United States District Court, D. Nevada
GILBERT P. HYATT et al. Plaintiffs,
U.S. PATENT & TRADEMARK OFFICE et al., Defendants.
C. JONES United States District Judge
case arises out of the reopening of prosecution of certain
patent applications before the U.S. Patent and Trademark
Office (“USPTO”). Pending before the Court are
cross motions for summary judgment.
FACTS AND PROCEDURAL HISTORY
Gilbert Hyatt and the American Association for Equitable
Treatment have sued the USPTO and Director Michelle
Lee in this Court. The Complaint lists five causes of action
arising out of the alleged unlawfulness of section 1207.04 of
the Manual of Patent Examining Procedure
(“MPEP”), under which an examiner may
“reopen prosecution to enter a new ground of rejection
in response to [an appeal to the Patent Trial and Appeal
Board].” MPEP § 1207.04. Plaintiffs allege that
§ 1207.04 enables the USPTO to repeatedly reopen
prosecution of finally rejected claims upon appeal, thereby
frustrating appellate review by the Patent Trial and Appeals
Board (“PTAB”) and ultimately the federal courts.
Plaintiffs claim in five related causes of action that §
1207.04 is unlawful under the APA and/or the Patent Act or
that at a minimum Defendants' actions in this case
violate the APA. The parties have filed cross motions for
note that Hyatt currently has approximately 400 patent
applications pending, with a total of over 115, 000 claims,
all filed in or before 1995, and that Hyatt has filed so many
amendments to his interrelated claims that the USPTO has 14
patent examiners dedicated full time to examining his
applications. Defendants argue that the 2013 decision to
reopen prosecution of 80 of his approximately 400
applications was made in order to ensure consistent treatment
between the many interrelated applications, not to frustrate
appellate review. Defendants ask the Court to grant summary
judgment alternatively based on: (1) lack of subject matter
jurisdiction; (2) claim preclusion; (3) the statute of
limitations; and (4) the merits.
previously sued Defendants in this District in 2014,
complaining of the delay in appellate review as to the same
80 applications at issue here (“the Previous
Action”). (See Compl., ECF No. 1 in Case No.
2:14-cv-311). Judge George transferred the Previous Action to
the Eastern District of Virginia, which shared exclusive
jurisdiction with the Court of Appeals. (See Order,
ECF No. 29 in Case No. 2:14-cv-311). That court granted
summary judgment to Defendants on the merits. See Hyatt
v. USPTO, 146 F.Supp.3d 771, 787 (E.D. Va. 2015).
Plaintiff did not appeal. Although the Complaint in the
Previous Action did not specifically refer to the reopening
of Hyatt's applications under MPEP § 1207.04, but
only to the delay in prosecution and appeal generally, when
granting summary judgment against the claims, the court
discussed the reopening of prosecution generally and cited
§ 1207.04 in particular:
Plaintiff has no right to an examination free from
suspensions, new grounds for rejection, or reopened
prosecution; plaintiff's right is merely to an
examination of his patent applications. Simply put, the
remedy for unreasonable delay under § 706(1) is action,
not preferential treatment.
Because the statutorily required action-examination of
plaintiff's 80 patent applications in issue-is already
actively underway, there is nothing for a court to compel.
The absence of a remedy eliminates the need to determine
whether past delays, if any, were unreasonable.
Id. at 785-86 & n.33 (citing 37 C.F.R.
§§ 1.103(e), 41.39(a)(2); MPEP § 1207.04)
(footnote omitted; emphasis added). Accordingly, the present
claims are precluded.
as noted by Judge George in the Previous Action, the courts
of this District simply have no subject matter jurisdiction
to determine Plaintiffs' claims. See Pub. Util.
Comm'r of Or. v. Bonneville Power Admin.,
767 F.2d 622, 626 (9th Cir. 1985) (Kennedy, J.) (citing
Telecomms. Research & Action Ctr. v. FCC, 750
F.2d 70 (D.C. Cir. 1984)) (“[W]here a statute commits
review of final agency action to the court of appeals, any
suit seeking relief that might affect the court's future
jurisdiction is subject to its exclusive review.”).
Because an order invalidating the reopening of prosecution
under § 1207.04 would affect the jurisdiction of the
PTAB to review the applications at issue and ultimately the
jurisdiction of the U.S. District Court for the Eastern
District of Virginia or the U.S. Court of Appeals for the
Federal Circuit to further review the applications,
see 35 U.S.C. §§ 144-45, the latter courts
have exclusive jurisdiction over the present claims. The
Court must therefore either dismiss the case for lack of
subject matter jurisdiction or transfer it to one of those
courts. The Court will not burden either of those courts with
this likely precluded matter. If Plaintiffs wish to refile in
one of those courts, they may do so on their own initiative.
HEREBY ORDERED that the Motion for Summary Judgment (ECF No.
22) is GRANTED.
FURTHER ORDERED that the Motion for Summary Judgment ...