                   UNITED STATES DISTRICT COURT
                   FOR THE DISTRICT OF COLUMBIA
______________________________
                               )
ITERATIVE THERAPEUTICS, INC, )
                               )
          Plaintiff,           )
                               )
          v.                   )    Civil Action No. 09-1822 (RWR)
                               )
DAVID KAPPOS,                  )
                               )
          Defendant.           )
______________________________)


                        MEMORANDUM ORDER

     In light of the Federal Circuit’s decision in Wyeth v.

Kappos, 591 F.3d 1364 (Fed. Cir. 2010), the Director of the

United States Patent and Trademark Office (“USPTO”) has moved to

vacate a 263-day patent term adjustment it issued regarding a

patent that was assigned to Iterative Therapeutics, Inc. (“ITI”).

(“Def.’s Mot. for Vacatur of Patent Term Calc. and Remand to the

USPTO (“Def.’s Mot.”) at 1.)   The USPTO and the Department of

Justice have decided not to seek further appellate review of the

Wyeth opinion, and the USPTO has published in the Federal

Register an interim procedure by which patentees may request a

recalculation of the term adjustment for their patents.   The

procedure also could be applied to ITI’s request for a patent

term adjustment if the case were remanded.   (Def.’s Mot. at 2.)

ITI argues that it would be prejudiced by a remand, claiming it

would have no recourse to challenge an erroneous recalculation,

and speculating that there could be future third-party challenges
                                -2-

to the recalculation method used on remand causing more

litigation expense to ITI.

     ITI’s arguments are misplaced.   Even if exposure to a

potential future third-party challenge to a USPTO recalculation

were actually cognizable prejudice - - a proposition for which

ITI offers no support - - there is nothing that would immunize

from challenge a recalculation litigated in district court.

Preventing remand offers ITI no refuge as to that issue.    And,

any challenge that ITI may want to make to a USPTO recalculation

on remand can be brought in this court as jurisdiction over the

case will be retained here during the remand.1   Therefore, it is

hereby

     ORDERED that ITI’s existing patent term calculation be, and

hereby is, VACATED.   It is further

     ORDERED that this case be, and hereby is, REMANDED to the

USPTO for recalculation and adjustment of the disputed patent

term in accordance with the Wyeth opinion and the USPTO’s

published interim procedure for such calculations.   This court




     1
       Moreover, affording the agency charged in the first
instance with the duty to calculate patent terms the opportunity
to perform the recalculation would allow for a well-developed
record below for this court to review should ITI seek to
challenge the recalculation. To the extent ITI opposes remand
because it wants to “settle[] . . . this case expeditiously”
(Pl.’s Resp. to Order to Show Cause and Opp’n to Def.’s Mot.
at 4.), it can pursue settlement at any time regardless of the
forum in which its challenge is pending.
                               -3-

will retain jurisdiction to entertain any challenge to the

recalculation.

     SIGNED this 8th day of March, 2010.



                                              /s/
                                     RICHARD W. ROBERTS
                                     United States District Judge
