Hyatt v. U.S. Patent & Trademark Office

Decision Date12 November 2015
Docket NumberCase No. 1:14–cv–1300.
Citation146 F.Supp.3d 771
CourtU.S. District Court — Eastern District of Virginia
Parties Gilbert P. HYATT, Plaintiff, v. UNITED STATES PATENT AND TRADEMARK OFFICE, et al., Defendants.

146 F.Supp.3d 771

Gilbert P. HYATT, Plaintiff,
v.
UNITED STATES PATENT AND TRADEMARK OFFICE, et al., Defendants.

Case No. 1:14–cv–1300.

United States District Court, E.D. Virginia, Alexandria Division.

Signed Nov. 12, 2015.


146 F.Supp.3d 773

John T. Steffen, Joseph S. Kistler, Hutchison & Steffen, Las Vegas, NV, Aaron M. Panner, Melanie Bostwick, Kenneth Matthew Fetterman, Kellogg Huber Hansen Todd Evans & Figel PLLC, Washington, DC, for Plaintiff.

Lauren A. Wetzler, Antonia Konkoly, U.S. Attorney's Office, Alexandria, VA, for Defendants.

MEMORANDUM OPINION

T.S. ELLIS, III, District Judge.

This § 706(1) APA1 case, in which plaintiff alleges that the United States Patent and Trademark Office (“PTO”) has unreasonably delayed final agency action on 80 of plaintiff's approximately 400 pending patent applications, is exceptional and unprecedented in several respects. All 80 of the patent applications in issue have been pending before the PTO since at least 1995, yet no patent has issued, nor have any applications been finally rejected. Moreover, all 80 patent applications in issue include specifications of unprecedented length (well in excess of 100 pages) and assert claims in unprecedented numbers (at one point, approximately 115,000 total). The parties point accusatory fingers at one another as the cause of the delay in the prosecution of the 80 patent applications in issue. Plaintiff says that at various points the PTO has deliberately declined to allow prosecution of the applications and has taken other steps to halt the process. The PTO responds that responsibility for the delay in the process can be laid at plaintiff's feet, as the length of the applications, the number of claims asserted, and the interrelatedness of the claims are the causes and, in effect, constitute for plaintiff a self-inflicted wound.

The parties filed, briefed, and orally argued cross-motions for summary judgment, which are now ripe for disposition.

I.

As plaintiff seeks judicial review under the APA, that review must be on the basis of the administrative record. See Nw. Motorcycle Ass'n v. U.S. Dep't of Agric., 18 F.3d 1468, 1472 (9th Cir.1994). The administrative record in this case

146 F.Supp.3d 774

gives fresh meaning to the word “voluminous;” the record is a total of several hundred thousand pages.2 Of course, a complete summary of such a massive record is both impractical and unnecessary. Yet, it is both practical and useful to describe succinctly the record facts that are pertinent to the disposition of the parties' motions. Before stating these facts, a brief summary of the patent prosecution process is helpful to provide a context for understanding the record facts and the parties' dispute.

A.

The PTO is responsible for “the granting and issuing of patents,” which it 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 with the submission of a “specification” containing a written description of the invention sought to be patented, the manner and process of making and using the invention, and concluding 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. §§ 111, 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, such an examination is undertaken by a patent examiner with relevant scientific or technical competence, who reviews 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 this 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) (stating that the applicant's reply must “specifically point[ ] out supposed errors in the examiner's action and must reply to every ground of objection and rejection in the prior Office action”). If 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's allowing or rejecting one or more of the claims in the patent application.

In the event that one or more of the claims in the patent application have been twice rejected by the patent examiner, the applicant may appeal to the PTO Appeal Board. 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 filing of an appeal brief, 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

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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 answer is filed, the applicant must file a reply within two months. 37 C.F.R. § 41.41(a). Pursuant to PTO regulations, jurisdiction over the appeal does not pass to the Appeal Board until the filing of the applicant's reply brief or the expiration of time in which to file such a brief. 37 C.F.R. § 41.35(a). Thus, 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 by which the appeal process can be stopped. After an applicant has filed an appeal brief but before jurisdiction passes to the Appeal Board, either the applicant or the examiner may re-open examination and prevent the Appeal Board from gaining jurisdiction over the application. See 37 C.F.R. § 41.35(b). In either case, the Appeal Board's jurisdiction never vests.

In the event the examination is not reopened and the Appeal 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 civil action in federal district court. See 35 U.S.C. §§ 141(a), 145. If the Appeal 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).

B.

This saga begins in 1990 when plaintiff filed the first of the patent applications in issue in this suit.3 But the primary period of activity and inactivity relevant to this case did not commence until 1995. Just prior to this date, Congress, in December 1994, amended certain important provisions of the nation's patent laws as part of the implementation of the Uruguay Round of the General Agreement on Tariffs and Trade (“GATT”). Specifically, Congress amended the provisions relating to patent terms.4 Before the GATT, the term of a patent 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 patent terms, 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). Thus, as the effective date—June 8, 1995—of these patent law changes drew near, plaintiff, an engineer-inventor, began submitting substantial numbers of patent applications to the PTO.5 Importantly, patent applications filed before the effective date of the GATT changes remain subject to the pre-GATT patent terms. See Hyatt v. U.S. Patent & Trademark Office, 797 F.3d 1374, 1377 (Fed.Cir.2015). Thus, a patent issued for

146 F.Supp.3d 776

an application filed under the pre-GATT regime still receives a guaranteed term of seventeen years from the date of issuance.

As originally filed, each of the 80 applications in issue contained approximately 20 to 100 patent claims. Over time—and in significant part between 1998 and 20026 —plaintiff repeatedly amended his...

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