[00:00:00] Speaker 04:
The patent office, number 17-1722.

[00:00:44] Speaker 04:
Mr. Grossman, and you reserve five minutes of your time.

[00:00:48] Speaker 02:
Yes, Your Honor, thank you.

[00:00:49] Speaker 02:
Okay, you may begin.

[00:00:51] Speaker 02:
May it please the Court.

[00:00:52] Speaker 02:
The Patent Act gives applicants the right to go to the Appeal Board to obtain review of rejections.

[00:00:57] Speaker 02:
MPEP Section 1207.04 violates that right because it purports to authorize examiners to block appeals of their own rejections by refusing to allow an appeal to proceed to the Board.

[00:01:10] Speaker 02:
Supreme Court rejected this.

[00:01:11] Speaker 01:
Where in the statute does it prohibit the board from doing exactly this, taking the case back and saying, we're going to reopen examination because you've raised a good argument on appeal?

[00:01:23] Speaker 02:
Your Honor, if the question is, could the board obtain this similar result, I think that's something that is an open question.

[00:01:30] Speaker 02:
That's not the question.

[00:01:31] Speaker 01:
The question is, can the Patent Office, after an appeal brief is filed against them, take the case back into examination

[00:01:39] Speaker 01:
I mean, clearly, they're doing it.

[00:01:41] Speaker 01:
Where in the statutory language does it say they can't do that?

[00:01:44] Speaker 02:
Yes, Your Honor.

[00:01:45] Speaker 02:
So we think there are three indicia in the statute that indicate that the PTO cannot do that.

[00:01:50] Speaker 02:
The first is in Section 134, as well as Section 6B, where the statute uses the word appeal.

[00:01:56] Speaker 02:
We don't think an appeal means that the appellee can unilaterally cause the appeal to desist, other than by mooting it by conceding the points on appeal.

[00:02:06] Speaker 02:
But this happens all the time.

[00:02:08] Speaker 01:
There are big protests at the Court of Federal Claims where routinely after they're filed, the government agency will say, you know, that's a good point.

[00:02:19] Speaker 01:
We'll take it back and reconsider it.

[00:02:21] Speaker 01:
And they'll cancel the procurement or the like and re-examine everything.

[00:02:27] Speaker 01:
That moots the case.

[00:02:29] Speaker 01:
Why isn't this similar to that?

[00:02:31] Speaker 01:
They're saying we're going to take another look at that, and that moots the appeal.

[00:02:34] Speaker 02:
Well, Your Honor, we believe that the PTO can, in fact, moot an appeal by simply allowing the claims.

[00:02:39] Speaker 02:
I don't think there's any disagreement between the parties on that.

[00:02:41] Speaker 02:
And that's the same as it would be in an appeal in court.

[00:02:43] Speaker 02:
But the question here is the specific statutory authority that gives an applicant the right to an appeal to the board.

[00:02:50] Speaker 02:
And I would note that Section 6B confers a duty on the appeal board to, on written appeal of an applicant, review adverse decisions of examiners.

[00:02:58] Speaker 01:
Again, all of that says what they can do and what they have to do once it's carried through.

[00:03:02] Speaker 01:
But it doesn't prohibit

[00:03:05] Speaker 01:
the PTO for mooting the appeal by saying, we're going to re-examine this.

[00:03:10] Speaker 01:
A re-examine, I know, is a term of art, and I'm not using it correctly.

[00:03:13] Speaker 01:
But they're going to reopen prosecution.

[00:03:16] Speaker 01:
Well, Your Honor, so the third answer to my question, there is no direct statutory language that prohibits this.

[00:03:24] Speaker 01:
Your argument is by implication, because you have a right to appeal, because the patent office can file an answer, because the board has to decide it,

[00:03:33] Speaker 01:
that that prohibits the agency practice of reopening prosecution?

[00:03:41] Speaker 02:
Yes, Your Honor, because we think that's what it means for the applicant to have an appeal right vested in him upon his second rejection of a claim.

[00:03:48] Speaker 01:
But your appeal right hasn't been taken away.

[00:03:51] Speaker 01:
You still have it after the Patent Office finishes its examination.

[00:03:56] Speaker 01:
And either it may grant the patent claims, or if it denies them again, then you'll get your appeal then.

[00:04:03] Speaker 02:
I'm not sure that's right, Your Honor, and the reason is because part of the patent appeal, right, is that it vests at the time of the second rejection, not the third, not the fourth, not the fifth.

[00:04:12] Speaker 02:
So the statute is set up to balance the administrability of patentability by the Patent Office with the interests of the applicant in obtaining appellate review of what it is that the examiner is doing.

[00:04:25] Speaker 02:
Congress struck that balance, and what Congress said was you get two rejections, and at that point you get to go to a neutral arbiter, the board.

