In Odyssey Logistics and Technology Corporation v. Iancu, [2019-1066] (May 22, 2020), the Federal Circuit affirmed the district court that the challenges of Application No. 11/005,678 and 11/465,603 concerned non-final agency actions, and the challenge to the amendments to the Rules of Practice were barred by §2401.

After winning an ex parte appeal in the ‘678 application, the USPTO issued a request for rehearing, arguing that the Board applied the wrong version 35 USC 102(e), Odyssey filed petitions objecting to the rehearing procedure, and requests for re-consideration when those petitions were dismissed. Odyssey eventually made some arguments on the merits “under protest,” but instead of waiting for the Board’s decision on these arguments, Odyssey filed this challenge to the request for re-hearing in the Eastern District of Virginia.

Odyssey appealed the examiner’s rejections of the ’603 application.  And in response to the Examiner’s Answer, Odyssey believed that the answer included new grounds, and filed a petition, requesting that the Technology Center Director designate certain portions of the Asnwer as new grounds of rejection.  Rather than filing a brief replying to the examiner’s answer and waiting to see if the Board would strike certain portions of its reply as improper, Odyssey challenged the dismissal of the petition in the Eastern District of Virginia.

The district court dismissed the first two challenges because Odyssey was challenging actions not yet final before the Board; the Board could provide Odyssey with an adequate remedy, and if not, Odyssey had statutory remedies for appeal under 35 U.S.C. §§ 141 or 145.

The third challenge was to the PTO’s 2011 amendments to its rules of practice in ex parte appeals.  The district court dismissed the third challenge holding that 28 U.S.C. § 2401 barred the claims.

With respect to the first challenge, the Federal Circuit said that until the Board issues its rehearing decision, the PTO has not consummated its decision-making process and Odyssey’s rights and obligations in the ’678 patent have not been determined. Without such final action from the PTO, the APA does not entitle Odyssey to judicial review.

With respect to the second challenge, the Federal Circuit said that the dismissal of Odyssey’s petition to designate new grounds is non-final agency action because the dismissal did not determine any rights or obligations or result in any legal consequences. The Federal Circuit said that until the Board refuses to consider arguments made in Odyssey’s reply brief for exceeding the permissible scope of the brief under 37 C.F.R. § 41.41, the denial of Odyssey’s petition to designate new grounds has not determined any rights or resulted in any legal consequences. The district court was therefore correct to dismiss Count II for lack of finality. With respect to the third challenge, the Federal Circuit found the district court’s decision was unquestionably correct.   The challenged rules were published in the Federal Register on November 22, 2011; Odyssey filed  its  facial  challenge  on January  23,  2018, more than six years later.  The challenge was therefore barred by 28 U.S.C. § 2401.