1 F. Supp. 3d 927
N.D. Iowa2014Background
- TTI sues for judicial review of PTO’s ruling that EDNA’s IPReex request was filed on Sept. 14, 2012 under Rule 183; TTI contends the true filing date was Sept. 16, 2012.”
- “EDNA’s IPReex request concerns the ’372 patent; EDNA’s filing preceded the IPReex deadline under the old statute.”
- “TTI alleges violations of due process and seeks APA relief; PTO denied TTI’s Rule 181 petition and invoked Rule 183.”
- “The Director moved to dismiss under Rule 12(b)(1) as a § 701(a)(2) bar, but the court analyzes under Rule 12(b)(6).”
- “The court ultimately dismisses for failure to state a claim, finding § 701(a)(2) bars judicial review of the challenged action, and TTI’s due process claim is not colorable.”
- “Stay petition on EDNA’s IPReex is moot after dismissal.”
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Rule 183 decision falls under § 701(a)(2) discretion. | TTI argues § 701(a)(2) applies generally only where statutes provide no law to apply. | Director contends Rule 183 decisions are committed to agency discretion by law. | Rule 183 decision is within § 701(a)(2); dismiss for failure to state a claim. |
| Whether the court has subject-matter jurisdiction or should dismiss for lack of it. | TTI asserts APA review is available; argues proper jurisdiction under 28 U.S.C. § 1331. | Director asserts lack of jurisdiction under § 701(a)(2). | Subject-matter jurisdiction exists but claim is barred by § 701(a)(2); dismissed. |
| Whether TTI’s due process claim is colorable and can circumvent § 701(a)(2). | TTI claims lack of notice and unfair adjustment of filing date violated due process. | Due process claim is not colorable and cloaks an abuse-of-discretion argument. | Due process claim not colorable; dismissed. |
| Whether the 12(b)(6) standard governs the dismissal rather than 12(b)(1). | TTI asserts a facial challenge; argues for APA review. | Director maintains discretionary action; argues 12(b)(6) controls given § 701(a)(2). | Court applies Rule 12(b)(6) standards to dismiss; finds no cognizable claim. |
| Whether the stay of EDNA’s IPReex given for review is moot after dismissal. | TTI seeks stay pending judicial review. | Moot post-dismissal. | Stay request moot; dismissal confirmed. |
Key Cases Cited
- Tamenut v. Mukasey, 521 F.3d 1000 (8th Cir. 2008) (§ 701(a)(2) exception applicable to agency decisions with no guiding standards; unreviewable.)
- Ochoa v. Holder, 604 F.3d 546 (8th Cir. 2010) (§ 701(a)(2) excludes review when agency action has no meaningful standard to apply.)
- Yeutter, 914 F.2d 1031 (8th Cir. 1990) (agency expertise approach rejected; focus on statutory standards.)
- Liadov, 518 F.3d 1003 (8th Cir. 2008) (BIA self-certification and extraordinary circumstances; § 701(a)(2) analysis.)
- Friends of Norbeck v. U.S. Forest Serv., 661 F.3d 969 (8th Cir. 2011) (§ 701(a)(2) exception applied or not; context-specific standards.)
- Burandt v. Dudas, 528 F.3d 1329 (Fed. Cir. 2008) (Rule 183 discretionary; not reviewable under § 701(a)(2) context.)