GILBERT P. HYATT, AMERICAN ASSOCIATION FOR EQUITABLE TREATMENT, INC., Plaintiffs-Appellants
UNITED STATES PATENT AND TRADEMARK OFFICE, ANDREI IANCU, IN HIS OFFICIAL CAPACITY AS UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE, Defendants-Appellees
from the United States District Court for the District of
Nevada in No. 2:16-cv-01490-RCJ-PAL, Judge Robert Clive
M. Grossman, Baker & Hostetler LLP, Washington, DC,
argued for plaintiffs-appellants. Also represented by Mark W.
R. Silfen, Office of the Solicitor, United States Patent and
Trademark Office, Alexandria, VA, argued for
defendants-appellees. Also represented by Thomas W. Krause,
Robert J. McManus.
Reyna, Wallach, and Hughes, Circuit Judges.
Hughes, Circuit Judge.
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.
Hyatt is the named inventor on more than 70 issued patents
and approximately 400 pending patent applications, all of
which were filed before June 8, 1995. Due to Mr. Hyatt's
numerous amendments, those pending applications contained
approximately 115, 000 total claims as of August 2015. Each
of these applications incorporates by reference, and claims
priority from, numerous previously-filed applications dating
back to the early 1970s. In October 2012, the PTO dedicated
twelve fulltime patent examiners to the sole task of
examining Mr. Hyatt's applications. By 2015, that number
had increased to fourteen.
PTO's examination of these patents has proven slow going.
Beginning in the mid-2000s, the PTO started issuing final
rejections for some applications, prompting Mr. Hyatt to
appeal the rejections to the Patent Trial and Appeal Board
(PTAB). Upon an applicant's filing of an appeal brief
before the Board, the patent examiner may file an
examiner's answer setting forth the grounds on which the
patent was rejected or adding a new ground of rejection. 37
C.F.R. § 41.39(a). But there is no statutory or
regulatory deadline for filing an answer. In Mr. Hyatt's
case, the examiners never filed answers to his briefs, which
prevented the PTAB from acquiring jurisdiction over his
appeals. See 37 C.F.R. § 41.35(a).
2013, the PTO issued a series of formal office actions,
called "Requirements," intended to accelerate
examination of Mr. Hyatt's claims. These Requirements
instructed Mr. Hyatt to limit the number of claims from each
patent family to 600 absent a showing that more claims were
necessary, identify the earliest possible priority date and
supporting disclosure for each selected claim, and present a
copy of the selected claims to the PTO. Although Mr. Hyatt
challenged the PTO's authority to issue these
Requirements, we held that the special circumstances of Mr.
Hyatt's applications justified the unique disclosure
requirements. Hyatt v. U.S. Patent & Trademark
Office, 797 F.3d 1374, 1385 (Fed. Cir. 2015). Following
issuance of the Requirements, the PTO reopened prosecution of
80 applications that its examiners had previously rejected.
February 2014, Mr. Hyatt responded to the reopening of his 80
applications with a suit in the U.S. District Court for the
District of Nevada alleging the PTO unreasonably delayed
examination of his applications by reopening prosecution
rather than letting the PTAB hear his appeals. See Hyatt
v. U.S. Patent & Trademark Office, No.
2:14-CV-00311-LDG, 2014 WL 4829538, at *1 (D. Nev. Sept. 30,
2014). The Nevada district court determined that it lacked
jurisdiction over Mr. Hyatt's claims and transferred his
case to the U.S. District Court for the Eastern District of
Virginia. Id. In November 2015, the Eastern Virginia
district court granted summary judgment for the PTO.
Hyatt v. U.S. Patent & Trademark
Office, 146 F.Supp.3d 771, 787 (E.D. Va. 2015). Mr.
Hyatt did not appeal the court's decision.
his unreasonable delay case was pending before the Nevada
district court, Mr. Hyatt filed a petition for rulemaking
with the PTO pursuant to 5 U.S.C. § 553(e). His petition
requested that the PTO either promulgate a rule repealing
Manual of Patent Examining Procedure (MPEP) § 1207.04 or
declare that MPEP provision unenforceable. Section 1207.04
describes an examiner's ability to, "with approval
from the supervisory patent examiner, reopen prosecution to
enter a new ground of rejection in response to
appellant's brief." This section provides an
alternative to MPEP § 1207.03, which allows examiners to
include new grounds of rejection in their answers to an
applicant's appeal brief. To avoid abandonment of an
application following a reopening of prosecution, the
applicant must file a reply to the office action reopening
prosecution or initiate a new appeal to the PTAB by filing a
new notice of appeal. MPEP § 1207.04.
Hyatt's petition raised three arguments in support of
repealing MPEP § 1207.04. He argued that MPEP §
1207.04 (1) conflicts with 35 U.S.C. § 6(b)(1)'s
creation of a right for applicants to appeal rejections; (2)
conflicts with 37 C.F.R. § 41.39's implicit
disallowance of prosecution reopening after an
applicant's filing of an appeal brief; and (3) was
improperly adopted without notice-and-comment rulemaking. In
September 2014, the PTO denied Mr. Hyatt's petition. He
subsequently requested reconsideration of that denial, which
the PTO denied in December 2015.
2016, Mr. Hyatt filed this suit challenging the denial of his
petition for rulemaking in Nevada district court under the
Administrative Procedure Act. See 5 U.S.C.
§§ 701-706. Mr. Hyatt's complaint primarily
alleges, for the same reasons raised in his petition for
rulemaking, that the PTO's adoption of MPEP §
1207.04 was arbitrary and capricious, in excess of statutory
authority, and without observance of procedure required by
law. Accordingly, he alleges that the PTO's denial of his
request to rescind MPEP § 1207.04 was similarly
arbitrary and capricious, an abuse of discretion, or
otherwise not in accordance with law.
district court granted summary judgment to the PTO and
dismissed all of Mr. Hyatt's claims, determining that it
lacked subject matter jurisdiction over them. In choosing to
dismiss the case rather than transfer it to a court with the
requisite jurisdiction, the district court reasoned that Mr.
Hyatt's challenges to MPEP § 1207.04 were
"likely precluded" because he could have raised the
same arguments in his prior ...