[00:00:58] Speaker 00:
Our next case is Odyssey Logistics and Technology Corporation versus the Patent Office, 2019-1066.

[00:01:05] Speaker 00:
Mr. Bauer.

[00:01:14] Speaker 04:
Good morning, Your Honors.

[00:01:15] Speaker 04:
May it please the Court?

[00:01:17] Speaker 04:
I think this case can be resolved in a simple analysis.

[00:01:22] Speaker 04:
The District Court dismissal

[00:01:25] Speaker 04:
of the action should be reversed because it's based on the erroneous conclusion that the board's proceedings was ongoing at the time that the action was filed.

[00:01:37] Speaker 04:
In fact, the board's proceeding had been concluded by virtue of a decision by the board on April 29, 2016, which was a final decision in the case.

[00:01:51] Speaker 04:
One month passed after that decision,

[00:01:54] Speaker 04:
two months passed after that decision, the proceeding terminated pursuant to the office's regulation, and the board lost jurisdiction of the proceeding when the time period for it to appeal to this court or to any party to appeal this court lapsed.

[00:02:13] Speaker 01:
It was several.

[00:02:14] Speaker 01:
What time period are you referring to?

[00:02:15] Speaker 01:
When the board rejected the examiner's decision at first rejection?

[00:02:21] Speaker 04:
The first referring to the examiner's the board's decision reversing all of the examiner's substantive rejections that was made on April 29th 2016 on the basis that the References were not in fact prior and you argue that the case should have ended there that the examiner should have just simply issued a certificate the certificate one of the one of our requested remedies is a notice of allowance and

[00:02:47] Speaker 04:
The office regulation requires the examiner to carry that decision into effect.

[00:02:53] Speaker 04:
That decision reversed the examiner.

[00:02:55] Speaker 04:
So the next step is for the examiner to allow the case.

[00:02:59] Speaker 01:
And what happens is that their internal procedures also allow for a reconsideration request by the examiner?

[00:03:06] Speaker 04:
Yes.

[00:03:07] Speaker 04:
So they can do a request for rehearing, and that's been done.

[00:03:12] Speaker 04:
But that presumes that it is a timely request for rehearing.

[00:03:18] Speaker 04:
The previous periods going back.

[00:03:21] Speaker 03:
Where is the time period for rehearing set forth?

[00:03:24] Speaker 03:
And where is it any kind of statutory bar for them to seek rehearing?

[00:03:29] Speaker 03:
Is there any time period for them to seek rehearing?

[00:03:32] Speaker 04:
Well, I would say that at this point,

[00:03:34] Speaker 04:
The time period is, they can file while the board has jurisdiction.

[00:03:40] Speaker 04:
So originally the time period was one month.

[00:03:44] Speaker 04:
And then it was changed to two months in 1995.

[00:03:46] Speaker 04:
The current regulation does not refer to a request for rehearing by the examiner.

[00:03:55] Speaker 04:
It says the appellant may request rehearing.

[00:03:58] Speaker 04:
And it's silent as to what the examiner can do.

[00:04:01] Speaker 04:
But to answer your question, there is nothing which

[00:04:04] Speaker 04:
which prohibits a request for re-hearing filed by the examiner.

[00:04:09] Speaker 04:
Our contention is when the proceeding is over and the board does not have... But how is the proceeding over?

[00:04:15] Speaker 03:
It has to go back to the examiner anyway, even under your scenario for allowance of the clause.

[00:04:22] Speaker 04:
I'm sorry, I'm referring to the board proceeding.

[00:04:24] Speaker 04:
The board proceeding is over and by the office's own regulation, it no longer has jurisdiction.

[00:04:31] Speaker 04:
It's in this 41.35, jurisdiction passes back to the examiner when the time period for appeal lapses.

[00:04:41] Speaker 03:
How does that prevent the examiner with the proper approvals from requesting the board to reconsider its decision?

[00:04:47] Speaker 04:
Well, that raises the question of what is the statutory authority?

[00:04:57] Speaker 03:
That's what's going on here.

[00:05:15] Speaker 03:
higher-level supervisor, that he thinks there's a problem, that the board didn't address all the arguments, or that his decision is wrong, so he or she has asked the board to reconsider.

