I’ve been trying to post this for 48 hours, and it keeps getting caught in some blocker. So it’s a little out of time sequence. Let me try breaking it into two parts.

The PTO is so far in the wrong in so many ways in the Hyatt case…

Preface: the Hyatt case is another instance of what I’ve been trying to teach the patent bar in my recent articles—there are lots of cases that are losers when argued on patent law grounds, that become winners when argued on administrative law grounds. Hyatt is another example.

1. No agency may use guidance to raise legal hurdles against the public. None. Never. The most an agency can do with guidance against the public is “interpret,” and that only vis-à-vis “genuine ambiguity” (I had used the term “active ambiguity” in my articles). The Supreme Court just reminded us of that again a few weeks ago, in Kisor v. Wilkie link to supremecourt.gov MPEP § 1207.04, the rule at issue in Hyatt, goes beyond any “interpretation.” The rule is entirely made up out of whole cloth. It has no antecedent “ambiguity” in any statute or regulation. MPEP § 1207.04 is therefor entirely invalid — not procedurally invalid, facially invalid. Instead of this simple, easy-winner administrative law argument, Hyatt raised only exotic patent law arguments. I don’t understand. Maybe he’s fonder of fighting than winning.

2. An agency may not enforce any rule (guidance or anything else) against the public until the rule is published in the Federal Register, as required by 5 U.S.C. § 552(a). The first time the PTO ever published anything plausibly relating to § 552(a) was in January 2018 (and even that notice didn’t comply with statute). Mr. Hyatt’s facts predate that publication, and therefor no provision of the MPEP can be cited against any applicant for anything the applicant did before January 2018. Another simple-dimple argument that Hyatt didn’t raise. (And the statute of limitations has never begun to run either—another issue that made the difference between winning and losing that Hyatt didn’t raise.)

3 Dennis said: “My take here is that the PTO should be able to reopen prosecution when it acts reasonably” Well, yes, of course. But absolutely NO in the sense Dennis means. “Reasonably” means “in conformance with the Administrative Procedure Act,” doesn’t it? (Dennis, you ought to know better.) The PTO is completely off base and self-interested here—as the PTO does in everything else relating to Gil Hyatt, or administrative law protections for all other applicants. I’ve talked to enough PTO senior lawyers to be able to report that not only is there no knowledge of the APA among the PTO’s senior lawyers or PTAB APJs, they truly do not care to know or learn about, let alone follow, any law that gets in the way of production counts.

Let’s see if I can get part 2 through.