[00:04:31] Speaker 02:
and get a ruling on those rejections.

[00:04:33] Speaker 02:
Now, we don't disagree that the examiner can certainly ask to reopen and can suggest that to the applicant.

[00:04:42] Speaker 02:
And indeed, that was the practice prior to the promulgation of Section 1207.04.

[00:04:47] Speaker 02:
The PTO makes much of this idea that there was a predecessor to that provision in place for a number of years that allowed reopening of prosecution.

[00:04:57] Speaker 02:
But there was a material difference between that earlier provision and the current one.

[00:05:00] Speaker 02:
The earlier provision

[00:05:01] Speaker 02:
allowed an applicant by filing a supplemental brief addressing any new grounds of rejection to insist that the appeal would in fact go to the board.

[00:05:09] Speaker 02:
That's section 1208.02 that was in place until August of 2005 when section 1207.04 was promulgated.

[00:05:19] Speaker 03:
So the PTO... What vest us with jurisdiction over Mr. Hyatt's request for a rulemaking pursuant to section 553E?

[00:05:29] Speaker 02:
What vest this Court?

[00:05:31] Speaker 02:
It's this Court's standard appellate jurisdiction over claims that are in a district court pursuant to a 28 U.S.C.

[00:05:41] Speaker 02:
1338A that involve a substantial question of patent law.

[00:05:47] Speaker 02:
That's what this Court explained.

[00:05:48] Speaker 03:
In a blue break, you argue that we have jurisdiction pursuant to 28 1295A1.

[00:05:55] Speaker 03:
But Preminger, the Secretary of Veterans Affairs,

[00:06:01] Speaker 03:
our jurisdiction over denial of a request for rulemaking dependent upon a statute not at issue.

[00:06:07] Speaker 03:
And you cite that.

[00:06:09] Speaker 03:
That's not at issue here.

[00:06:12] Speaker 03:
There we said we hold that 38 U.S.C.

[00:06:15] Speaker 03:
502 vests us with jurisdiction to review the Secretary's denial of a request for rulemaking pursuant to 553E.

[00:06:24] Speaker 03:
That's why I'm asking you what vests us with jurisdiction over Mr. Hyatt's request for rulemaking.

[00:06:30] Speaker 03:
percentage of 553A.

[00:06:31] Speaker 02:
Do you follow my question?

[00:06:33] Speaker 02:
I think so, Your Honor.

[00:06:34] Speaker 02:
But what this court has jurisdiction over is not directly Mr. Hyatt's petition for rulemaking.

[00:06:39] Speaker 02:
It's the district court's judgment in his APA challenge before that district court under section 1338A.

[00:06:45] Speaker 02:
And this court has appellate jurisdiction over that decision.

[00:06:51] Speaker 01:
Was his APA challenge in district court under 1338A or was it under

[00:07:00] Speaker 01:
I know I was going to go on, but was it under 1338A or was it under a different position?

[00:07:05] Speaker 02:
Your Honor, we cited both 1331 as well as 1338A as a jurisdiction basis in the District Court.

[00:07:10] Speaker 01:
Right, that's what I was reaching for, 1331.

[00:07:12] Speaker 01:
I mean, that's the normal challenge to rulemaking decisions in District Court, isn't it?

[00:07:17] Speaker 02:
It is, but this Court recognized in its Helfgott and Karras decision that the proper way to challenge the denial by the PTO of a petition

[00:07:27] Speaker 02:
that involves a substantial question of patent law as to challenge it under the APA and district court under 1338A, and that's exactly what we did in this instance.

[00:07:36] Speaker 03:
The district court held that your claims were precluded by the Eastern District litigation.

[00:07:42] Speaker 03:
Did you argue in your blue brief that the district court's claim conclusion holding was erroneous?

[00:07:47] Speaker 02:
Your Honor, the district court discussed that in its decision.

[00:07:50] Speaker 02:
We don't think that was ultimately the basis of the judgment.

[00:07:52] Speaker 02:
I would direct the court to pages 1 and page 5.

[00:07:55] Speaker 02:
of the appendix.

[00:07:56] Speaker 02:
The judgment was for lack of subject matter jurisdiction, so that's what we were required to address in our blue brief.

[00:08:01] Speaker 02:
We agree with the PTO that the PTO can argue additional bases for affirmance as the PTO impact is done, and obviously we dispute the claim preclusion argument raised by the PTO.

[00:08:14] Speaker 02:
On the matter of subject matter jurisdiction, the district court felt that

[00:08:18] Speaker 02:
It lacked jurisdiction on account of this Court's exclusive jurisdiction under Section 141, as well as the Eastern District of Virginia's jurisdiction under Section 145, so it applied the track doctrine.