[00:05:24] Speaker 03:
Isn't that a proper function of the director and his designee?

[00:05:29] Speaker 03:
No, I believe it's not, Your Honor.

[00:05:30] Speaker 03:
And what statute bars that?

[00:05:32] Speaker 04:
Well, if I may, Your Honor, I would argue what statute enables the director to do that.

[00:05:37] Speaker 03:
Well, the director has broad authority over these examination cases.

[00:05:41] Speaker 03:
I would think he would have to find, and the director seems to have regulatory authority given to himself or the MPE procedures, whatever they are, to do this kind of thing.

[00:05:52] Speaker 03:
So what statute bars that?

[00:05:54] Speaker 04:
The director has broad authority over the examiner.

[00:05:58] Speaker 04:
But we know, as recently as in the Arthrex case, that the director cannot overcome or change a decision of the board.

[00:06:08] Speaker 04:
Neither the director or the executive.

[00:06:09] Speaker 03:
He's not trying to overrule the board.

[00:06:10] Speaker 03:
He's asking the board to reconsider.

[00:06:12] Speaker 04:
Well, I would argue that this is not a request for a hearing.

[00:06:15] Speaker 04:
This is a request to reopen a prior determination that was final, and it's an end around

[00:06:23] Speaker 03:
The prohibition of the... You want to say it's final, but you have to point me to some statutory authority that says the director can't do this kind of reconsideration.

[00:06:33] Speaker 04:
Well, I would say I'm only speaking to the timeliness of it.

[00:06:37] Speaker 04:
I would agree that they could do this.

[00:06:39] Speaker 03:
What time limit in a statute or regulation prohibits the examiner from seeking reconsideration unless it's done within a certain amount of time?

[00:06:49] Speaker 04:
I would argue, your honor, that the board proceeding had ended.

[00:06:54] Speaker 04:
There was no longer jurisdiction.

[00:06:56] Speaker 04:
And what is actually an issue here, if I could explain, is the consequences of the finality of that decision.

[00:07:04] Speaker 04:
And in the patent office brief, the office actually consented that board decisions should be viewed as having the same type of finality that district court decisions have.

[00:07:16] Speaker 04:
And there are prohibitions.

[00:07:18] Speaker 04:
And there are consequences to a final decision.

[00:07:21] Speaker 04:
The examiner had every opportunity to make whatever arguments that they wanted to, and they didn't.

[00:07:29] Speaker 04:
And what happened then is when this decision was received and it reversed the examiners,

[00:07:38] Speaker 04:
This decision was forward to the examiner in a continuation application with the notice that these references are not prior art.

[00:07:47] Speaker 04:
And therefore, we are entitled to allowance of these applications.

[00:07:51] Speaker 04:
The examiner could not deny the estoppel of the decision.

[00:07:57] Speaker 04:
They had no authority to disregard the decision.

[00:08:00] Speaker 04:
Neither the director or the examiner can appeal from that decision.

[00:08:05] Speaker 03:
But they're not doing either.

[00:08:06] Speaker 03:
They're asking the board to reconsider.

[00:08:08] Speaker 04:
Well, every instance in which there has been a rehearing, the rehearing has been timely.

[00:08:17] Speaker 04:
This is in effect.

[00:08:18] Speaker 03:
You keep saying it's been timely, but you continue to fail to point to me to any statute or regulation that dictates timeliness.

[00:08:28] Speaker 03:
What do you mean by timeliness?

[00:08:31] Speaker 03:
I don't know.

[00:08:34] Speaker 03:
I don't know.

[00:08:38] Speaker 04:
I don't know.

[00:08:46] Speaker 04:
And it's returned to the examiner.

[00:08:47] Speaker 03:
I fail to understand why you keep talking about the board's jurisdiction to act after a certain time period.

[00:08:53] Speaker 03:
Because this is not the board sui sponte reconsidering or ordering it.

[00:08:58] Speaker 03:
It is the examiner, after the case has come back to it, via the director, asking for the board to reconsider.

[00:09:05] Speaker 03:
Where is the time prohibition on that?

[00:09:10] Speaker 04:
My only basis, Your Honor, is the fact that the board no longer has jurisdiction of that proceeding.

