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Odyssey Logistics & Tech. Corp. v. Iancu

Examiner’s Time to Petition PTAB for Rehearing Not Constrained to 63-Day Period

Odyssey Logistics & Tech. Corp. v. Iancu, __ F.3d __, 2020 WL 2601994 (Fed. Cir. May 22, 2020) (Lourie, Reyna, HUGHES) (E.D. Va.: Trenga) (3 of 5 stars)

Fed Cir affirms Rule 12 dismissal of three APA challenges to PTO actions taken during prosecution of Odyssey’s patent applications. As to the first challenge (a contention that the Board acted improperly by taking up a rehearing request by the examiner filed more than 63 days after the Board’s decision), the district court lacked subject matter jurisdiction because the PTO had not yet taken final action at the time of Odyssey’s district court complaint . The opinion describes how, though the Board had initially reversed the examiner’s rejections of Odyssey’s claims, the Examiner had filed a rehearing request “argu[ing] that the Board had applied an incorrect version of 35 U.S.C. § 102(e).” Op. at 3–4. Odyssey filed various responses, but filed its challenge in district court before the Board’s decision. In such circumstances, “[u]ntil the Board issues its rehearing decision, the PTO has not consummated its decision-making process and Odyssey’s rights and obligations in the ’678 patent [sic application?] have not been determined. Without such final action from the PTO, the APA does not entitle Odyssey to judicial review.” Op. at 7–8. That the examiner’ s rehearing request was not filed within the 63 day period in §§ 41.52 and 41.53 is not contradictory because those sections do not constrict the PTO’s time to seek rehearing, but the applicant’s. The opinion notes that § 41.35 gives the Director sua sponte authority to remand proceedings from the Board to the examiner. “If the Director may divest the Board of its authority over an appeal so long as he does not circumvent the applicant’s statutory right to appeal, the Director logically also may grant the Board authority to reconsider its appeal.” Op. at. 10. The opinion notes that, should the PTO’s delay in seeking rehearing cause unfair prejudice to the applicant, the applicant might be able to seek “otherwise-premature” relief in the courts, but that circumstance is not present here.

As to the second challenge (a contention that the PTO improperly dismissed a petition to designate new grounds in a separate application), the district court also lacked subject matter jurisdiction because Odyssey’s challenge was again based on a non-final agency action. The opinion notes that the dismissal of the petition “did not determine any rights or obligations or result in any legal consequences” for Odyssey. Op. at 10. That the case might have alternately been disposed of on mootness grounds did not require otherwise.

As to the third challenge (a facial challenge to the PTO’s 2011 amendments to its rules of practice in ex parte appeals), the district court also lacked subject matter jurisdiction because the challenge was time-barred under 28 U.S.C. § 2401. § 2401’s statute of limitations begins to run when the agency publishes the regulation. The opinion declines to determine whether a statement to that effect in Hire Order, 698 F.3d 168 (4th Cir. 2012), is dictum because the same holding is in Hyatt, 904 F.3d 1361 (Fed. Cir. 2018).

KEYWORDS: ADMINISTRATIVE PROCEDURE ACT; SUBJECT MATTER JURISDICTION; PETITION FOR REHEARING; ADMINISTRATIVE LAW