[00:08:32] Speaker 02:
The problem, however, is that, again, this Court's decision in the Health Guard indicates that petitions and outclaims by the HTO are properly brought in District Court.

[00:08:43] Speaker 02:
And indeed, this Court held further in its McCarrey decision

[00:08:46] Speaker 02:
that this court lacks under section 141 jurisdiction to review decisions on petitions.

[00:08:53] Speaker 02:
And obviously the jurisdictional basis for 145, jurisdiction of the district court, is effectively the same.

[00:08:59] Speaker 02:
It's a decision of the board on a patentability issue, which this does not involve.

[00:09:02] Speaker 02:
Did the Eastern District reach a final judgment on the matter?

[00:09:07] Speaker 03:
Yes, Your Honor.

[00:09:09] Speaker 03:
Do you agree that it involved identical parties or privies?

[00:09:13] Speaker 03:
Yes, Your Honor.

[00:09:15] Speaker 03:
If so, then whether this

[00:09:16] Speaker 03:
cases barred by claim conclusion depends on whether it involved the same claim or cause of action as this case, correct?

[00:09:24] Speaker 02:
Well, yes to a point, Your Honor.

[00:09:26] Speaker 02:
And so I think that is one reason, and obviously we argue that that is one reason why there is not claim conclusion.

[00:09:31] Speaker 02:
But the other is simply that the claims that we're, that we've brought in this case did not exist at that point because the PTO had not yet acted on Mr. Hyatt's petition for rulemaking.

[00:09:39] Speaker 02:
This case is a facial challenge.

[00:09:41] Speaker 02:
There was no facial challenge in that case, and I don't think there could have been.

[00:09:44] Speaker 02:
for the reason that that challenge arose at the time that PTO denied Mr. Hyatt's petition for rulemaking.

[00:09:50] Speaker 02:
That is the basis for the claims in this case.

[00:09:52] Speaker 02:
So just from a timing perspective, there's no res judicata effect over claims that didn't exist at the time of the earlier judgment.

[00:09:58] Speaker 02:
We cited precedent from this court, Aspects Eyewear, as well as the Ninth Circuit Trujillo, that state that proposition is black letter law.

[00:10:05] Speaker 01:
Why aren't these claims time barred?

[00:10:08] Speaker 02:
Sorry.

[00:10:10] Speaker 02:
Go ahead.

[00:10:11] Speaker 02:
Your Honor, this is a facial challenge to the agency's authority to maintain a particular procedural regulation.

[00:10:19] Speaker 01:
Sure, but the rule, you challenge the rule you're challenging more than six years after it was issued.

[00:10:24] Speaker 01:
Yes, Your Honor.

[00:10:26] Speaker 01:
It seems to me, and I think you may have it right, but it seems to me a very odd proposition of law that you can evade statute of limitations by just saying revoke the law regulation

[00:10:40] Speaker 01:
and then it starts the statutory limitations period anew.

[00:10:44] Speaker 01:
I mean, that's contrary to almost any other kind of statute of limitations law we apply, isn't it?

[00:10:51] Speaker 02:
Well, Your Honor, so the Ninth Circuit as well as the D.C.

[00:10:53] Speaker 02:
Circuit and I think every circuit to consider.

[00:10:55] Speaker 01:
Well, we can talk about the D.C.

[00:10:56] Speaker 01:
Circuit because I think they've evolved on this issue in the correct way.

[00:10:59] Speaker 01:
The Ninth Circuit may not, so we might be stuck with that.

[00:11:02] Speaker 01:
But the Ninth Circuit has this reopening rule, right?

[00:11:05] Speaker 02:
Yes, Your Honor.

[00:11:05] Speaker 02:
And what's the rationale for that?

[00:11:07] Speaker 02:
The rationale is that an agency should not be able to hold out indefinitely a regulation for which it lacks statutory authority.

[00:11:14] Speaker 01:
But you always have the opportunity to challenge it in the course of its application to you in the context of an actual case, right?

[00:11:23] Speaker 02:
A party may or may not.

[00:11:25] Speaker 02:
It depends on the statutory scheme, and it depends on the application and a number of other factors.

[00:11:29] Speaker 01:
I mean, you could have challenged its application here, right?

[00:11:34] Speaker 01:
I mean, I understand there are some procedural barriers, but when PTO reopened, there's some 80 claims, I guess, that you had appealed to the board.

[00:11:46] Speaker 01:
They said, we're going to reopen prosecution.

[00:11:49] Speaker 01:
You could have challenged, based upon that rule, you could have challenged that, right?

[00:11:52] Speaker 01:
And said that reopening is contrary to statute.

[00:11:56] Speaker 02:
Your honor, we could have done that.

[00:11:57] Speaker 02:
And let me give you an example for the reason why a party need not do that.