[00:09:16] Speaker 04:
Now, in our petition, in the response to our petition, the board said that jurisdiction is being returned to the board by the examiner.

[00:09:27] Speaker 04:
implying that the examiner has the authority to confer a jurisdiction on the board to decide cases.

[00:09:34] Speaker 04:
So if a case is done- Isn't that correct?

[00:09:36] Speaker 03:
If the examiner has authority to seek reconsideration from the board at any time after a final board decision while it's still pending with the examiner before allowance, and that's a perfectly fine exercise of the director's discretion, then isn't it something that the board has to consider?

[00:09:57] Speaker 04:
The board is not asking.

[00:10:01] Speaker 03:
I know that's your argument, but you failed to cite a single statute or regulation that prohibits the director.

[00:10:07] Speaker 04:
I would point to the president of this court which says the director cannot appeal that decision.

[00:10:27] Speaker 03:
of the board's decision unless you have something that says the directors prohibited from that.

[00:10:32] Speaker 03:
I think the directors got rules and regulations that allow him to do it.

[00:10:38] Speaker 04:
Well, turning to the current version of the regulation, it does not authorize that.

[00:10:44] Speaker 04:
But if it is within the authority or

[00:10:48] Speaker 04:
of the director without regulation?

[00:10:51] Speaker 04:
Yes.

[00:10:54] Speaker 04:
I think this is the one I have to argue against this because in this case, then, there is nothing, no time limit on the request for rehearing.

[00:11:06] Speaker 04:
It could be filed five years later after we have a board decision.

[00:11:10] Speaker 04:
And let me also remind the court that this is

[00:11:14] Speaker 04:
12 years of prosecution, that Odyssey Logistics went to great lengths to satisfy all of the requirements with the examiner, finally got to the point where there's a decision, and the examiner wants to do a do-over.

[00:11:28] Speaker 04:
If you look at the, there is no reasons given for the request for a hearing.

[00:11:33] Speaker 04:
Almost every tribunal which entertains requests for a hearing wants an explanation why are you requesting it.

[00:11:40] Speaker 04:
It suggests that you lost in argument A. Now you want to make argument B. Is it because you want to introduce new evidence?

[00:11:46] Speaker 03:
Can I ask you a separate question?

[00:11:48] Speaker 03:
Putting aside the merits of this, whether they're allowed to do it or not, why is there even a final agency action that's appropriate for APA review in the district court?

[00:12:00] Speaker 03:
The agency hasn't yet decided this reconsideration.

[00:12:05] Speaker 03:
And if you think that this whole process is wrong, at the final

[00:12:10] Speaker 03:
board decision, you can appeal and say, this was arbitrary and capricious.

[00:12:13] Speaker 03:
It never should have happened.

[00:12:15] Speaker 03:
And we should get whatever you want from that.

[00:12:18] Speaker 04:
On issues respecting the patentability of the claims, the board's decision is the agency's final decision.

[00:12:26] Speaker 03:
Yes, but now it's under reconsideration, or it should be.

[00:12:30] Speaker 04:
Only because the examiner requested that.

[00:12:34] Speaker 03:
Again, I'm trying to put aside the merits of that question.

[00:12:38] Speaker 03:
and determine, I mean, you could still get all the relief you want.

[00:12:42] Speaker 03:
If the board rejects the reconsideration and says, no, we're sticking by our original decision, allow these claims.

[00:12:49] Speaker 04:
Yeah, I'll address that.

[00:12:50] Speaker 04:
The analogy to this is that there are consequences.

[00:12:53] Speaker 04:
One is to a decision.

[00:12:54] Speaker 04:
One is issues estoppel, that the issues have been decided and they should be applied.

[00:13:00] Speaker 04:
Two is... That's the merits again.

[00:13:02] Speaker 04:
That doesn't go to the final agency act question.

[00:13:05] Speaker 04:
And two is efficiency of process and to avoid relitigation.

[00:13:10] Speaker 03:
If this was in a district court and you had a judgment... That's the argument everybody makes in APA cases when they don't want to wait for final agency action, that it's not efficient, that the issue has been sufficiently decided and the court should go ahead and rule on it.

[00:13:25] Speaker 03:
That's not good enough under basic administrative law.

