Hyatt v. U.S. Patent & Trademark Office

• Decision Date: 20 August 2015
• Docket Number: No. 2014–1596.,2014–1596.
• Citation: 116 U.S.P.Q.2d 1331,797 F.3d 1374
• Parties: Gilbert P. HYATT, Plaintiff–Appellant v. UNITED STATES PATENT AND TRADEMARK OFFICE, Michelle K. Lee, Director, U.S. Patent and Trademark Office, In her Official Capacity, Defendants–Appellees.
• Court: U.S. Court of Appeals — Federal Circuit

797 F.3d 1374

116 U.S.P.Q.2d 1331

Gilbert P. HYATT, Plaintiff–Appellant

v.UNITED STATES PATENT AND TRADEMARK OFFICE, Michelle K. Lee, Director, U.S. Patent and Trademark Office, In her Official Capacity, Defendants–Appellees.

No. 2014–1596.

United States Court of Appeals, Federal Circuit.

Aug. 20, 2015.

Aaron M. Panner, Kellogg, Huber, Hansen, Todd, Evans & Figel, PLLC, Washington, DC, argued for plaintiff-appellant. Also represented by Melanie L. Bostwick.

Mark R. Freeman, Appellate Staff, Civil Division, United States Department of Justice, Washington, DC, argued for defendants-appellees. Also represented by Scott R. McIntosh, Joyce R. Branda ; Nathan K. Kelley, Brian Thomas Racilla, Molly R. Silfen, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA; Dana J. Boente, Antonia Konkoly, Office of the United States Attorney for the Eastern District of Virginia, Alexandria, VA.

Before MOORE, MAYER, and LINN, Circuit Judges.

Opinion

MOORE, Circuit Judge.

Gilbert P. Hyatt appeals from the district court's decision that it lacked subject matter jurisdiction over his Administrative Procedure Act (“APA”) claims against the Patent and Trademark Office (“PTO”) and its acting Director under 5 U.S.C. § 701(a)(2) and, alternatively, that the PTO would have been entitled to summary judgment for these claims. For the reasons discussed below, we affirm the district court's alternative holding that the PTO would have been entitled to summary judgment.

Background

Mr. Hyatt is the named inventor on at least 75 issued patents and nearly 400 pending patent applications, all of which were filed on or before June 8, 1995.¹ Because Mr. Hyatt's pending applications were filed before the effective date of the Uruguay Round Agreements Act, any patent issuing from the pending applications will have a term of seventeen years from the date of issuance. See 35 U.S.C. § 154 (1994) ; see also Uruguay Round Agreements Act, Pub.L. No. 103–465, § 532(a), 108 Stat. 4809, 4983–85 (1994). Each of Mr. Hyatt's pending applications incorporates by reference, and claims the benefit of priority from, a network of earlier-filed applications dating back to the 1970s.

Mr. Hyatt's pending applications feature extremely large claim sets, containing, on average, 116 independent claims and 299 total claims. The PTO estimated that these applications include 45,000 independent claims and 115,000 total claims when combined. Despite the remarkable number of claims, these applications consist of only 12 distinct specifications. Application number 05/849,812 illustrates the complexity of Mr. Hyatt's web of pending applications. The '812 application claims priority from 20 earlier-filed applications, and is itself the parent of 112 continuing applications. It contains 130 independent claims and 315 total claims, and is one of 18 applications sharing a common specification, which together contain 2,160 independent claims.

In August 2013, the PTO began to issue formal office actions, called “Requirements,” corresponding to Mr. Hyatt's “families” of applications having a common specification. Each Requirement addresses one family and is copied into the file of each application within the family. Generally, each Requirement requires Mr. Hyatt to: 1) select a number of claims from that family for prosecution, not to exceed 600 absent a showing that more claims are necessary; 2) identify the earliest applicable priority date and supporting disclosure for each selected claim; and 3) present a copy of the selected claims to the PTO. Although each Requirement is entered in the prosecution history of a particular patent application, it also contains information about other patent applications in that family. Much of this information is included in the context of explaining the PTO's decision to impose on Mr. Hyatt the obligations outlined in the Requirements. For example, the Requirement for the '812 application contains information about pending patent applications from the same family as the '812 application. It identifies the filing date and serial number of many other pending applications, including all of the applications in the same family as the '812 application. It describes the priority relationships between the applications in the family and with other patent applications. It lists the number of total claims and independent claims of every application in the family, as well as the total estimated number of claims in all of Mr. Hyatt's applications. It describes the prosecution history of other applications in the family, including information about the substance of several amendments to the applications. And, in a table that spans 18 pages, it quotes the full text of dozens of claims from applications in the family.