[00:12:01] Speaker 02:
If you look at the court's PATLEX litigation, in that case involved the PTO's procedural rules regarding re-examination.

[00:12:08] Speaker 02:
That was applied against a patent holder, PATLEX, whose patents were put into re-examination proceedings.

[00:12:13] Speaker 02:
While those proceedings were ongoing, PATLEX brought an APA challenge to the re-examination proceeding, a facial challenge.

[00:12:19] Speaker 01:
Did they bring it within the statute of limitations?

[00:12:22] Speaker 02:
Yes, your honor.

[00:12:23] Speaker 01:
Well, that's the question then.

[00:12:25] Speaker 01:
Of course, they had a right to bring it within the statute of limitations.

[00:12:28] Speaker 01:
You don't have to go through it as implied challenge if it's within the period for filing a facial challenge.

[00:12:34] Speaker 01:
But why, when the period for filing a facial challenge has expired, can you remanufacture a new statute of limitations for a facial challenge just by this bizarre reopening precedent?

[00:12:45] Speaker 02:
Your Honor, Pat Lex's case was, in fact, a facial challenge.

[00:12:48] Speaker 02:
And the district court, the PTO actually moved to dismiss it on the ground that it would have to be raised within the context of the applications.

[00:12:54] Speaker 01:
You're not answering my question.

[00:12:55] Speaker 01:
I don't care about whether they can do it within the statute of limitations.

[00:12:59] Speaker 01:
Once the statute of limitations is expired, isn't an agency allowed to think its regulation is OK absent some challenge in an as-applied case?

[00:13:10] Speaker 01:
Your Honor.

[00:13:11] Speaker 01:
What's the point of statute of limitations?

[00:13:13] Speaker 02:
Your Honor, the short answer is that this is definitively resolved by Northwest Environmental Advocates in Wind River.

[00:13:18] Speaker 01:
I understand that, but I don't understand why that case law is really good case law anymore.

[00:13:21] Speaker 01:
And certainly the D.C.

[00:13:22] Speaker 01:
Circuit is moving away from that case law, suggesting that just filing a challenge or filing a request and saying reopen and having the agency deny it isn't enough to restart the statute of limitations anymore.

[00:13:36] Speaker 02:
Well, Your Honor, if there's any daylight between Northwest Environmental Advocates in this case, I'm certainly not aware of it.

[00:13:41] Speaker 02:
We followed exactly the procedure that the NYSERC had called for in that case, and that led to the posture of the case here.

[00:13:47] Speaker 02:
We gave the agency an opportunity to consider our arguments and to consider the validity of the underlying procedural rule.

[00:13:54] Speaker 02:
The agency opted not to undertake a rulemaking to revoke the rule.

[00:13:57] Speaker 02:
That gives us the right to challenge that determination in district court.

[00:14:01] Speaker 02:
And I would say, you know, consider Massachusetts versus EPA.

[00:14:05] Speaker 02:
You know, parties have a right to file petitions for rulemaking for agencies, and they have a right to challenge the basis upon which... They have a right to file rulemaking petitions with agencies within the statute of limitations.

[00:14:16] Speaker 02:
Your Honor, Massachusetts versus EPA concerned the denial of a petition that challenged an EPA policy that I believe was in place for a number of years, probably outside the statute of limitations.

[00:14:28] Speaker 02:
The point is that this is the way that one gets an agency to reconsider

[00:14:31] Speaker 02:
its view of a statute, and then to determine the extent of its legal authority.

[00:14:36] Speaker 01:
It still seems really odd to me.

[00:14:39] Speaker 01:
I suggest that if this ever goes to the Supreme Court, they are going to follow the new DC Circuit precedent and not this very generous Ninth Circuit precedent.

[00:14:47] Speaker 03:
You're out of time.

[00:14:49] Speaker 03:
I'm going to take you back to claim preclusion.

[00:14:52] Speaker 03:
What we hadn't reached yet is factor one, whether involved in the same

[00:14:58] Speaker 03:
claim or cause of action because you concede the other two to me.

[00:15:02] Speaker 03:
The Ninth Circuit evaluates four criteria to determine whether the first factor is satisfying, whether the two suits arise out of the same transactional nucleus of facts, whether rights or interests established in the prior judgment would be destroyed or impaired by prosecution of the second action, whether the two suits involve infringement of the same right, and whether substantially the same evidence is presented in

[00:15:28] Speaker 03:
the two actions.

[00:15:30] Speaker 03:
Do you argue any of those four criteria in your blue brief?

[00:15:35] Speaker 02:
Your Honor, I do not believe we do in our blue brief for the reason that I stated earlier, that simply it was not the basis for the judgment that we appealed.

[00:15:42] Speaker 02:
The judgment is very clear.