[00:13:28] Speaker 04:
None of those cases involve a situation

[00:13:32] Speaker 04:
in which the board reached a decision addressing all of the merits and the jurisdiction, the proceeding ended with that final decision in place.

[00:13:43] Speaker 04:
The day before that the examiner submitted that request for rehearing, what would you say would be the status of the proceeding on that day?

[00:13:52] Speaker 04:
You would say there was a final decision by the board.

[00:13:55] Speaker 04:
It's been five, six, 11 months, however long it's been.

[00:13:58] Speaker 04:
It's final.

[00:13:59] Speaker 03:
Yeah, but as soon as the examiner, assuming he has the authority to seek reconsideration, and just assume he does.

[00:14:06] Speaker 03:
I know you don't agree with that, but assume he does.

[00:14:08] Speaker 03:
As soon as he seeks reconsideration, or she seeks reconsideration, it's no longer final.

[00:14:15] Speaker 03:
And you've got to wait until the outcome of that reconsideration.

[00:14:18] Speaker 04:
But the right to entertain the board to have the review is the right of the appellant

[00:14:25] Speaker 04:
And it's not the right of the examiner.

[00:14:27] Speaker 04:
The examiner can't bring in the board whenever the examiner wants to bring in the board.

[00:14:32] Speaker 04:
It's the appellant's right to have an appellate review by the board.

[00:14:36] Speaker 04:
And once that is done and completed and final, that proceeding is over.

[00:14:42] Speaker 00:
I think the- Counsel, you're well into your rebuttal time.

[00:14:45] Speaker 00:
We'll give you two minutes for rebuttal.

[00:14:47] Speaker 00:
In the meantime, let's hear from Mr. Sower.

[00:14:51] Speaker 04:
Thank you.

[00:14:59] Speaker 02:
Thank you, Your Honor.

[00:15:00] Speaker 02:
May it please the Court, Peter Soler, here in the capacity as Special Assistant US Attorney on behalf of the Director of the Patent and Trademark Office.

[00:15:11] Speaker 02:
Odyssey Logistics may one day wind up properly before this Court to raise the merits arguments that it wishes to raise now.

[00:15:19] Speaker 02:
But it has arrived here in an untimely manner and on the wrong path.

[00:15:25] Speaker 02:
Precisely as the argument has already demonstrated,

[00:15:30] Speaker 02:
The district court correctly found that the merits are not appropriate for consideration in this time.

[00:15:37] Speaker 02:
The district court properly dismissed all three counts of Odyssey's APA complaint for lack of jurisdiction.

[00:15:46] Speaker 02:
First and foremost, jurisdiction is lacking as to both counts one and two regarding the 678 and 603 patent applications.

[00:15:53] Speaker 03:
So let me ask you hypothetically, don't we kind of have to decide whether the director has authority to seek reconsideration before we determine whether

[00:16:03] Speaker 03:
There was a final agency action here.

[00:16:05] Speaker 03:
I mean, if the director actually doesn't legally have authority to seek reconsideration in the way it did here, then isn't the original board decision the final board decision, and therefore there's a final agency action?

[00:16:20] Speaker 02:
No.

[00:16:20] Speaker 03:
I guess your argument there would be out of time to seek review of that original board decision.

[00:16:26] Speaker 02:
Well, respectfully, the

[00:16:29] Speaker 03:
original board decision was fully favorable to Odyssey Logistics and that is why the examiner chose to seek reconsideration.

[00:16:45] Speaker 03:
What is this?

[00:16:46] Speaker 03:
Because your friend on the other side was very big about this.

[00:16:49] Speaker 03:
What is the director's authority to seek reconsideration?

[00:16:54] Speaker 03:
Do you call it reconsideration or rehearing of the board's final decision?

[00:16:58] Speaker 02:
Rehearing.

[00:17:00] Speaker 02:
But that's memorialized in the Manual of Patent Examining Procedure 1214.04.

[00:17:08] Speaker 02:
It specifically lays out that the examiner may seek reconsideration.

[00:17:13] Speaker 03:
Is there a time limit on that?

[00:17:15] Speaker 02:
There is not a time limit.

[00:17:18] Speaker 02:
The language of the rule says that the request should normally be made within two months.

