United States District Court, E.D. Virginia, Alexandria Division
GILBERT P. HYATT, Plaintiff,
UNITED STATES PATENT AND TRADEMARK OFFICE, et al., Defendants.
T. S. ELLIS, III, District Judge.
In this APA § 706(1) suit, plaintiff, an engineer-inventor, seeks a declaration that the United States Patent and Trademark Office ("PTO") has unreasonably delayed final agency action on 80 of his 399 pending patent applications. The 80 patent applications that are the subject of this suit were originally filed with the PTO in the months prior to June 8, 1995. Now, twenty years later, the PTO has yet to take any final agency action granting or denying any of the 80 applications. Thus, plaintiff in this suit seeks (i) a declaration pursuant to the Declaratory Judgment Act, 28 U.S.C. § 2201, that the PTO's action has been unreasonably delayed in violation of § 706(1) of the APA, and (ii) an injunction compelling the PTO to issue final action on his 80 patent applications. More specifically, plaintiff seeks an order (i) enjoining the PTO from reopening prosecution of his applications and (ii) compelling the PTO Appeal Board to render final decisions on these applications at a rate of at least one per month beginning three months from the date of judgment in this case.
Defendants have moved to dismiss the action for lack of subject matter jurisdiction on the ground that the APA does not authorize judicial review in these circumstances because there is, at this time, no administrative action that is "legally required. " Norton v. S. Utah Wilderness Alliance ("SUWA"), 542 U.S. 55, 62 (2004) (emphasis in original). Alternatively, defendants argue that the claims in plaintiff's complaint are unripe for judicial review and are otherwise unfit candidates for the exercise of discretionary declaratory judgment jurisdiction. Accordingly, defendants' threshold motion presents the following questions:
(1) Whether subject matter jurisdiction exists to decide whether examination of plaintiff's patent applications has been "unreasonably delayed" pursuant to § 706(1) of the APA;
(2) Whether plaintiff's claims are ripe for judicial review; and
(3) Whether plaintiff's claims warrant the discretionary exercise of declaratory judgment jurisdiction.
For the reasons that follow, defendants' motion must be denied.
A brief overview of the PTO's patent examination process provides useful context for the resolution of the parties' dispute.
The PTO is responsible for "the granting and issuing of patents, " which it does after conducting a thorough examination of patent applications in a process known as prosecution. 35 U.S.C. §§ 2(a)(1), 131. Prosecution begins with the submission of a patent application containing a written description of the invention to be patented, the manner and process of making and using it-called the specification-and concluding with "one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor... regards as the invention." 35 U.S.C. §§ 111, 112; Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.3d 1251, 1257 (Fed. Cir. 1989) (noting that the claims "provide the metes and bounds of the right which the patent confers on the patentee to exclude others").
On receiving a patent application, the PTO is statutorily required to "cause an examination to be made of the application and the alleged new invention." 35 U.S.C. § 131. Typically, such an examination is undertaken by a patent examiner with relevant scientific or technical competence, who reviews each proposed claim in the application for novelty, support in the specification's written description, and compliance with other patentability requirements and statutes. 37 C.F.R. § 1.104(a)(1). After this initial examination, the examiner sends the applicant an "office action, " which may allow or reject the patent claims. 37 C.F.R. § 1.111(a). If any claims are rejected, the applicant may respond with amendments, evidence of patentability, arguments in favor of patentability, or some combination thereof. 37 C.F.R. § 1.111(b) (stating that the applicant's reply must "specifically point out supposed errors in the examiner's action and must reply to every ground of objection and rejection in the prior Office action"). In the course of prosecution, the examiner may issue a Requirement or Information directing the applicant to submit "such information as may be reasonably necessary to properly examine or treat the matter." 37 C.F.R. § 1.105(a)(1). In sum, patent examination is typically a back-and-forth, iterative process resulting ultimately in the patent examiner allowing or rejecting one or more of the claims in the patent application. See 4 West's Fed. Admin. Prac. § 3934 ("[W]hile the normal prosecution of an application is denominated an ex pane proceeding, it is, in fact, a two-sided affair.").
In the event that one or more of the claims in the patent application have been twice rejected by the patent examiner, the applicant may appeal to the PTO Appeal Board. 35 U.S.C. § 134; 37 C.F.R. § 41.31. To appeal, the applicant must file a notice of appeal and then an appeal brief within two months of filing the notice. 37 C.F.R. §§ 41.31(a)(1), 41.37(a). Upon the filing of an appeal brief, the patent examiner may, "within such time as may be directed by the Director, " file an "examiner's answer" setting forth the grounds on which the application was rejected. 37 C.F.R. § 41.39(a). Section 1207.02 of the Manual of Patent Examination Procedure ("MPEP") recommends that a patent examiner "should furnish" this answer "within 2 months after the receipt of the [appeal] brief by the petitioner." But there is, significantly, no firm statutory or regulatory deadline for the filing of the examiner's answer. Thus, an applicant's appeal remains, in effect, in limbo unless and until the examiner files his answer. Once the answer is filed, the applicant must file a reply within two months. 37 C.F.R. § 41.41(a). Pursuant to PTO regulations, jurisdiction over the appeal does not pass to the Appeal Board until the filing of the applicant's reply brief or the expiration of time in which to file such a brief. 37 C.F.R. § 41.35(a). It is worth noting, therefore, that because there is no deadline or requirement for an examiner to file an answer, the examiner can delay or, indeed, halt the appeal process simply by failing to file an answer.
Nor is this the sole means by which the appeal process can be stopped. After an applicant has filed an appeal brief but before jurisdiction passes to the Appeal Board, either the applicant or the examiner may re-open examination and prevent the Appeal Board from gaining jurisdiction over the application. See 37 C.F.R. § 41.35(b). In either case, the Appeal Board does not obtain jurisdiction. In the event that the examination is not reopened and the Appeal Board affirms the examiner's rejection, that decision constitutes a final agency action which the patent applicant may then appeal to the Federal Circuit or challenge in a civil action in federal district court. See 35 U.S.C. §§ 141(a), 145. If the Appeal Board disagrees with the ...