Argument Forfeited When Raised for the First Time Fourteen Months After an Appeal

Written by: Matthew S. Whitehead and Daniel Kiang

ODYSSEY LOGISTICS & TECHNOLOGY CORP. v. STEWART

Before Dyk, Reyna, and Stoll.  Appeal from the United States District Court for the Eastern District of Virginia.

Summary: A patent applicant forfeited its Appointments Clause challenge by failing to raise the issue during its appeal from a PTAB decision. In 2020, the Federal Circuit affirmed a 2018 PTAB decision affirming the examiner’s rejection of a patent application.  The applicant, Odyssey Logistics & Technology Corporation (“Odyssey”), did not raise a constitutional challenge under the Appointments Clause during that appeal.  Over a year after the Federal Circuit affirmed the PTAB’s decision, the Supreme Court issued its decision in United States v. Arthrex, which held that administrative patent judges’ unreviewable authority in inter partes reviews violated the Appointments Clause.  To remedy the constitutional violation, the Supreme Court held that the PTO Director has the authority to review PTAB decisions.

In June 2021, a week after the Supreme Court decision, Odyssey filed a request for Director review of the 2018 PTAB decision.  The PTO responded that it would not consider the request.  Odyssey then filed a complaint in district court to require the Director to consider Odyssey’s request for review.  The district court dismissed the case for lack of jurisdiction and Odyssey appealed to the Federal Circuit.

The Federal Circuit held that the PTO did not abuse its discretion in denying the request for Director review.  Because the original Federal Circuit appeal terminated the PTO proceedings, Odyssey’s district court complaint was essentially a request for reconsideration or reopening of the 2018 PTAB decision based on an intervening change in law.  Odyssey, however, could not demonstrate the extraordinary circumstances necessary for reconsideration of the 2018 PTAB decision because Odyssey forfeited its Appointments Clause challenge.  Odyssey had notice of the Appointments Clause issue during the pendency of the original appeal but first raised the issue fourteen months after the Federal Circuit issued its mandate.

Editor: Sean Murray