[00:17:25] Speaker 02:
But that's a guideline.

[00:17:27] Speaker 02:
And this process is unusual, and it requires very high levels of approval.

[00:17:32] Speaker 02:
The examiner has to get the approval of both the technology center director and the office of the deputy commissioner of patent examination policy.

[00:17:41] Speaker 02:
That takes time at times to make those arguments persuasively.

[00:17:45] Speaker 03:
And for how long did it take here?

[00:17:47] Speaker 02:
It took roughly five months.

[00:17:49] Speaker 02:
The board decision reversing the examiner issued on April 29, 2016.

[00:17:56] Speaker 02:
And the examiner mailed the rehearing request along with the notice that Odyssey would have the opportunity to respond on September 23, 2016.

[00:18:09] Speaker 03:
And has Odyssey ever responded apart from filing these APA cases?

[00:18:13] Speaker 02:
Eventually, it did file a brief under protest.

[00:18:16] Speaker 03:
And so what's going on now?

[00:18:18] Speaker 03:
Is it at the board under reconsideration, or are they staying it based on this appeal?

[00:18:22] Speaker 02:
It stayed based on the APA and the initiation of the APA litigation.

[00:18:32] Speaker 02:
And returning to your original question, Your Honor,

[00:18:36] Speaker 01:
I'm looking at MPP 1214.

[00:18:41] Speaker 01:
It says that a complete reversal of the examiner's rejection brings up the case for immediate action by the examiner.

[00:18:49] Speaker 01:
It says immediate action and later it says that the examiner may request the rehearing of the board decision.

[00:18:55] Speaker 01:
Such request should be made within two months.

[00:18:59] Speaker 01:
Is two months a hard and fast type deadline?

[00:19:05] Speaker 02:
The precise language of the MPAP provision says such a request should normally be made within two months of the return of the application to the technology center.

[00:19:15] Speaker 01:
But what about the language where it says the case bring up for immediate action by the examiner?

[00:19:22] Speaker 02:
Right, that means that it's in position for the examiner to take action on the application.

[00:19:29] Speaker 02:
The proceedings, as of that time, are concluded before the board, and the examiner... That would include a request for rehearing?

[00:19:36] Speaker 02:
Yes.

[00:19:37] Speaker 01:
So he's supposed to take immediate action.

[00:19:41] Speaker 01:
It says that they normally should be made within two months, and here it took how long?

[00:19:46] Speaker 01:
It took approximately five months.

[00:19:49] Speaker 01:
Does it matter?

[00:19:52] Speaker 01:
Could it have taken a year or two years?

[00:19:57] Speaker 02:
Under the rule, yes, but I think that there is a time where it's arguable that there prejudice arises for the patent applicant.

[00:20:08] Speaker 01:
Five months isn't, in your view, that time?

[00:20:11] Speaker 01:
No.

[00:20:12] Speaker 03:
What would be the remedy if, in a really bad case scenario,

[00:20:18] Speaker 03:
You know, this was pending before the examiner after a board decision for like five years.

[00:20:23] Speaker 03:
And at the conclusion of five years, the board then issues, or the examiner, sorry, pending before the examiner after a final board decision.

[00:20:33] Speaker 03:
And the examiner after five years seeks re-hearing.

[00:20:37] Speaker 03:
What is a prospective patent?

[00:20:41] Speaker 02:
Respectfully, Your Honor, I don't think that's a question we should be reaching today.

[00:20:43] Speaker 03:
This is why we're here to test.

[00:20:47] Speaker 03:
It normally should be done in two.

[00:20:50] Speaker 03:
You did it in five, which may not seem all that unreasonable.

[00:20:54] Speaker 03:
But where's the line?

[00:20:55] Speaker 03:
And if there's no line in the MPEP, then is there any relief that patent applicants can have?

[00:21:04] Speaker 02:
Even if that argument were properly considered in a lawsuit such as this, the district court should pass on that question first.

[00:21:10] Speaker 03:
I know, but I'm asking you a hypothetical.

[00:21:13] Speaker 03:
You have to answer it.

[00:21:14] Speaker 03:
I mean, you don't have to, but you're supposed to answer it.

