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Chestek PLLC v. Kathi Vidal, Under Secretary of Commerce for Intellectual Property and Director, United States Patent and Trademark Office

Paid petition · United States Court of Appeals for the Federal Circuit, No. 2022-1843 · judgment February 13, 2024


Certiorari denied · October 7, 2024
Pre-decision estimate: 18% cert probability (95% interval 11%–26%)

Before the decision, about 4.3× the 4.1% base rate. The model weighted this up for counsel who has won certiorari before, a circuit split argued in the petition, and a Federal Circuit decision below.

Question presented

The Patent and Trademark Office’s organic statute authorizes the agency to “establish regulations” that “govern the conduct of proceedings in the Office.” 35 U.S.C. § 2(b)(2). That authority is limited to issuance of “procedural” rules. Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1335 (Fed. Cir. 2008). In 1999, Congress amended the provision to specify that regulations “shall be made in accordance with section 553 of title 5,” which generally prescribes notice-and-comment procedures for rulemaking. Pub. L. No. 106-113, App. I, 113 Stat. 1501A-552, 572–73 (1999). In the decision below, the Federal Circuit held that the PTO need not provide notice and comment for procedural rules promulgated under section 2(b)(2), thereby nullifying the statutory command that such regulations “shall be made in accordance with section 553.” Accordingly, the question presented is: Whether the PTO is exempt from notice-and-comment requirements when exercising its rulemaking power under 35 U.S.C. § 2(b)(2).

Counsel of record

For petitioner
Andrew Michael Grossman
Baker & Hostetler LLP

For respondent
Elizabeth B. Prelogar
Solicitor General

Case

Conference history
Distributed for 1 conference

Amicus briefs
5 cert-stage

Proceedings

  1. Oct 07 2024
    Petition DENIED.
  2. Aug 29 2024
    Reply of petitioner Chestek PLLC filed. (Distributed)
  3. Aug 28 2024
    DISTRIBUTED for Conference of 9/30/2024.
  4. Aug 14 2024
    Brief of respondent Kathi Vidal, Under Secretary of Commerce for Intellectual Property and Director, United States Patent and Trademark Office in opposition filed.
  5. Jun 18 2024
    Motion to extend the time to file a response is granted and the time is further extended to and including August 14, 2024.
  6. Jun 17 2024
    Motion to extend the time to file a response from July 15, 2024 to August 14, 2024, submitted to The Clerk.
  7. Jun 14 2024
    Brief amicus curiae of The Bar of Association for the District of Columbia filed.
  8. Jun 14 2024
    Brief amici curiae of Cato Institute and Ethics and Public Policy Center filed.
  9. Jun 14 2024
    Brief amicus curiae of IEEE-USA filed.
  10. Jun 13 2024
    Brief amicus curiae of New Civil Liberties Alliance filed.
  11. Jun 13 2024
    Brief amici curiae of International Game Developers Association and CodeMiko Project, LLC filed.
  12. May 28 2024
    Motion to extend the time to file a response is granted and the time is extended to and including July 15, 2024.
  13. May 23 2024
    Motion to extend the time to file a response from June 14, 2024 to July 15, 2024, submitted to The Clerk.
  14. May 13 2024
    Petition for a writ of certiorari filed. (Response due June 14, 2024)