HYATT v. UNITED STATES PATENT AND TRADEMARK OFFICE, Appeal No. 2017-1722 (Fed. Cir. September 24, 2018).  Before Reyna, Wallach, and Hughes.  Appealed from D. Nev. (Judge Jones).  (Subject Matter Jurisdiction)


Hyatt is the named inventor on more than 70 patents and about 400 pending applications, all of which were filed before June 8, 1995.  The pending applications contain about 115,000 claims.  As the PTO began issuing final rejections for Hyatt’s applications, Hyatt appealed the rejections to the PTAB.  After Hyatt filed appeal briefs, the PTO examiners reopened prosecution of 80 applications under MPEP §1207.04 alleging new grounds of rejection.  Section 1207.04 allows examiners, with approval from a supervisor, to reopen prosecution to enter a new ground of rejection in response to an appeal brief.

Hyatt next filed a petition for rulemaking with the PTO requesting that the PTO either repeal §1207.04 or declare the provision unenforceable.  The PTO denied Hyatt’s petition, and Hyatt then filed suit in Nevada district court alleging that (1) the PTO’s adoption of §1207.04 exceeded its statutory authority, and (2) §1207.04 violates 35 U.S.C. §6(b)(1).  The district court granted summary judgment to the PTO, finding that the district court lacked subject matter jurisdiction over Hyatt’s claims.


Did the district court err in dismissing Hyatt’s claims for lack of subject matter jurisdiction?  (continue reading)

Summary byJay Stelacone

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