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Hyatt v. U.S. Patent & Trademark Office

Fed Cir Confirms Examiners’ Ability to Reopen Prosecution in Response to Opening PTAB Brief

Hyatt v. U.S. Patent & Trademark Office904 F.3d 1361 (Fed. Cir. Sept. 24, 2018) (Reyna, Wallach, HUGHES) (D. Nev.: Jones) (2 of 5 stars)

Fed Cir reverses dismissal for lack of subject matter jurisdiction, affirms summary judgment for the PTO. In this case, Mr. Hyatt presented an APA challenge to the PTO’s denial of a petition he had tendered seeking either repeal of MPEP § 1207.04 (relating to an examiner’s authority to reopen prosecution in response to an applicant’s PTAB appeal brief), or a declaration that the section was unenforceable. The district court had subject matter jurisdiction over such a case under 28 U.S.C. § 1331 (original jurisdiction of civil actions arising under federal law), as well as § 1338(a) (original jurisdiction over cases raising a substantial question of patent law). Telecommunications Research & Action Center, 750 F.2d 70 (D.C. Cir. 1984), was not contrary because the PTO’s denial of Mr. Hyatt’s petition was not an “intermediate action taken in the course of proceedings that would culminate in a final agency action exclusively reviewable by this court and the Eastern Virginia district court.” 904 F.3d at 1370.

The district court also erred in reasoning that claim preclusion barred Mr. Hyatt’s suit. A previous case from Mr. Hyatt had contended (unsuccessfully) that the PTO unreasonably delayed examination of various rejected applications by reopening prosecution in response to his PTAB appeal briefs, rather than filing answers. While MPEP § 1207.04 relates to the reopening of examination, “Mr. Hyatt’s claims in this case do not share an identity with his unreasonable delay claims” sufficient to invoke claim preclusion. The opinion discusses how Mr. Hyatt’s petition for rulemaking followed a separate administrative path than his patent prosecution or his unreasonable delay case.

Summary judgment for the PTO was nevertheless appropriate. Two of Mr. Hyatt’s claims against MPEP § 1207.04 (a claim that the PTO failed to give sufficient public notice/comment opportunities, and a claim that the MPEP section conflicts with the CFR) are time-barred, because they are non-substantive (i.e., they do not allege that the PTO acted in excess of its constitutional or statutory authority), and were brought more than six years after promulgation the MPEP section. The remaining claim (that MPEP § 1207.04 violates 35 U.S.C. § 6(b)(1)) is timely, but Mr. Hyatt cannot prevail as a matter of law. § 6(b)(1) “does not require the PTAB to reach the merits of every appeal that is filed,” and the PTO may add additional “procedural conditions that must be satisfied prior to PTAB review.” 904 F.3d at 1374. The opinion rejects Mr. Hyatt’s argument that MPEP § 1207.04 somehow deprives patent applicants of their right of appeal.

KEYWORDS: ADMINISTRATIVE LAW; ADMINISTRATIVE PROCEDURES ACT; MANUAL OF PATENT EXAMINATION; PATENT TRIAL AND APPEAL BOARD; PATENT PROSECUTION