Cleared for Suit?

Arrow Intern. v. Spire Biomedical, Inc. United States District Court, D. Massachusetts. Judge Woodlock Arrow International Investment Corp. sued Spire Biomedical, Inc. for patent infringement of Arrowââ?¬â?¢s patent (US Patent No. 6,872,198). Spire claimed the patent was unenforceable due to abandonment. Spire claims the patent was abandoned because Plaintiff applied for a PCT application on the invention. The United States has a specific exception to mandatory 18 month publication, but if you invoke this exception (35 USCA Ã?§122(b)(2)(B)(i)) and then subsequently decide to apply for a patent in a foreign country or file a PCT application, be sure to notify the USPTO within 45 days or “the application [will be] regarded as abandoned, unless it is shown to the satisfaction of the Director that the delay in submitting the notice was unintentional.” 35 USCA Ã?§122(b)(2)(B)(iii). Arrow acquired the ââ?¬Ë?198 patent from another company and did not notify the USPTO of the PCT application and as a result initiated an action with the USPTO to resolve the issue of abandonment (arguing the lack of notification was unintentional). District Court Judge Woodlock decided litigation over infringement cannot continue until all administrative remedies with the USPTO have been fully exhausted so he dismissed without prejudice. The lawyers:

failed to address a difference between the doctrine of primary jurisdiction and the doctrine of exhaustion that “is substantial and much overlooked by practitioners.”

The difference as quoted by Judge Woodlock is:

The difference concerns the role of judicial review. As Wright and Koch observe: Where the primary jurisdiction of the agency is invoked … one can not only argue that the agency decision is improper but that, even if the agency correctly decided its part of the controversy, the court can still decide the case differently from the agency by deciding issues under the jurisdiction of the court in a way that leads to a result different from that assented by the agency. Id.

By contrast,

Where exhaustion is required, one must argue that the agency action cannot stand up to the proper standard of review.

If the primary jurisdiction doctrine is appropriate, a court will ordinarily stay further judicial proceedings. If the exhaustion doctrine is appropriate, the judicial proceeding will ordinarily be dismissed.