Hyatt v. Dudas

• Decision Date: 23 December 2008
• Docket Number: No. 2007-1050.,No. 2007-1053.,No. 2007-1051.,No. 2007-1052.,2007-1050.,2007-1051.,2007-1052.,2007-1053.
• Citation: 551 F.3d 1307
• Parties: Gilbert P. HYATT, Plaintiff-Appellee, v. Jon W. DUDAS, Director, Patent and Trademark Office, Defendant-Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

551 F.3d 1307

Gilbert P. HYATT, Plaintiff-Appellee, v. Jon W. DUDAS, Director, Patent and Trademark Office, Defendant-Appellant.

No. 2007-1050.

No. 2007-1051.

No. 2007-1052.

No. 2007-1053.

United States Court of Appeals, Federal Circuit.

December 23, 2008.

Kenneth C. Bass, III Sterne, Kessler, Goldstein & Fox P.L.L.C., of Washington, DC, argued for plaintiff-appellee. On the brief were Michael I. Martinez and Michael I. Coe, Crowell & Moring, LLP, of Washington, DC. Of counsel on the brief was Gregory L. Roth, Law Offices of Gregory L. Roth, of La Palma, CA. Of counsel was J. Robert Chambers, Wood, Herron & Evans, L.L.P., of Cincinnati, OH.

Robert J. McManus, Associate Solicitor Solicitor's Office, United States Patent and Trademark Office, of Arlington, VA, argued for defendant-appellant. With him on the brief were Stephen Walsh, Acting Solicitor, Thomas W. Krause and William G. Jenks, Associate Solicitors.

Before NEWMAN and GAJARSA, Circuit Judges, and WARD, District Judge.^*

GAJARSA, Circuit Judge.

The Patent and Trademark Office ("PTO") appeals a decision of the United States District Court for the District of Columbia in a consolidated case involving four civil actions brought by Gilbert P. Hyatt under 35 U.S.C. § 145 (2000). In his section 145 actions, Hyatt challenged decisions of the Board of Patent Appeals and Interferences ("Board") that affirmed the rejections of all claims in twelve of his patent applications. The district court's decision vacated the Board's decisions and remanded Hyatt's case to the Board for further consideration. The PTO raises two issues on appeal. The first issue is the extent to which 37 C.F.R. § 1.192(c)(7) (2000)¹ allows the Board to affirm the rejections of groups of patent claims based upon its consideration of certain representative claims. In particular, the PTO challenges the district court's holding that the Board misinterpreted the meaning of "ground of rejection" in section 1.192(c)(7) and, as a result, improperly selected certain claims to be representative of groups of claims that were rejected on different grounds. The second issue is whether the district court's remand order requires the Board to consider arguments that Hyatt allegedly waived by failing to raise them before the Board in his initial appeals. Because we conclude, first, that the district court correctly interpreted section 1.192(c)(7) and, second, that the district court's remand order does not require the Board to consider arguments waived by Hyatt, we affirm.

BACKGROUND

This case concerns the patentability of approximately 2,400 claims in twelve related patent applications in areas including microcomputers, computer memories and displays, and global positioning systems. Hyatt filed all twelve applications between April and June of 1995. However, all twelve applications were part of a series of continuation applications that claim priority to ancestor patent applications dating back to the early 1980s or before. In addition, all twelve applications were amended to add hundreds of claims that were not included in the original applications.

The PTO examiner rejected all the claims in Hyatt's applications. The most common basis for rejection was that the claims lacked written description support as required by 35 U.S.C. § 112 ¶ 1. However, the PTO also rejected some claims for lack of enablement and for obviousness.

Hyatt appealed the examiner's rejections to the Board. Hyatt argued that each of his claims should be reviewed independently by the Board "because the claims are separately patentable and because each of the claims is separately argued." The Board concluded, however, that Hyatt had separately argued only twenty-one of his claims because these were the only claims that Hyatt had discussed in the "Summary of the Invention" sections² of his briefs to the Board. On this basis, the Board selected these twenty-one claims as representative of the approximately 2,400 claims on appeal. Upon consideration of these representative claims, the Board affirmed the examiner's rejections and thereupon affirmed the rejections of the non-representative claims.

Hyatt challenged the Board's decision in the district court pursuant to 35 U.S.C. § 145. Before the district court, Hyatt argued that the Board should have considered all of his 2,400-plus claims individually. In the alternative, Hyatt argued that the Board had improperly selected the twenty-one claims discussed in the "Summary of the Invention" sections of his briefs as representative of his remaining claims. Conversely, the PTO argued, first, that the Board properly chose the twenty-one representative claims because Hyatt had failed to separately argue any other claims and, second, that all the claims were properly grouped because each group was rejected under the same statutory provision, e.g., 35 U.S.C. § 112 ¶ 1 (the written description requirement).

