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New York University v. Autodesk

July 16, 2007

NEW YORK UNIVERSITY, PLAINTIFF,
v.
AUTODESK, INC., DEFENDANT.



The opinion of the court was delivered by: Jed S. Rakoff, U.S.D.J.

OPINION AND ORDER

In this action, plaintiff New York University ("NYU") alleges that certain products of defendant Autodesk, Inc. ("Autodesk") infringe two of NYU's patents. By motion dated March 20, 2007, pursuant to Fed. R. Civ. P. 56, Autodesk moved for summary judgment on the ground that these two patents are invalid because the United States Patent and Trademark Office ("PTO") acted unlawfully when it granted NYU's petition to revive the underlying patent application after NYU had abandoned it.*fn1 For its part, NYU, by motion also dated March 20, 2007, moved for summary judgment on various grounds. For the reasons that follow, Autodesk's motion is granted and NYU's motion is denied as moot.

The pertinent facts, either undisputed, or, where disputed, taken most favorably to NYU, are as follows. NYU owns the two patents at issue in this action: U.S. Patent Nos. 6,115,053 (the "'053 patent") and 6,317,132 (the "'132 patent"). See Autodesk, Inc.'s Local Rule 56.1 Statement of Material Facts in Support of Its Motion for Summary Judgment ("Def. St.") ¶ 3; New York University's Response to Autodesk's Statement of Material Facts ("Pl. Opp'n St.") ¶ 3. These two patents both trace back to the same patent application, U.S. Patent Application Serial No. 08/284,799 (the "'799 application"). Def. St. ¶¶ 9-10; Pl. Opp'n St. ¶¶ 9-10.

The '799 application was filed on August 2, 1994. Def. St. ¶ 9; Pl. Opp'n St. ¶ 9. Nearly three years later, on April 14, 1997, PTO Examiner Joseph R. Burwell mailed a form called the "Final Office Action" in the '799 application to NYU's attorney-of-record, Eliot S. Gerber, Esq., at the firm of Wyatt, Gerber, Burke & Badie ("Wyatt Gerber"). Def. St. ¶ 11; Pl. Opp'n St. ¶ 11. The Final Office Action required NYU, if it wished to pursue approval of the '799 application to conclusion, to answer certain inquiries by July 14, 1997. Def. St. ¶ 11; Pl. Opp'n St. ¶ 11. Gerber, however, had previously transferred his files relating to the '799 application to attorney Chris Kolefas, Esq., at the firm of Kenyon & Kenyon, so when Gerber received the Final Office Action he forwarded it to Kolefas along with a cover letter dated April 16, 1997. Def. St. ¶ 12; Pl. Opp'n St. ¶ 12. Gerber also sent a copy of the cover letter, without the enclosure, to an individual named Patrick Franc, a member of NYU's Office of Industrial Liaison, who was the person at NYU responsible for the '799 application. Def. St. ¶ 12; Pl. Opp'n St. ¶ 12.

NYU did not file a response to the Final Office Action by the due date of July 14, 1997, or even by October 14, 1997, which marked the end of an extended filing period NYU could have obtained upon payment of a fee. Def. St. ¶ 14; Pl. Opp'n St. ¶ 14. The PTO's records show, moreover, that on December 5, 1997, Examiner Burwell telephoned Kolefas, who confirmed the abandonment. Def. St. ¶ 15; Pl. Opp'n St. ¶ 15. Accordingly, on December 8, 1997, the PTO duly issued a Notice of Abandonment, declaring that the '799 application had been abandoned as of July 14, 1997. Def. St. ¶¶ 14-15; Pl. Opp'n St. ¶¶ 14-15. The file copy of the notice included Examiner Burwell's handwritten note stating that "Examiner confirmed abandonment with Attorney Chris Kolefas by telephone 12/5/97." Def. St. ¶ 15; Pl. Opp'n St. ¶ 15; Declaration of Joel M. Freed dated March 28, 2007 ("Freed Decl."), Ex. I ("Prosecution History") at NYU004004; see also transcript, April 26, 2007, at 3-5.

It is undisputed that as of December, 1997, Kolefas was the attorney responsible for prosecuting the '799 application on behalf of NYU. Def. St. ¶ 16; Pl. Opp'n St. ¶ 16. "Several weeks" later, however, Kolefas left Kenyon & Kenyon, and no longer represented NYU at that point. Pl. Opp'n St. ¶ 16. In May 1998, Gary Abelev, Esq., also of Kenyon & Kenyon, took over the prosecution of the '799 application, but took no action at the time. Def. St. ¶ 18; Pl. Opp'n St. ¶ 18. Some six months later, however, on November 4, 1998, Abelev filed a petition to revive the '799 application, stating, in pertinent part:

Applicant hereby petitions to revive the above-identified abandoned application under 37 C.F.R. § 1.137(b). The application became unintentionally abandoned on July 14, 1997 for failure to timely respond to the Final Office Action mailed April 14, 1997 . . . . Applicant's failure to file a response was unintentional.

Prosecution History at NYU004024; Def. St. ¶ 18; Pl. Opp'n St. ¶ 18. The petition did not provide any reason or support for Abelev's representation that NYU's failure to file a response was "unintentional." Further, Abelev saw fit to make this representation in spite of the fact that, prior to filing the petition (as well as thereafter) he failed to contact Kolefas, who had previously confirmed abandonment to the PTO, or Gerber, who was listed as NYU's attorney of record on the Notice of Abandonment.*fn2 Def. St. ¶ 20; Pl. Opp'n St. ¶ 20.

In reliance on Abelev's representation, the PTO granted NYU's petition to revive in a decision dated September 15, 1999, which the PTO sent to Wyatt Gerber and copied to Kenyon & Kenyon. Prosecution History at NYU004029-30; Def. St. ¶ 21; Pl. Opp'n St. ¶ 21. The decision states, in pertinent part:

This is a decision on the petition, under 37 C.F.R. 1.137(b), filed November 4, 1998, to revive an unintentionally abandoned application.

The petition is GRANTED.

This application became abandoned for failure to reply timely to the Office action mailed April 14, 1997, which set a period for reply of three months. A Notice of Abandonment was mailed on December 8, 1997.

37 CFR 1.137(b)(3) requires a statement that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to 37 CFR 1.137(b) was unintentional. If the statement contained in the instant petition varies from the language required by 37 CFR 1.137(b)(3), the statement contained in the instant petition is being construed as the statement required by 37 CFR 1.137(b)(3) and petitioner must notify the Office if this is not a correct interpretation of the statement contained in the instant petition.

Prosecution History at NYU004029; Def. St. ¶ 21; Pl. Opp'n St. ¶ 21. NYU did not respond to the decision. Def. St. ¶ 22; Pl. Opp'n St. ¶ 22. If the PTO had not revived the '799 application, neither the '053 patent nor the '132 patent would have ...


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