The prosecution histories of most of Mr. Hyatt's pending applications include a Requirement corresponding to that application's family. In the ordinary course of examination, the prosecution history of an application remains confidential until the application itself issues as a patent or an issued patent claims priority from the application.² See 37 C.F.R. § 1.11(a) (“Rule 11(a)”) (covering the publication of PTO records and files); id. § 1.14(a)(1)(v) (“Rule 14(a)(1)(v)”) (covering the disclosure of parent applications). Thus, the Requirements attached to pending applications that are not parents to issued patents will remain confidential. However, in a few cases, including the '812 application, an issued patent claims priority from one of Mr. Hyatt's pending applications.³ Requirements copied into the prosecution history of these applications will become publicly available in the ordinary course of examination, pursuant to Rule 14(a)(1)(v).⁴ The disclosure of these Requirements will result in the disclosure of otherwise-confidential information about other, nonpublic applications.

In response to the PTO's issuance of the Requirements, Mr. Hyatt filed a series of petitions at the PTO seeking to expunge the confidential information in the Requirements. In these petitions, Mr. Hyatt relies on 35 U.S.C. § 122(a),⁵ which provides that the PTO shall keep applications confidential unless “necessary to carry out the provisions of an Act of Congress or in such special circumstances as may be determined by the Director.” The Director denied Mr. Hyatt's petitions, declaring it “necessary for proper examination of [Mr. Hyatt's] applications under 35 U.S.C. § 131 ” to include the otherwise-confidential information in the Requirements. J.A. 234. She also stated that “the circumstances surrounding these applications, including the number of related applications filed, the number of claims filed, and the number of applications to which benefit of priority is claimed, qualify as ‘special circumstances' under section 122.” Id. She wrote that the Requirements attached to already-published applications that were parents to issued patents (including the '812 application) would be made public within 60 days.

Shortly afterwards, Mr. Hyatt filed claims in the Eastern District of Virginia against the PTO and its acting Director, in her official capacity, under the APA, 5 U.S.C. §§ 702, 706. Mr. Hyatt alleged that disclosure of the Requirements would violate § 122(a) by disclosing confidential information about Mr. Hyatt's non-public patent applications.

On the PTO's motion, the district court dismissed Mr. Hyatt's complaint for lack of subject matter jurisdiction under 5 U.S.C. § 701(a)(2), holding that there was no “judicially manageable standard of review” under which it could assess the PTO's decision to issue the Requirements. Hyatt, 2014 WL 2446176, at *3. In the alternative, the district court held that § 122 did not prohibit the disclosure of the Requirements, such that the PTO would be entitled to summary judgment. First, it reasoned that the information in the Requirements was necessary to carry out the provisions of an Act of Congress, particularly § 131, which provides that the Director “shall cause an examination to be made” of properly filed patent applications. Id. at *5–6. Second, it found that there was no genuine dispute that the “extraordinary” nature and prosecution history of Mr. Hyatt's applications constituted “special circumstances,” warranting publication of the Requirements. Id. at *6. Mr. Hyatt appealed. We have jurisdiction under 28 U.S.C. § 1295(a)(1).

Discussion

We review a district court's decision to dismiss for lack of subject matter jurisdiction de novo. Pennington Seed, Inc. v. Produce Exch. No. 299, 457 F.3d 1334, 1338 (Fed.Cir.2006). We review a district court's grant of summary judgment de novo, under the same standards applied by the district court. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed.Cir.2005). In an APA challenge, we consider whether the PTO's actions were arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law. Id. (citing 5 U.S.C. § 706(2) ).

Mr. Hyatt argues that the PTO's publication of the Requirements would violate § 122(a), because it would result in the disclosure of confidential information about his non-public pending applications. The PTO argues that § 122(a), which allows the Director to disclose information concerning pending patent applications where “necessary to carry out the provisions of an Act of Congress or in such special circumstances as may be determined by the Director,” commits to the Director's discretion the authority to determine whether “special circumstances” exist. The PTO asserts that agency determinations of this type lie outside of the scope of the APA. Alternatively, it argues that the Director correctly determined that “special circumstances” exist and that the disclosure of the Requirements is necessary to carry out the provisions of an Act of Congress.

I. Reviewability of Director's “Special Circumstances” Determination

There is a “strong presumption” favoring judicial review of agency actions. Bowen v. Mich. Acad. of Family...