[00:21:18] Speaker 02:
Well, I don't think I should answer that question today, because we haven't made those arguments below.

[00:21:23] Speaker 02:
And we haven't had full opportunity to make full consideration.

[00:21:27] Speaker 03:
Is it a famous petition?

[00:21:30] Speaker 02:
I think.

[00:21:32] Speaker 02:
at a certain point, there is an action under the APA.

[00:21:36] Speaker 03:
I mean, the problem with the mandamus petition is you have to show that you have, I forget the exact term, but you have an absolute right to relief.

[00:21:44] Speaker 03:
And under these facts, I don't see how you'd ever have an absolute right, because in your view, the examiner has the authority under this to seek reconsideration.

[00:21:52] Speaker 03:
And the time boundary is only kind of precatory, not mandatory.

[00:21:58] Speaker 02:
I think that's right, Your Honor, but I don't think resort to mandamus would be necessary.

[00:22:02] Speaker 02:
That's an extraordinary sort of last resort type of remedy.

[00:22:05] Speaker 02:
And there is provision under the APA to compel an agency to act.

[00:22:10] Speaker 02:
And I think at the time that the examiner has done nothing, they haven't issued a notice of allowance.

[00:22:16] Speaker 02:
They haven't reopened examination, as they are allowed to do.

[00:22:20] Speaker 02:
Contrary to opposing counsel's argument, the examiner is not required to issue a notice of allowance.

[00:22:25] Speaker 02:
They have the option of re-

[00:22:27] Speaker 02:
opening examination of this application.

[00:22:31] Speaker 02:
But if they don't do that and they don't ask for a rehearing, they've taken no action on it for an extended period of time, then the APA allows an action against an agency for failure to act.

[00:22:43] Speaker 01:
For undue delay.

[00:22:44] Speaker 01:
Yes.

[00:22:46] Speaker 01:
Let me ask you a question.

[00:22:47] Speaker 01:
Once the examiner requests a rehearing, like we have in this case,

[00:22:53] Speaker 01:
Is all the time that's spent dealing with the situation that's kicked off by that request, is all that credited back to the applicant under the patent term adjustment statute?

[00:23:09] Speaker 01:
Well, we were talking about remedy a while ago.

[00:23:12] Speaker 01:
That could be a remedy, correct?

[00:23:15] Speaker 02:
It is a possible remedy.

[00:23:16] Speaker 02:
And if they were successful on the rehearing, then

[00:23:23] Speaker 02:
patent term adjustment does allow for corrections spent on meritorious appeals to the board.

[00:23:34] Speaker 02:
But to reiterate, what the district court found is that there is no jurisdiction to get to these merits questions.

[00:23:41] Speaker 02:
There's an adequate alternate remedy.

[00:23:43] Speaker 02:
And as this court laid out in Pregis, the Congress carefully constructed the Patent Act with the avenues of appeal.

[00:23:51] Speaker 02:
And so the proper

[00:23:53] Speaker 02:
way to raise these questions is to wait final agency action, let the board decide the rehearing decision, and then either appeal to Eastern District of Virginia under section 145 or to this court under section 141 and raise the question there.

[00:24:09] Speaker 02:
But part of the reason for waiting for that is that may all be moot.

[00:24:14] Speaker 02:
The board has not made any decision on the examiner's request yet.

[00:24:18] Speaker 02:
Again, the odyssey may be successful in front of the board, once again, as regards the rehearing request.

[00:24:25] Speaker 02:
And all of this winds up being a tempest in a teapot that was completely unnecessary, which is entirely the reason that this court does not allow applicants to circumvent the appeal path set out in the Patent Act by going through the APA.

[00:24:43] Speaker 02:
Also relevant are this court's precedent in automated merchandising system, applying Bennett versus Speer.

[00:24:52] Speaker 02:
There has not been a consummation of agency decision making.

[00:24:57] Speaker 02:
No legal consequences have flowed yet.

[00:24:59] Speaker 02:
Again, odyssey may ultimately prevail here.

[00:25:02] Speaker 02:
We don't have a final decision from the board.

[00:25:06] Speaker 02:
And as the director cited on page 22 of his brief,

[00:25:13] Speaker 02:
This court said in GTNX agencies have inherent authority to reconsider their decisions and more specifically on rehearing requests themselves.

