Hyatt v. U.S. Patent & Trademark Office
| Decision Date | 19 August 2020 |
| Docket Number | Civil Action No. 1:18-cv-546 |
| Court | U.S. District Court — Eastern District of Virginia |
| Parties | GILBERT P. HYATT, Plaintiff, v. UNITED STATES PATENT AND TRADEMARK OFFICE, and ANDREI IANCU, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, in his official capacity, Defendants. |
Plaintiff Gilbert P. Hyatt is a prolific inventor who has filed hundreds of patent applications over the years in fields such as computer technology, machine control, image processing, and audio processing. Most of plaintiff's applications are of unprecedented, inordinate length, complexity, and interrelatedness. Although plaintiff has achieved some significant success—more than 70 of his applications have resulted in the issuance of patents—many of his applications have remained pending for years, and indeed, plaintiff contends that the defendant, the United States Patent and Trademark Office ("PTO")1 has deliberately determined not to process, examine, or issue patents for any of plaintiff's pending patent applications. Thus, plaintiff's Administrative Procedure Act2 challenge to the PTO's handling of plaintiff's patentapplications in this case focuses on a single question:3
Whether the PTO has a current, de facto rule, order, or policy to refrain from issuing plaintiff Gilbert P. Hyatt any patents based on his currently existing applications and to prevent plaintiff from obtaining judicial review of his currently existing applications regardless of the merits of his patent applications.
In other words, plaintiff contends that the PTO has adopted a sub rosa rule, order, or policy to decline to issue patents for or to take any final PTO action on plaintiff's patent applications. The PTO argues that no such rule, order, or policy exists and that plaintiff is the author of his own misfortune because plaintiff's extraordinarily lengthy, complex applications and his prosecution conduct are the cause of the delays and slow pace of the examination process.
Given the nature of the claims and the question presented, plaintiff was permitted to conduct limited deposition discovery of PTO personnel. Following this limited discovery, the Administrative Record including this limited discovery was assembled. The parties then orally argued the merits of plaintiff's challenge. Accordingly, this matter is now ripe for disposition on the basis of the Administrative Record.
Because plaintiff brings this case under the APA, judicial review is conducted on the administrative record. 5 U.S.C. § 706 (). The Administrative Record assembled herefocuses on the PTO's recent activity related to certain of plaintiff's patent applications, as that recent activity or lack thereof is probative of the truth or falsity of plaintiff's claim that the PTO, in violation of its statutory duties, has a current, de facto rule, order, or policy to refrain from issuing plaintiff any patents based on his currently existing applications and to prevent plaintiff from obtaining judicial review of his currently existing applications regardless of the merits of his patent applications.
Essential to an understanding of the instant dispute is (A) a brief summary of the patent prosecution process, (B) a description of the nature of plaintiff's patent applications and their unprecedented length and complexity, (C) a summary of pertinent past and ongoing litigation between plaintiff and the PTO, and (D) a review of the proceedings to date.
The PTO is responsible for "the granting and issuing of patents," which the PTO does after conducting a thorough examination of patent applications in a process known as prosecution. 35 U.S.C. §§ 2(a)(1), 131. Prosecution begins when an applicant submits a "specification" that contains a written description of the invention sought to be patented and of the manner and process of making and using the invention. 35 U.S.C. §§ 111, 112. A specification must conclude with "one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor . . . regards as the invention." 35 U.S.C. § 112.
On receiving a patent application, the PTO is statutorily required to "cause an examination to be made of the application and the alleged new invention." 35 U.S.C. § 131. Typically, a patent examiner with relevant scientific or technical competence performs thisexamination by reviewing each proposed claim in the application for novelty, support in the specification's written description, and compliance with other patentability requirements and statutes. See 37 C.F.R. § 1.104(a)(1). After the initial examination, the examiner sends the applicant an "office action," which may allow or reject the patent claims. See 37 C.F.R. §§ 1.104, 1.111(a). If any claims are rejected, the applicant may respond with amendments, evidence of patentability, arguments in favor of patentability, or some combination thereof. 37 C.F.R. § 1.111(b) (). If, after the PTO issues an office action in an application, an applicant fails to respond within six months after "notice has been given or mailed to the applicant," then the application "shall be regarded as abandoned by the parties thereto." 35 U.S.C. § 133. An applicant may respond to an abandonment notice by filing a petition (i) to revive an abandoned application or (ii) to withdraw an examiner's holding of abandonment. 37 C.F.R. §§ 1.137, 1.181(a).