[00:15:43] Speaker 02:
There was judgment for lack of subject matter jurisdiction.

[00:15:46] Speaker 02:
We responded to that in our reply brief on the basis of the PTO arguing a different basis for affirmance of the judgment below.

[00:15:55] Speaker 02:
If there's no further questions, I'll reserve for balance of my time.

[00:15:56] Speaker 02:
Thank you.

[00:16:01] Speaker 04:
There would be minus six seconds.

[00:16:06] Speaker 04:
Counselor Silverman.

[00:16:07] Speaker 00:
Thank you.

[00:16:08] Speaker 00:
May it please the court?

[00:16:09] Speaker 00:
There are a lot of arguments and issues in this case, and I'd like to focus on two of them, one procedural and one substantive.

[00:16:16] Speaker 03:
You argued, or the district court found, that it lacked jurisdiction under the track doctrine.

[00:16:24] Speaker 03:
I couldn't find any cases where we've applied that doctrine.

[00:16:28] Speaker 03:
And the only Ninth Circuit case I could find

[00:16:31] Speaker 03:
of Oregon v. Bonneville is sort of difficult to follow.

[00:16:40] Speaker 00:
This Court has applied the track doctrine.

[00:16:42] Speaker 00:
It's escaping me right now in which case.

[00:16:45] Speaker 00:
But what we said in our brief, and I continue to believe, is that it sort of doesn't matter in this case, because if the Court correctly applied the track doctrine, this Court has

[00:17:01] Speaker 00:
original jurisdiction over the issues in this case.

[00:17:04] Speaker 00:
And if the court incorrectly applied the track doctrine, then this court has appellate jurisdiction over the issues in this case.

[00:17:12] Speaker 00:
So it's sort of a wash, regardless.

[00:17:16] Speaker 04:
Are you challenging the subject matter jurisdiction of the District of Nevada to hear Mr. Hyatt's rulemaking challenge?

[00:17:28] Speaker 00:
We did not challenge that in the district court, and we're not raising that as an issue here either.

[00:17:36] Speaker 00:
We're arguing that it is precluded by an earlier decision.

[00:17:42] Speaker 00:
It's untimely and... Wait a minute.

[00:17:45] Speaker 01:
You're saying it's untimely under 2401, but you're saying that district court doesn't lack subject matter jurisdiction because of that?

[00:17:55] Speaker 00:
The time bar.

[00:17:57] Speaker 01:
Can I ask you this, and maybe this is a little unfair, but what is the government's position?

[00:18:03] Speaker 01:
This is a very complicated issue.

[00:18:06] Speaker 01:
What is the government's position?

[00:18:07] Speaker 01:
If you don't have it, don't give it to me.

[00:18:09] Speaker 01:
Position on whether 2401A is subject as a subject matter jurisdiction bar like 2501.

[00:18:16] Speaker 00:
I don't have that position.

[00:18:20] Speaker 01:
I'm not sure.

[00:18:21] Speaker 01:
But you didn't raise a challenge that 2401A is

[00:18:25] Speaker 01:
jurisdictional in that sense.

[00:18:27] Speaker 00:
That's right.

[00:18:27] Speaker 01:
Although there seems to be precedent on both sides from different circuits on that.

[00:18:32] Speaker 00:
Right.

[00:18:32] Speaker 00:
We argued that it's time barred, but we didn't... But not jurisdictional.

[00:18:36] Speaker 00:
That's right.

[00:18:37] Speaker 01:
Although if it's jurisdictional, we would still look at that.

[00:18:41] Speaker 00:
Still look at the... Jurisdiction can be examined at any time.

[00:18:45] Speaker 00:
Right.

[00:18:46] Speaker 00:
Right.

[00:18:46] Speaker 00:
That's right.

[00:18:49] Speaker 00:
And on the...

[00:18:52] Speaker 00:
On the substance of Mr. Hyatt's claims, no one is trying to keep Mr. Hyatt from having the merits of his applications reviewed by the board or in court.

[00:19:03] Speaker 00:
And in his particular case, the USPTO has been trying very hard to get the merits of his web of 400 applications resolved so that he can either have deserved patents or have an appeal.

[00:19:18] Speaker 04:
How many people do you have assigned?

[00:19:19] Speaker 00:
15?

[00:19:21] Speaker 00:
There may be more, but there are at least 15 right now.

[00:19:26] Speaker 00:
And that's their full-time job, is examining Mr. Hyatt's applications.

[00:19:30] Speaker 00:
And the requirement, which had to reopen prosecution in some of those 400 applications to be applied consistently across the board, is what's allowing the PTO to move forward in examining his applications.

[00:19:44] Speaker 00:
So this is a very good example of why

[00:19:47] Speaker 00:
is important and necessary that the USPTO have authority to reopen prosecution.

