Unconvincingly Unintentional – Revival Undone vs. NYU patents.

Judge Rakoff (S.D.N.Y.) granted summary judgment, effectively invalidating patents granted to NYU, which were asserted against Autodesk.  Not often will you see patents nullified based on the Administrative Procedure Act, 5 U.S.C. §701.  NYU did not respond timely to a final Office Action, and the Examiner wrote a note that a call to the applicant’s attorney confirmed abandonment.  About a year later, a petition to revive was filed, claiming that abandonment was “unintentional.”  The filing was made in routine format, without much explanation, and it was granted without much explanation.  The Judge held that the agency could not “find that NYU’s decision not to take action …for the entire [one-year] period …was ‘unintentional.’”

The ruling reviewed the administrative record, and found reasons for revival, or for claiming an “unintentional” action, lacking.  Also lacking was a stated explanation for the agency’s decision to grant the petition and revive.  As a result, the district court granted summary judgment to defendant “Autodesk dismissing NYU’s Complaint in its entirety.”  What struck me as odd was why, under the APA, the Judge did not remand the matter to the USPTO to provide an opportunity for it to state an explanation for granting the petition to revive.

In the typical APA review case, the lack of support for the agency’s decision always leads to a remand, not a final decision in the District Court.  “If that finding is not sustainable on the administrative record made, then the Comptroller’s decision must be vacated and the matter remanded to him for further consideration.”  Camp v. Pitts, 411 U.S. 138 (1973) and Vt. Yankee, 435 U.S. at 549.  Where the agency’s lack of a sufficient explanation overwhelms the district court’s review, then remand is typical under the APA.  “If the record before the agency does not support the agency action, if the agency has not considered all relevant factors, or if the reviewing court simply cannot evaluate the challenged agency action on the basis of the record before it, the proper course, except in rare circumstances, is to remand to the agency for additional investigation or explanation.”  Florida P. & L. Co. v. Lorion, 470 U.S. 729, 744 (1985).

In those instances where an application went abandoned, and a petition to revive was necessary, the focus was on who would accept blame and pay the associated costs.  I confess never to thinking that the petition, even if granted, might result in the patent being unenforceable or invalid.  Never too did receipt of a one-line order granting revival ever provoke worry that the lack of explanation could result in the later-issued patent being useless.  More typically, it provoked a sigh of relief.