Hyatt v. United States Patent and Trademark Office et al

Filing 28

ORDER granting ECF No. #22 Motion for Summary Judgment; denying ECF No. #21 Motion for Summary Judgment; directing Clerk to enter judgment dismissing this action for lack of subject matter jurisdiction and close case. Signed by Judge Robert C. Jones on 2/17/2017. (Copies have been distributed pursuant to the NEF - KR)

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1 2 3 UNITED STATES DISTRICT COURT 4 DISTRICT OF NEVADA 5 6 7 8 9 10 11 ______________________________________ ) ) GILBERT P. HYATT et al. ) ) Plaintiffs, ) ) vs. ) ) U.S. PATENT & TRADEMARK OFFICE et ) al., ) ) Defendants. ) 2:16-cv-01490-RCJ-PAL ORDER 12 13 This case arises out of the reopening of prosecution of certain patent applications before 14 the U.S. Patent and Trademark Office (“USPTO”). Pending before the Court are cross motions 15 for summary judgment. 16 I. FACTS AND PROCEDURAL HISTORY 17 Plaintiffs Gilbert Hyatt and the American Association for Equitable Treatment 1 have 18 sued the USPTO and Director Michelle Lee in this Court. The Complaint lists five causes of 19 action arising out of the alleged unlawfulness of section 1207.04 of the Manual of Patent 20 Examining Procedure (“MPEP”), under which an examiner may “reopen prosecution to enter a 21 new ground of rejection in response to [an appeal to the Patent Trial and Appeal Board].” MPEP 22 § 1207.04. Plaintiffs allege that § 1207.04 enables the USPTO to repeatedly reopen prosecution 23 24 1 Hyatt founded this entity in 2016. 1 of 4 1 of finally rejected claims upon appeal, thereby frustrating appellate review by the Patent Trial 2 and Appeals Board (“PTAB”) and ultimately the federal courts. Plaintiffs claim in five related 3 causes of action that § 1207.04 is unlawful under the APA and/or the Patent Act or that at a 4 minimum Defendants’ actions in this case violate the APA. The parties have filed cross motions 5 for summary judgment. 6 II. DISCUSSION 7 Defendants note that Hyatt currently has approximately 400 patent applications pending, 8 with a total of over 115,000 claims, all filed in or before 1995, and that Hyatt has filed so many 9 amendments to his interrelated claims that the USPTO has 14 patent examiners dedicated full 10 time to examining his applications. Defendants argue that the 2013 decision to reopen 11 prosecution of 80 of his approximately 400 applications was made in order to ensure consistent 12 treatment between the many interrelated applications, not to frustrate appellate review. 13 Defendants ask the Court to grant summary judgment alternatively based on: (1) lack of subject 14 matter jurisdiction; (2) claim preclusion; (3) the statute of limitations; and (4) the merits. 15 Hyatt previously sued Defendants in this District in 2014, complaining of the delay in 16 appellate review as to the same 80 applications at issue here (“the Previous Action”). (See 17 Compl., ECF No. 1 in Case No. 2:14-cv-311). Judge George transferred the Previous Action to 18 the Eastern District of Virginia, which shared exclusive jurisdiction with the Court of Appeals. 19 (See Order, ECF No. 29 in Case No. 2:14-cv-311). That court granted summary judgment to 20 Defendants on the merits. See Hyatt v. USPTO, 146 F. Supp. 3d 771, 787 (E.D. Va. 2015). 21 Plaintiff did not appeal. Although the Complaint in the Previous Action did not specifically refer 22 to the reopening of Hyatt’s applications under MPEP § 1207.04, but only to the delay in 23 24 2 of 4 1 prosecution and appeal generally, when granting summary judgment against the claims, the court 2 discussed the reopening of prosecution generally and cited § 1207.04 in particular: 3 4 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. 5 6 7 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. 8 Id. at 785–86 & n.33 (citing 37 C.F.R. §§ 1.103(e), 41.39(a)(2); MPEP § 1207.04) (footnote 9 omitted; emphasis added). Accordingly, the present claims are precluded. 10 Moreover, as noted by Judge George in the Previous Action, the courts of this District 11 simply have no subject matter jurisdiction to determine Plaintiffs’ claims. See Pub. Util. Comm’r 12 of Or. v. Bonneville Power Admin., 767 F.2d 622, 626 (9th Cir. 1985) (Kennedy, J.) (citing 13 Telecomms. Research & Action Ctr. v. FCC, 750 F.2d 70 (D.C. Cir. 1984)) (“[W]here a statute 14 commits review of final agency action to the court of appeals, any suit seeking relief that might 15 affect the court’s future jurisdiction is subject to its exclusive review.”). Because an order 16 invalidating the reopening of prosecution under § 1207.04 would affect the jurisdiction of the 17 PTAB to review the applications at issue and ultimately the jurisdiction of the U.S. District Court 18 for the Eastern District of Virginia or the U.S. Court of Appeals for the Federal Circuit to further 19 review the applications, see 35 U.S.C. §§ 144–45, the latter courts have exclusive jurisdiction 20 over the present claims. The Court must therefore either dismiss the case for lack of subject 21 matter jurisdiction or transfer it to one of those courts. The Court will not burden either of those 22 courts with this likely precluded matter. If Plaintiffs wish to refile in one of those courts, they 23 may do so on their own initiative. 24 3 of 4 CONCLUSION 1 2 3 4 5 6 7 8 9 IT IS HEREBY ORDERED that the Motion for Summary Judgment (ECF No. 22) is GRANTED. IT IS FURTHER ORDERED that the Motion for Summary Judgment (ECF No. 21) is DENIED. IT IS FURTHER ORDERED that the Clerk shall enter judgment dismissing this action for lack of subject matter jurisdiction and close the case. IT IS SO ORDERED. th DATED: 13th day of of February, 2017. Dated thisThis 17 dayJanuary, 2017. 10 11 _____________________________________ ROBERT C. JONES United States District Judge 12 13 14 15 16 17 18 19 20 21 22 23 24 4 of 4

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