[00:19:53] Speaker 04:
Aside from that, let's look at the APA issues that have been raised in the director's petition with respect to rulemaking, whether the PTO prolongated its rules correctly or not.

[00:20:10] Speaker 04:
The way I understand it is that that petition was denied

[00:20:14] Speaker 04:
For those allegations, that part of the petition, which I call the director's petition, was denied by the PTO, correct?

[00:20:22] Speaker 04:
And it was also rejected or denied by the district court in Nevada.

[00:20:29] Speaker 00:
That's right.

[00:20:31] Speaker 04:
That part of the petition is before us now.

[00:20:36] Speaker 00:
Well, so certainly an interested member of the public can petition for rulemaking and have that reviewed by a court.

[00:20:44] Speaker 00:
The problem is that you cannot use that process as a way to either collaterally attack ongoing USPTO proceedings, which we believe Mr. Hyatt is doing here, or as a backdoor to get to the process of implementation of something that is time barred.

[00:21:03] Speaker 04:
So if our decision on the APA claims has, let's say, an adverse effect on the

[00:21:11] Speaker 04:
that are still pending before the PTO, the withdrawn claims, then we would not have jurisdiction over that.

[00:21:24] Speaker 04:
That is determined now by the track doctrine.

[00:21:27] Speaker 00:
Well, I think it's determined more by cases like AMS v. Lee and the Pregis case, which say that you can't bring in a separate collateral attack in court

[00:21:39] Speaker 00:
against ongoing proceedings.

[00:21:41] Speaker 00:
You have to wait until the ongoing proceedings are finished.

[00:21:44] Speaker 04:
So the track doctrine would help you in this instance?

[00:21:46] Speaker 00:
I think that's right, yes.

[00:21:47] Speaker 00:
I mean, I think the track doctrine addresses a similar concept, which is that the court that has ultimate authority to hear an appeal should be hearing any sort of interim decisions about their later authority.

[00:22:05] Speaker 04:
And is that because the APA claims were brought in the context of

[00:22:10] Speaker 04:
of the proceedings before the PTO.

[00:22:12] Speaker 04:
Let's say it hadn't done that.

[00:22:13] Speaker 04:
They had gone somewhere else and brought the APA claims in a district corridor somewhere else and not within.

[00:22:22] Speaker 04:
So would the track doctrine apply or a concept like it apply in this instance by virtue of the fact that they married or they brought together, they packaged together the APA claims and the merit claims?

[00:22:37] Speaker 00:
Right.

[00:22:38] Speaker 00:
Yes, I think so.

[00:22:39] Speaker 00:
The one thing I would quibble with is that a party does have to bring their issue to the agency in the first place.

[00:22:48] Speaker 00:
So they can't just bring it to a court without having petitioned the agency.

[00:22:53] Speaker 04:
They have to bring in an APA complaint before the agency?

[00:23:01] Speaker 00:
That's right.

[00:23:05] Speaker 00:
Whatever relief they're seeking, they have to seek at the agency first.

[00:23:11] Speaker 01:
Can I, I want to sort through, I know you have, you've made these statutory limitations arguments.

[00:23:16] Speaker 01:
I'm going to sort through them a little bit, because I think they're getting glossed over as one argument, but I think there's two, right?

[00:23:23] Speaker 01:
You alluded to it, that there's differing lines of case law.

[00:23:27] Speaker 01:
I think one of them really is, you know, not good for you, and it's almost impossible to get around.

[00:23:32] Speaker 01:
But for procedural challenges to the way rulemaking was enacted,

[00:23:37] Speaker 01:
i.e.

[00:23:38] Speaker 01:
this should have gone through notice of comment and stuff like that.

[00:23:42] Speaker 01:
It seems to me that the precedent overwhelmingly says that those are time-barred and aren't capable of reopening under this reopening rule that the Ninth Circuit has.

[00:23:54] Speaker 00:
That's exactly right.

[00:23:56] Speaker 01:
But do you see any way around the Ninth Circuit precedent on this kind of reopening procedure when the attack is an ultra-virus one that goes to whether the regulation is

[00:24:07] Speaker 01:
is within the agency's authority at all?

[00:24:09] Speaker 01:
Because I've read all those Ninth Circuit cases, and it seems to me that they suggest that if you have a petition for rulemaking and you tell the agency, revoke this rule because it's beyond its authority, and the agency declines, that that restarts the statute of limitation.

[00:24:26] Speaker 00:
I think the Ninth Circuit law is certainly messy on that point.

[00:24:31] Speaker 00:
So the Northwest Advocates case, which I believe Your Honor is referencing,

[00:24:36] Speaker 00:
relies on Wind River, which comes out, it seems to me, the opposite way.

[00:24:41] Speaker 00:
So it relies for its authority on a case that is saying that these late attacks are not available.