The district court found that Hyatt had failed to separately argue all of his claims. However, the court also concluded that the Board had failed to comply with 37 C.F.R. § 1.192(c)(7) (2000) when selecting the representative claims upon which it based its review of the examiner's rejection of groups of claims in Hyatt's applications. In particular, the district court held that "the Board should not have grouped claims that have been rejected for lack of a written description unless those claims share a limitation that has been found to have not been disclosed by the specification." Hyatt v. Dudas, Nos. 04-1138, 04-1139, 04-1802, 05-0310, 2006 WL 2521242, at *9 n. 8 (D.D.C. Aug. 30, 2006). Accordingly, the district court remanded the case to the Board with instructions to regroup and reconsider Hyatt's claims according to appropriate representative claims. The PTO appeals the district court's remand order.

DISCUSSION

I. Jurisdiction

Before addressing the merits of this appeal, we must first address the threshold issue of our appellate jurisdiction. Int'l Rectifier Corp. v. IXYS Corp., 515 F.3d 1353, 1357 (Fed.Cir.2008); Hyatt v. Dudas, 492 F.3d 1365, 1368 (Fed.Cir. 2007) ("Hyatt I"); Thompson v. Microsoft Corp., 471 F.3d 1288, 1291 (Fed.Cir.2006). This court has exclusive jurisdiction over appeals of final decisions in section 145 actions (i.e., actions brought in the D.C. District Court pursuant to 35 U.S.C. § 145). See 28 U.S.C. § 1295(a)(4)(C). The case before us, however, is an appeal of a remand order issued by the district court. Appellate courts generally do not have jurisdiction over a case "when no final judgment has been rendered, and a remand for further agency proceedings is generally not a final judgment." Hyatt I, 492 F.3d at 1368 (citing Cabot Corp. v. United States, 788 F.2d 1539, 1542 (Fed. Cir.1986)). Nonetheless, there is an exception to the final judgment rule in the rare situation when denying appellate review of a remand order would likely result in the permanent loss of an agency's ability to appeal the lower court's determination of a legal issue. See Id. at 1368 (citing Sullivan v. Finkelstein, 496 U.S. 617, 625, 110 S.Ct. 2658, 110 L.Ed.2d 563 (1990)); see also Williams v. Principi, 275 F.3d 1361, 1364 (Fed.Cir.2002) ("[W]e will depart from the strict rule of finality when ... [the lower court made] a clear and final decision of a legal issue ... and there [is] a substantial risk that ... the remand proceeding may moot the issue."); Travelstead v. Derwinski, 978 F.2d 1244, 1248 (Fed.Cir.1992) (holding that this court had appellate jurisdiction over a remand to the Department of Veterans Affairs where the lower court's remand order required the agency to act contrary to its interpretation of 38 U.S.C. § 3713).

In this case, should we deny appellate review, there is a substantial risk that the PTO will permanently lose its ability to challenge the district court's interpretation of section 1.192(c)(7). Cf. Williams, 275 F.3d at 1364. Indeed, under the district court's interpretation of section 1.192(c)(7), the PTO may be required to issue claims that it would otherwise deny, and "by law the PTO cannot appeal its own decision to not reject claims," Hyatt I, 492 F.3d at 1369. Accordingly, we have jurisdiction to determine whether the district court's interpretation of section 1.192(c)(7) is correct.

II. Standard of Review

An agency's interpretation of its own regulation is entitled to substantial deference, and "the reviewing court should give effect to the agency's interpretation so long as it is reasonable." Martin v. Occupational Safety & Health Review Comm'n, 499 U.S. 144, 150-51, 111 S.Ct. 1171, 113 L.Ed.2d 117 (1991) (quotation omitted); see also Bowles v. Seminole Rock & Sand Co., 325 U.S. 410, 414, 65 S.Ct. 1215, 89 L.Ed. 1700 (1945) (An agency's interpretation of its own rule or regulation is entitled to "controlling weight unless it is plainly erroneous or inconsistent with the regulation.").

III. The Meaning of "Ground of Rejection" in Section 1.192(c)(7)

Section 1.192(c)(7) provides:

Grouping of claims. For each ground of rejection which appellant contests and which applies to a group of two or more claims, the Board shall select a single claim from the group and shall decide the appeal as to the ground of rejection on the basis of that claim alone unless a statement is included that the claims of the group do not stand or fall together and, in the argument under paragraph (c)(8) of this section, appellant explains why the claims of the group are believed to be separately patentable. Merely pointing out differences in what the claims cover is not an argument as to why the claims are separately patentable.

(emphasis added). The PTO argues that a "ground of rejection" is simply the statutory section under which a claim was rejected. As applied here, the PTO argues that the ground of rejection is a failure to satisfy the written description requirement of 35 U.S.C. § 112 ¶ 1. Accordingly, the PTO argues that it can select a claim rejected...