Monday, September 24, 2018

Hyatt wins legal point at CAFC, but loses anyway

Gilbert Hyatt sued the United States Patent and
Trademark Office alleging that the PTO acted unlawfully
in denying his petition for rulemaking. Mr. Hyatt now
appeals from the district court’s grant of the PTO’s motion
for summary judgment and dismissal of his claims for
lack of subject matter jurisdiction. We reverse the district
court’s dismissal for lack of subject matter jurisdiction.
Because Mr. Hyatt’s claims are either time-barred or
reliant on mistaken statutory interpretation, however, we
affirm on alternate grounds the district court’s grant of
summary judgment.

Of note:

In contrast to the agency actions challenged in those
cases, 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. The process for petitioning the PTO for rulemaking
is completely separate from the patent application examination
process that culminates in final PTAB decisions.
Thus, we do not need to exercise exclusive jurisdiction
over denials of petitions for rulemaking in order to protect
our future jurisdiction. If another court granted Mr.
Hyatt’s requested relief and prohibited PTO examiners
from reopening prosecution of applications after an appeal
brief has been filed, the prosecution process would
change, but our ability to review final PTAB decisions
would remain unaffected.

Accordingly, the exclusive jurisdiction of this court
and the Eastern Virginia district court to review final
PTAB decisions under § 141 and § 145 does not displace
the district court’s jurisdiction over APA challenges to the
PTO’s denial of a petition for rulemaking.

Of the time bar issue

Because his other claims are time-barred, we only
consider the merits of Mr. Hyatt’s claim that the PTO
unlawfully denied his petition for rulemaking because
MPEP § 1207.04 violates 35 U.S.C. § 6(b)(1). Section
6(b)(1) requires that the PTAB “shall — (1) on written
appeal of an applicant, review adverse decisions of examiners
upon applications for patents pursuant to section
134(a).” Under 35 U.S.C. § 134(a), “[a]n applicant for a
patent, any of whose claims has been twice rejected, may
appeal from the decision of the primary examiner to the
Patent Trial and Appeal Board, having once paid the fee
for such appeal.”


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