[00:24:48] Speaker 01:
But the way they're applied in the Ninth Circuit, well, let's just assume Ninth Circuit law applies.

[00:24:53] Speaker 01:
There may even be a dispute about that, but let's assume Ninth Circuit law applies.

[00:24:57] Speaker 01:
It's not just that one case you're talking about.

[00:24:59] Speaker 01:
I mean, there are other cases.

[00:25:00] Speaker 01:
This is the rule.

[00:25:01] Speaker 01:
The Ninth Circuit applies, and we're stuck with it, assuming it applies.

[00:25:06] Speaker 01:
How is there any way around those cases that say, if you file a petition for rulemaking asking the agency to revoke a statute, the petitioner thinks it's invalid, and it's denied, that if you file within the statute of limitations, it's timely, even if it's a number of years after the statute expired for a direct challenge to the regulation?

[00:25:26] Speaker 00:
I mean, I think that's right.

[00:25:27] Speaker 00:
I think there's definitely daylight

[00:25:32] Speaker 00:
an interested member of the public who has filed a petition for rulemaking to have the merits... Under the Ninth Circuit case law.

[00:25:38] Speaker 00:
Under the Ninth Circuit case law.

[00:25:40] Speaker 00:
I agree that it's not clear that the Ninth Circuit applies here.

[00:25:43] Speaker 01:
And certainly not clear that other circuits would do the same thing.

[00:25:48] Speaker 01:
But assuming that's correct, then, don't we have authority to hear the merits of that one question of is the agency's reopening or the agency's

[00:26:00] Speaker 01:
reopening a prosecution procedure contrary to the statute.

[00:26:04] Speaker 00:
Well, I would still argue that this is a collateral attack on the ongoing proceedings.

[00:26:09] Speaker 01:
Let's assume it's not.

[00:26:10] Speaker 00:
But assuming it's not, then yes, the merits of a denial of a petition for rulemaking are reviewable under an extremely deferential standard.

[00:26:24] Speaker 00:
It's the most deferential that I've seen under

[00:26:28] Speaker 00:
For example, Massachusetts versus EPA.

[00:26:29] Speaker 00:
Sure.

[00:26:29] Speaker 01:
Although, I mean, that's a nice case law to kind of try it out.

[00:26:33] Speaker 01:
But ultimately, if the question is whether it's ultra virus or not, I'm not sure we're going to give you much deference.

[00:26:39] Speaker 00:
I think that's right.

[00:26:40] Speaker 00:
I think that's right.

[00:26:41] Speaker 00:
If it's ultra virus, that is something that would be reviewable, assuming that you disagree with me on it being a collateral attack on the agency's action.

[00:26:51] Speaker 01:
well it doesn't I mean it certainly there are collateral aspects of it and if he was arguing that we should revoke this and cancel the agency action reopening prosecution on the 80 claims I think he'd be in trouble I mean he's already and he has argued that just to be clear I yeah well I mean we certainly if his argument is that we in this context of this case could could cancel that reopening then I think he has collateral sample problems

[00:27:20] Speaker 00:
And he has argued that in his, I believe it was in his complaint in the district court.

[00:27:25] Speaker 01:
We'll see whether he continues to argue that or waives that when he gets back up.

[00:27:29] Speaker 00:
That makes sense.

[00:27:32] Speaker 00:
If the court has no further questions, I can move the room.

[00:27:35] Speaker 00:
Thank you.

[00:27:39] Speaker 04:
Mr. Grossman will restore your time for four minutes.

[00:27:45] Speaker ?:
Thank you.

[00:27:45] Speaker 02:
Just a couple of points.

[00:27:47] Speaker 02:
First, I would note that this is not a collateral attack.

[00:27:50] Speaker 02:
We fully concede that a decision in our favor in this case would not affect directly any ongoing proceeding before PTO and any of Mr. Hyatt's applications.

[00:27:59] Speaker 02:
The PTO, I will note, conceded as much that that was the gravamen of our petition.

[00:28:03] Speaker 02:
This is at page 48 and 62 of the appendix.

[00:28:06] Speaker 04:
Just... Kennedy Well, you're looking to vitiate an administrative process that would have, if so, that would have a beneficial effect.

[00:28:17] Speaker 02:
is that were we to prevail in this challenge, that we would then have the ability to subsequently raise that issue in the context of those applications.

[00:28:25] Speaker 02:
And the PTO could make whatever argument.

[00:28:26] Speaker 04:
You already rose them in the context of those applications.

[00:28:30] Speaker 02:
That is actually, well, Your Honor, if you're referring to the unreasonable delay action, that was actually not an issue in the unreasonable delay action.

[00:28:40] Speaker 02:
I would encourage the court to look at the record in that case.

