Last week, the Federal Circuit issued an order in the PTO rules case, Tafas v. Kappos. The order granted the joint motion of the parties to dismiss the case as moot given the PTO’s decision to rescind the controversial rules. The court did, however, side with Dr. Tafas in denying the PTO’s motion to vacate the district court opinion. The district court’s opinion stated that the PTO does not have substantive rule-making authority and that the agency exceeded its power in promulgating the rules. This opinion will remain a precedent of that court.
The court’s order cited Supreme Court precedent that:
Vacatur . . . is appropriate if the mootness arises from external causes over which the parties have no control, or from the unilateral act of the prevailing party, but not when the mootness is due to a voluntary act by the losing party, such as a settlement.
The PTO argued that an intervening regulatory change is analogous to an intervening statutory change. In other words, the new PTO leadership decided the rules were not to be pursued, which is similar to Congress acting to prevent an agency from enacting rules. The Federal Circuit disagreed, holding that the unilateral act of the PTO to rescind the rules was not the same as an intervening statutory change. Thus, the PTO, as the losing party, should not benefit from vacatur of the district court opinion.
