Recently, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Odyssey Logistics and Technology Corporation v. Iancu, No. 2019-1066 (May 22, 2020). The case involved three Administrative Procedure Act challenges by Odyssey addressing certain actions taken, and a rule published, by the Patent and Trademark Office.
Odyssey first challenged the propriety of an “examiner’s request for rehearing” issued by the PTO’s Technology Center Director five months after a Patent Trial and Appeal Board decision reversing the examiner’s rejections of Odyssey’s patent claims. Instead of waiting for the Board’s decision on the request, Odyssey filed a challenge to the request in the Eastern District of Virginia. Odyssey’s next challenge addressed a different patent application proceeding. This second challenge took issue with the dismissal by the Technology Center Director of Odyssey’s petition asking the Technology Center Director to designate certain portions of the examiner’s answer on appeal as new grounds of rejection. Instead of filing a reply to the examiner’s answer, and allowing the Board to address the issue, Odyssey filed a challenge in the Eastern District of Virginia. The district court dismissed both challenges because they were to actions not yet final before the Board. Odyssey framed its third challenge as a “facial” challenge to certain amendments the PTO made in 2011 to its rules of practice for ex parte appeals. The district court dismissed this challenge based on the 6-year statute of limitations applicable to facial APA challenges. Odyssey appealed.
The Federal Circuit affirmed. Addressing the first challenge, the Court explained that “the PTO ha[d] not consummated its decision-making process and Odyssey’s rights and obligations . . . ha[d] not been determined.” Rejecting Odyssey’s assertion that the Board’s consideration of the examiner’s rehearing request was an ultra vires action, the Court noted that the “rehearing process here is ordinary agency action in accordance with the PTO’s Manual of Patent Examining Procedure” and that without “final action from the PTO, the APA does not entitle Odyssey to judicial review.” The Court also affirmed the dismissal of Odyssey’s second challenge for lack of finality. The Court affirmed the dismissal of Odyssey’s third challenge as well. Rejecting Odyssey’s assertion that the statute of limitations governing facial challenges to the APA starts to run on the effective date of the regulations, the Court instead confirmed that the statute of limitations begins to run at the date of publication.