[00:25:23] Speaker 02:
The Supreme Court in Stone v. INS lied locomotive engineers and said a rehearing request

[00:25:29] Speaker 02:
renders an agency decision non-final.

[00:25:34] Speaker 02:
And those would equally apply here.

[00:25:37] Speaker 02:
But again, I don't think we have to get there because this entire action is precluded, because it needs to be raised through 141 or 145, not through the Administrative Procedure Act.

[00:25:51] Speaker 02:
If your honors have no questions about the rulemaking challenge, I'll cede the rest of my time.

[00:25:57] Speaker 01:
If the board rules against Odyssey and Odyssey appeals, are we able to review or look at the procedural aspect of this case at that time?

[00:26:08] Speaker 02:
Yes.

[00:26:09] Speaker 02:
Under the automated merchandising systems reasoning, that's the appropriate time for this court to take up the question of whether an examiner.

[00:26:17] Speaker 02:
What would be the remedy?

[00:26:20] Speaker 01:
Let's say we say that the office was in error in this procedure.

[00:26:27] Speaker 01:
What would be the remedy?

[00:26:28] Speaker 02:
You would vacate the unfavorable portions of the reconsideration decision and remand to the agency for proceedings consistent with the original board decision.

[00:26:39] Speaker 01:
That seems to me to be an awful lot of delay involved here.

[00:26:45] Speaker 01:
And I understand that the regulations, for example, allow for an examiner to request for a rehearing.

[00:26:51] Speaker 01:
But there seems to be something wrong in having an examiner take the amount of time, in this case, to reach a decision.

[00:27:01] Speaker 01:
It's reversed by the board.

[00:27:03] Speaker 01:
And the examiner asks for a rehearing, and in effect, it's

[00:27:12] Speaker 01:
acting as its own appellate body at that time, and it's asking for a rehearing, sends it back up to the board, and we're still sitting here, and Odyssey doesn't have an answer, and yet, years ago, it should have perhaps been issued a certificate of allowance.

[00:27:33] Speaker 02:
I have two answers to your question.

[00:27:34] Speaker 02:
Your question, Your Honor.

[00:27:36] Speaker 02:
First of all, the pragmatic response is that we've taken a far longer path to get here via this APA case that was improper and was rightly dismissed than it would have taken to simply allow the board to decide the rehearing decision.

[00:27:49] Speaker 02:
And if there was an unfavorable result, to have a proper appeal of that question before this court.

[00:27:55] Speaker 03:
And secondly, I mean, isn't the real answer.

[00:27:58] Speaker 03:
If PAT applicants don't like this MPEP provision and don't like the fact that the director has given examiners this authority, they can ask the director to undertake a rulemaking and revoke this authority.

[00:28:12] Speaker 03:
And if it comes out unfavorably, then they can file an AP action over that.

[00:28:16] Speaker 03:
But as long as the director has the authority under a MPEP provision, then the examiner is allowed to do it.

[00:28:24] Speaker 02:
That's correct.

[00:28:25] Speaker 02:
And there are other avenues that would be open to the director to exercise correction over the board.

[00:28:30] Speaker 02:
I don't want to delve too deeply into that because of the other cases pending before this court, but those have been raised there as well.

[00:28:36] Speaker 02:
The director has means, whether they are perfect or not, of control over the board.

[00:28:45] Speaker 02:
The second part of my answer is that

[00:28:48] Speaker 02:
You could make that argument about any rehearing or reconsideration request, whether it's before the agency or before this court.

[00:28:58] Speaker 02:
When a dissatisfied party before this court asks for panel rehearing, asks for en banc rehearing, and has required to wade through that process, when the opposing party would rather simply go straight to the Supreme Court, that slows the process down.

[00:29:13] Speaker 02:
But that's the process that we follow.

[00:29:15] Speaker 02:
And there's proper provision here

[00:29:18] Speaker 02:
And there's inherent authority, as I said, for agencies to reconsider their decisions.

[00:29:22] Speaker 02:
There's a long-standing MPEP provision allowing this practice.

[00:29:27] Speaker 02:
It's not exercised without proper judgment.

[00:29:33] Speaker 02:
It requires very high-level approvals for it to happen, which is why it's a rare practice.