[00:28:42] Speaker 04:
I guess I'm referring to your bundling of the APA issues

[00:28:47] Speaker 04:
argument as to whether the PTO can withdraw the rejected claims for re-examination.

[00:28:55] Speaker 02:
I'm not sure I understand, Your Honor.

[00:28:58] Speaker 02:
Okay.

[00:29:00] Speaker 02:
I will say this is not a collateral attack.

[00:29:01] Speaker 02:
The PTO recognized that with respect to our petition.

[00:29:04] Speaker 02:
We are not challenging, we are not seeking in the petition and therefore not in this case to seek or compel review of any particular action by any examiner.

[00:29:12] Speaker 02:
That's at page 48 of the appendix.

[00:29:14] Speaker 01:
Further to the idea that... And the very likely result is, even if we rule in your favor on the narrow statutory question, is if the PTO decides you've already raised and lost this issue as applied in that particular case, you might be collaterally a stop going forward in those cases.

[00:29:31] Speaker 02:
Your Honor, we might be if that's the way that issue turns out.

[00:29:34] Speaker 01:
We obviously disagree, but I recognize... I'm just trying to figure out the process.

[00:29:38] Speaker 01:
I mean, if we rule in your favor, then you're going to go back to PTO and say,

[00:29:43] Speaker 01:
let these 80 claims go and let the appeal go through on them, right?

[00:29:48] Speaker 01:
And when they say no, what are you going to do?

[00:29:50] Speaker 01:
Are you going to file a mandamus petition here?

[00:29:53] Speaker 02:
Your honor, I think that would be among the possibilities.

[00:29:56] Speaker 02:
But I will note, I think as your honor's question reflects, that that is something that would have to come up in the context of those future proceedings.

[00:30:02] Speaker 02:
Because what happens in those proceedings is not something that's an issue in these applications.

[00:30:06] Speaker 01:
I'm sorry, in this case.

[00:30:07] Speaker 01:
Why didn't you file a mandamus petition in the first place?

[00:30:11] Speaker 02:
Well, I mean, what we did was to pursue the procedure that the Ninth Circuit suggests is the appropriate way to undertake a facial challenge.

[00:30:18] Speaker 02:
And the idea that this is an improper or disfavored way of undertaking some sort of collateral attack, I mean, that was really resolved in the Pat Lacks case.

[00:30:29] Speaker 02:
It was the exact same procedural posture.

[00:30:31] Speaker 02:
There was a party before PTO that believed facially that the rules that were enforced at that time were unlawful.

[00:30:36] Speaker 02:
That party brought it to court.

[00:30:38] Speaker 02:
PTO raised the exact same argument.

[00:30:40] Speaker 02:
That court rejected it.

[00:30:40] Speaker 02:
This court rejected it.

[00:30:42] Speaker 01:
Sure.

[00:30:42] Speaker 01:
But in that case, I mean, it was a timely challenge.

[00:30:45] Speaker 01:
It's well accepted when a statute issues and somebody can come out with new rules and regulations.

[00:30:51] Speaker 01:
People that are going to be affected by those rules are going to make facial challenges to them.

[00:30:57] Speaker 01:
This seems to be far different circumstances.

[00:30:59] Speaker 01:
This is not a new rule.

[00:31:00] Speaker 01:
It's been around for a while.

[00:31:02] Speaker 01:
You just didn't challenge it in time.

[00:31:03] Speaker 01:
And now you've manufactured a new challenge under that procedure.

[00:31:07] Speaker 02:
Your Honor, we followed the procedures that the Ninth Circuit and other courts have authorized for bringing these types of challenges.

[00:31:13] Speaker 02:
If I could briefly, I'd like to turn to the Supreme Court's decision in Steinmetz.

[00:31:18] Speaker 02:
It's our view that it adopts a definitive and binding interpretation of the statutory provisions at issue here.

[00:31:24] Speaker 02:
Steinmetz recognizes that applicants have a right to bring their appeals to the board.

[00:31:30] Speaker 02:
And that the PTO has a corresponding, what the court called, a ministerial duty to allow appeals to proceed to the board.

[00:31:37] Speaker 02:
We think that that decision is completely binding as to the current version of the act.

[00:31:42] Speaker 02:
There's no distinction between the statutory provisions at issue, as this court recognized, or this court's predecessor recognized in Hensholt.

[00:31:50] Speaker 02:
For the presence, we ask that the court affirm.

[00:31:51] Speaker 02:
I'm sorry, reverse.

[00:31:53] Speaker 04:
Thank you, Your Honor.

[00:31:56] Speaker 04:
We thank the party for their arguments.

[00:32:00] Speaker 01:
All rise.

[00:32:02] Speaker 01:
The Honorable Court is adjourned until tomorrow morning at 10 o'clock a.m.