § 255 or a
lack of actual authority from a client should not result in
the withdrawal of the terminal disclaimer. See SEC v.
Chenery Corp., 332 U.S. 194, 196 (1994). The PTO need
not articulate what other circumstances would warrant
such withdrawal.
In its decision, the PTO provided reasons for refusing
to withdraw the ’187 patent’s disclaimer in this case,
“assuming arguendo that the decision to enter or not
enter the disclaimer was subject to reconsideration.”
Final Decision, at 8. Though this section of its decision
was styled as an alternative basis for rejecting the Foun-
dation’s petition, “we will uphold a decision of less than
ideal clarity if the agency’s path may reasonably be dis-
cerned.” Bowman Transp., 419 U.S. at 285-86; see also
Casino Airlines, Inc. v. Nat’l Transp. Safety Bd., 439 F.3d
JAPANESE FOUNDATION v. LEE 15
715, 717 (D.C. Cir. 2006) (sustaining an agency decision
as long as at least one of multiple grounds is valid and the
agency would have acted on that ground even if others
were unavailable). The PTO provided two reasons for
declining to withdraw the terminal disclaimer. First, the
PTO determined that, once the disclaimer was filed, the
public may have relied on it, and the PTO “does not
determine on an ad hoc basis whether the public has
actually relied on such filing.” Final Decision, at 8.
Second, the PTO held that it “is not the proper forum for
resolving the issue of whether the disclaimer was filed per
the intentions of the patentee,” on the basis of its position
that “miscommunications between attorneys and clients
do not excuse the actions of the representative.” Id. at 9.
With respect to the first ground of the PTO’s decision,
the Foundation argues that the public did not rely on the
’187 patent’s disclaimer. In the Foundation’s view, alt-
hough by the time of the PTO’s final decision the dis-
claimer did appear in the patent’s prosecution file and
online, the public was nevertheless on notice that its
validity was in question. The Foundation’s position
appears to be based on the fact that the Foundation’s own
petitions also appeared in the file, in which it contested
the disclaimer. However, nothing in the file actually
indicated that the PTO had any doubt about the disclaim-
er’s validity. The lack of publication in the Official Ga-
zette is also unavailing, given that the prosecution file is
freely accessible on the Internet. That said, even if we
gave the Foundation the full benefit of its argument, the
PTO’s other ground for denying the petition suffices to
sustain its decision.
In this case, the Foundation has alleged that its at-
torney of record filed the disclaimer because of miscom-
munications between the Foundation, KHK, Kyowa Law,
and Foley. The PTO declined to delve into the record and
evaluate the merits of the Foundation’s assertion. The
PTO instead determined that it need not examine alleged
16 JAPANESE FOUNDATION v. LEE
miscommunications between the patentee and its attor-
ney of record because of the principle that it holds the
patentee to be “bound by the actions or inactions of his
voluntarily-chosen representative.” Final Decision, at 9.
The PTO, apart from a clerical error under § 255, ends its
inquiry into attorney authorization once it determines
that the attorney of record signed the disclaimer, as
required by regulation.
The Foundation suggests that it should not be bound
to the consequences of its attorney of record’s actions, as it
resulted in the loss of a valuable property right. It analo-
gizes, as the district court did, to the principle that an
attorney cannot settle a case or waive certain rights
without the client’s authorization in the context of ordi-
nary representation. See District Court Op., 2013 WL
3894156, at *6. The PTO has, however, clearly articulat-
ed in its regulations that, other than the patentee, only
the attorney of record with power of attorney is author-
ized to file a terminal disclaimer on the patentee’s behalf.
See 37 C.F.R. § 1.32. And here, the patentee provided
specific authority to its attorney to file a disclaimer by
filing a power of attorney to prosecute the underlying
application and to transact all business in the PTO con-
nected therewith. J.A. 199. Even if we disagreed with
the PTO’s position as a matter of policy, we must not
substitute our own judgment for that of the agency be-
cause “[unless] these vital differentiations between the
functions of judicial and administrative tribunals are
observed, courts will stray outside their province and read
the laws of Congress through the distorting lenses of
inapplicable legal doctrine.” FCC v. Pottsville Broad. Co.,
309 U.S. 134, 144 (1940). We must defer to the agency’s
interpretation of its own procedures and regulations, and
this case does not indicate the kind of “extremely rare
circumstances” that could “justify a court in overturning
agency action because of a failure to employ procedures
beyond those required by the statute.” Vt. Yankee Nucle-
JAPANESE FOUNDATION v. LEE 17
ar Power Corp. v. Natural Res. Def. Council, Inc., 435 U.S.
519, 524, (1978). 6 Here, the PTO determined that mis-
communications between the Foundation and its attorney
of record did not excuse the actions of the attorney, and
we will not substitute our judgment for that of the agency.
State Farm, 463 U.S. at 30.
Therefore, we find that the PTO did not act arbitrari-
ly, act capriciously, or abuse its discretion in declining to
use any inherent authority that it might have in with-
drawing the terminal disclaimer on the ’187 patent that
the Foundation’s attorney of record duly filed in accord-
ance with the PTO’s regulations.
III
For the aforementioned reasons, we reverse the dis-
trict court’s grant of the Foundation’s motion for summary
judgment and denial of the PTO’s motion for summary
judgment, and, accordingly, we vacate the district court’s
order that the PTO conduct additional proceedings and
withdraw the terminal disclaimer on the ’187 patent from
the public record.
REVERSED AND VACATED
6 The district court suggests that the “PTO is the
Foundation’s only source of adequate relief.” District
Court Op., 2013 WL 3894156, at *9. We note that in
circumstances where a client may be deprived of a claim
based on its attorney’s conduct, and the facts indicate that
the “attorney’s conduct falls substantially below what is
reasonable under the circumstances, the client’s remedy is
against the attorney in a suit for malpractice.” Link v.
Wabash R.R. Co., 370 U.S. 626, 634, n.10 (1962).