[00:29:39] Speaker 02:
And so I think that this Court can be assured that this is not

[00:29:46] Speaker 02:
something that the Patent Office takes lightly.

[00:29:52] Speaker 00:
Thank you, counsel.

[00:29:54] Speaker 00:
Thank you.

[00:29:55] Speaker 00:
Mr. Bauer has a little two minutes for a bottle.

[00:30:04] Speaker 04:
Thank you, Your Honor.

[00:30:07] Speaker 04:
MPEP 1214.04 is not authority.

[00:30:10] Speaker 04:
It is the eternal document of the Patent Office that tells examiners how they should act.

[00:30:17] Speaker 03:
It does not impart authority.

[00:30:34] Speaker 03:
It seems to me that he exactly can exercise this kind of authority and allow examiners to seek rehearing unless there's a statutory prohibition against it.

[00:30:44] Speaker 03:
And you have, I mean, I gave you a bunch of times on your opening argument a chance to point to a specific statutory prohibition against it, and you did it.

[00:30:54] Speaker 03:
Do you have something that says the director can't promulgate these examination rules?

[00:30:59] Speaker 04:
I point to,

[00:31:03] Speaker 04:
of the Office of Regulation 4135, which states when the board's jurisdiction over the proceeding ends.

[00:31:10] Speaker 04:
There is recognized that the director does not have broad authority to review or change the board's decision.

[00:31:19] Speaker 04:
They can't appeal that decision.

[00:31:21] Speaker 04:
They can't change it.

[00:31:22] Speaker 04:
That was at stake in Alipat, which was a timely request for a hearing.

[00:31:27] Speaker 04:
And again, Mr. Sauer has not provided any limitation on when this can be done.

[00:31:33] Speaker 04:
So Odyssey Logistics followed the procedure.

[00:31:37] Speaker 04:
They obtained the final action, which was the board's decision after 12 years.

[00:31:42] Speaker 04:
And we could wait as much as five years more until we get the true final action.

[00:31:48] Speaker 04:
That board decision is a final action.

[00:31:52] Speaker 04:
You are correct that there is difficulty under a petition for writ of mandamus.

[00:31:56] Speaker 04:
It's only for very unusual circumstances.

[00:31:59] Speaker 03:
We believe the APA applies because there is a clear framework here of how appeals... Sure, but you can, as I think your friend said, under the APA have an action to compel agency action when there's been undue delay.

[00:32:14] Speaker 03:
But that's not what you filed here, is it?

[00:32:16] Speaker 03:
Well, no.

[00:32:18] Speaker 03:
If you thought it was too long, then why didn't you file that?

[00:32:21] Speaker 04:
We filed because there was a framework where our remedy on substantive issues is to the board, and then it passes to the examiner who carries that decision into effect.

[00:32:32] Speaker 04:
Under the Kaiser decision, that explicit language cannot be reinterpreted by the agency to its preferences.

[00:32:42] Speaker 04:
We believe the framework is clear.

[00:32:46] Speaker 04:
Everyone understands, and it's been the practice for several years, several decades, that requests for rehearings have to be made within a certain period of time, one month or two months.

[00:32:57] Speaker 04:
I would remind this court that if it received a request for rehearing five months after its judgment, it would be categorically rejected.

[00:33:04] Speaker 03:
No, we can extend the time to espante if we like.

[00:33:09] Speaker 03:
It is not a statutory part.

[00:33:11] Speaker 03:
the point and why you're wrong, there is no statutory timeline for filing these.

[00:33:17] Speaker 03:
Unless, and the Supreme Court has made it very clear, unless it's an explicit statutory bar, agencies and courts have the option to grant extensions even out of time.

[00:33:30] Speaker 03:
It is not true.

[00:33:31] Speaker 03:
As a matter of practice, yes, we would probably reject an out-of-time rehearing petition, but we're not compelled to do so.

[00:33:38] Speaker 04:
And I would say that the decision on whether or not to

[00:33:42] Speaker 04:
The decision to grant the request for a hearing is really decided by the authority of the board, not by the director because it's their decision.

[00:33:49] Speaker 04:
It's their finality, which hopefully we'll all see enforced.