904 F.3d 1361
Fed. Cir.2018Background
- Gilbert Hyatt is an inventor with >70 issued patents and ~400 pending applications filed before June 8, 1995; numerous amendments produced ~115,000 claims by 2015.
- PTO examiners repeatedly reopened prosecution after Hyatt filed appeal briefs; examiners often did not file answers, preventing PTAB jurisdiction over some appeals.
- PTO issued special "Requirements" in 2013 limiting claims per family and requiring priority/disclosure selections; litigation over those Requirements produced a prior Fed. Cir. decision upholding the special rules.
- Hyatt petitioned the PTO under 5 U.S.C. § 553(e) (petition for rulemaking) to repeal or declare unenforceable MPEP § 1207.04 (which authorizes reopening prosecution after an appeal brief). The PTO denied the petition in 2015.
- Hyatt sued under the APA in 2016 challenging the denial as arbitrary, beyond statutory authority, and adopted without notice-and-comment; the district court dismissed for lack of jurisdiction and granted PTO summary judgment; Hyatt appealed.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether district court had jurisdiction over APA challenge to denial of petition for rulemaking | Hyatt: District court may hear APA challenge; denial raises substantial patent-law question | PTO: Exclusive review of PTAB/final application decisions in this court/E.D. Va. displaces district court jurisdiction | District court had jurisdiction; § 141/§ 145 exclusive review of PTAB decisions does not displace APA challenges to rulemaking denials |
| Whether Hyatt's claim is barred by claim preclusion from his earlier unreasonable-delay suit | Hyatt: Present challenge arises from distinct facts (PTO denial in 2015) and seeks forward-looking relief, so not precluded | PTO: Prior suit could have included MPEP § 1207.04 challenge; same transactional facts | Not precluded — different transactions in time, origin, motivation; Restatement §24 analysis favors Hyatt |
| Whether Hyatt’s challenges are time-barred under 28 U.S.C. § 2401(a) | Hyatt: Some agency actions/amendments (2011, 2013, 2014) restarted limitations; petition denial in 2015 is adverse application | PTO: Rule adoption in 2005 set accrual; later clarifications/related actions did not substantively alter or renew the rule | Procedural notice-and-comment and C.F.R.-conflict claims time-barred (accrued in 2005); only statutory-authority claim (35 U.S.C. §6(b)(1)) was timely (accrued on 2015 denial) |
| Whether MPEP § 1207.04 violates 35 U.S.C. § 6(b)(1) (right to PTAB review on appeal) | Hyatt: §6(b)(1) "shall" requires PTAB to review appeals; reopening prosecution after an appeal circumvents statutory right to appeal | PTO: §6(b)(1) does not guarantee merits review; Congress permits procedural conditions (fees, timing); reopening prosecution is a permissible procedural condition and does not bar appeal | Held for PTO: Plain text does not forbid procedural conditions that affect whether PTAB reaches the merits; reopening prosecution does not violate §6(b)(1) |
Key Cases Cited
- Hyatt v. U.S. Patent & Trademark Office, 797 F.3d 1374 (Fed. Cir.) (upholding PTO’s special disclosure Requirements for Hyatt’s applications)
- Telecommunications Research & Action Ctr. v. FCC, 750 F.2d 70 (D.C. Cir.) (discusses exclusive appellate review and district-court limits on interlocutory challenges)
- Wind River Min. Corp. v. United States, 946 F.2d 710 (9th Cir.) (accrual rules for substantive vs. procedural rule challenges)
- Nw. Envtl. Advocates v. EPA, 537 F.3d 1006 (9th Cir.) (agency denial of petition for rulemaking is an adverse application for accrual purposes)
- Preminger v. Sec’y of Veterans Affairs, 632 F.3d 1345 (Fed. Cir.) (standard for review of agency action under the APA)