In the event the examiner concludes that the applicant is entitled to a patent, the examiner will issue a notice of allowance giving the applicant three months in which to pay an issue fee and a publication fee, payment of which generally results in final issuance of the patent. See 37 C.F.R. §§ 1.311, 1.314. In the course of prosecution, the examiner may issue a Requirement for Information directing the applicant to submit "such information as may be reasonably necessary to properly examine or treat the matter." 37 C.F.R. § 1.105(a)(1). In sum, patent examination is typically a back-and-forth, iterative process resulting ultimately in the patent examiner allowing or rejecting one or more of the claims in the patent application.
When an examiner rejects one or more of the claims in the patent application on twooccasions, the applicant may appeal to the Patent Trial and Appeal Board.5 35 U.S.C. § 134; 37 C.F.R. § 41.31. To appeal, the applicant must file a notice of appeal and then an appeal brief within two months of filing the notice. 37 C.F.R. §§ 41.31(a)(1), 41.37(a). Upon the appeal briefs filing, the patent examiner may, "within such time as may be directed by the Director," file an "examiner's answer" setting forth the grounds on which the application was rejected and—potentially—"a new ground of rejection." 37 C.F.R. § 41.39(a). Section 1207.02 of the Manual of Patent Examination Procedure ("MPEP") recommends that a patent examiner "should furnish" this answer "within 2 months after the receipt of the [appeal] brief by the examiner." But significantly, there is no firm statutory or regulatory deadline for the filing of the examiner's answer. Once the examiner's answer is filed, the applicant must file a reply brief within two months. 37 C.F.R. § 41.41(a). Pursuant to PTO regulations, jurisdiction over the appeal does not pass to the Board until the applicant files a reply brief or the time expires for filing a reply brief, whichever occurs first. 37 C.F.R. § 41.35(a). Because there is no deadline or requirement for an examiner to file an answer, the examiner can halt an appeal simply by not filing an answer. Nor is this the sole means of stopping the appeal process. After an applicant has filed an appeal brief but before jurisdiction passes to the Board, either the applicant or the examiner may reopen examination and prevent the Board from gaining jurisdiction over the application. See 37 C.F.R. § 41.35(b); MPEP § 1207.04. In either case, the Board's jurisdiction never vests.
In the event the examination is not reopened and the Board acquires jurisdiction and affirms the examiner's rejection, that decision constitutes a final agency action which the patent applicant may then appeal to the Court of Appeals for the Federal Circuit or challenge in a civilaction in federal district court. See 35 U.S.C. §§ 141(a), 145.6 If the Board disagrees with the rejection, it may reverse the decision or remand the application to the examiner. 37 C.F.R. § 41.50(a). Remand is not considered final agency action for purposes of appeal. 37 C.F.R. § 41.50(e).
A summary of the general nature of plaintiff's patent applications—and their unprecedented length and complexity—is essential to an understanding of the parties' dispute. Plaintiff's pending patent applications are some of the longest-pending patent applications at the PTO. Almost all of plaintiff's applications were filed prior to June 8, 1995, the effective date of certain amendments to the patent laws. In December 1994, as part of the implementation of the Uruguay Round of the General Agreement on Tariffs and Trade ("GATT"), Congress amended several statutory provisions, including the provisions relating to patent terms.7 Before the GATT, a patent's term ran, in general, for seventeen years from the date the patent was issued. But as part of the GATT, Congress amended this provision to extend the patent term, in general, to twenty years from the date the application is filed. See Gilead Scis., Inc. v. Lee, 778 F.3d 1341, 1343-44 (Fed. Cir. 2015).8
As the effective date of these patent law changes—June 8, 1995—drew near, plaintiffbegan submitting substantial numbers of patent applications to the PTO....
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