Gil Hyatt USPTO Motion To Stay

Case: 18-2390 Document: 9 Page: 1 Filed: 09/25/2018
2018-2390, -2391, -2392

_________________________________
United States Court of Appeals
for the Federal Circuit
Gilbert P. Hyatt,
Plaintiff-Appellee
v.
Andrei Iancu,
Director of the United States Patent and Trademark Office
Defendant-Appellant
Appeals from the United States District Court for the District of Columbia,
Case Nos. 1:05-cv-2310-RCL, 1:09-cv-1864-RCL, and 1:09-cv-1872-RCL
Time-Sensitive Motion for Stay Pending Appeal

_________________________________
Under Federal Rule of Appellate Procedure 8(a), Andrei Iancu, Director of
the USPTO, respectfully seeks a stay pending appeal of the portions of the district
court’s judgments that require the USPTO to issue Mr. Hyatt a patent. The USPTO
routinely avoids issuing a patent when the underlying application is subject to
ongoing litigation—here, an appeal to this Court. However, the district court
ordered the USPTO to issue three patents to applicant Gilbert Hyatt. That order goes
into effect, notwithstanding any appeal, in the absence of a stay.
The USPTO has sought the same stay in the district court, but the district court
has not yet ruled on that motion. The USPTO is filing this time-sensitive motion
1
because the motion in the district court remains unresolved. Mr. Hyatt opposes this
motion.
As discussed below, requiring the USPTO to issue patents while an appeal is
pending in each case runs afoul of controlling precedent from this Court.
Furthermore, the district court’s directive to issue patents will cause irreparable harm
because, once the USPTO issues a patent, it is unclear how the USPTO could undo
that issuance, should any of the district court’s decisions—either to approve or
disapprove particular claims—be reversed. In light of that procedural problem, a
stay pending appeal is appropriate.1
Background
1. In 1995, shortly before a series of patent reforms went into effect, Mr.
Hyatt filed approximately 400 related patent applications with the USPTO. Hyatt v.
USPTO, 146 F. Supp. 3d 771, 773 (E.D. Va. 2015) (“Hyatt Requirement Suit”). Mr.
Hyatt filed those applications on or before the effective date of the Uruguay Round
of the General Agreement on Tariffs and Trade (“GATT”), which changed the term
of a patent from seventeen years from the date of issuance to twenty years from the
date of filing. Hyatt v. USPTO, 797 F.3d 1374, 1377 (Fed. Cir. 2015) (“Hyatt
1
The Solicitor General has not yet authorized an appeal in these cases. If the
Solicitor General were to decline to take appeals in any of these cases, the USPTO
would promptly seek to dismiss those appeals, and the stay would be dissolved as to
those applications.
2
Publication Suit”); Hyatt Requirement Suit, 146 F. Supp. 3d at 775. Of those
approximately 400 pre-GATT patent applications, the USPTO identified “only 12
distinct specifications.” Hyatt Publication Suit, 797 F.3d at 1377.
Mr. Hyatt’s approximately 400 applications claimed priority to applications
that Mr. Hyatt had filed decades before. Hyatt Requirement Suit, 146 F. Supp. 3d at
776-77. Over the course of the succeeding years, Mr. Hyatt went on to amend the
claims in those applications repeatedly, in a manner that this Court and multiple
district courts in separate suits have described as “extraordinary.” Hyatt Publication
Suit, 797 F.3d at 1384; Case No. 1:05-cv-2310-RCL, ECF No. 233 at 28 (“Laches
Op.,” Attachment 1); see Hyatt Requirement Suit, 146 F. Supp. 3d at 773, 777 &
n.10. Mr. Hyatt’s applications represent a unique situation in the history of the
USPTO. As originally filed, each of Mr. Hyatt’s approximately 400 applications
contained around 20 to 100 claims. Hyatt Requirement Suit, 146 F. Supp. 3d at 776.
Over time, Mr. Hyatt repeatedly amended his applications, such that in August 2013,
his web of interconnected applications contained a total of approximately 115,000
claims. Id. at 773, 776; Hyatt Publication Suit, 797 F.3d at 1377.
This number is unprecedented for any single applicant. Hyatt Requirement
Suit, 146 F. Supp. 3d at 781-82. Indeed, Mr. Hyatt’s applications have included
some of the largest claim sets the USPTO has ever encountered. Hyatt Requirement
Suit, 146 F. Supp. 3d at 776; see Hyatt Publication Suit, 797 F.3d at 1377 (discussing
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Mr. Hyatt’s “remarkable number of claims”). Furthermore, many of Mr. Hyatt’s
amendments were not changes to one or two limitations of the claim; his
amendments were wholesale rewrites of every aspect of the claim. Laches Op. 22.
2. These appeals arise from three district court actions Mr. Hyatt brought
under 35 U.S.C. § 145, each based on one of the hundreds of Mr. Hyatt’s pre-GATT
patent applications. Section 145 of the Patent Act states that an applicant dissatisfied
with a decision of the USPTO’s Patent Trial and Appeal Board (“Board”) may seek
review of that decision in district court, instead of taking an appeal in this Court
under section 141. 2
For each of the three pre-GATT applications at issue, the examiner rejected
the hundreds of pending claims and the Board affirmed some or all of those
rejections. Mr. Hyatt filed these district court actions and asserted that the Board
had erroneously rejected the claims of each of the three patent applications. Case
No. 1:05-cv-2310-RCL, ECF No. 235 at 5-9 (“Merits Op.,” Attachment 2). Mr.
Hyatt raised new arguments and presented new evidence—which he had not
previously presented to the USPTO—at trial. Id. The USPTO defended the decision
to reject the claims and further argued that each of the claims should be rejected for
2
At the time Mr. Hyatt brought these suits, an applicant could bring suit in the
District of Columbia district court. 35 U.S.C. § 145 (2006). Section 145 has since
been amended to locate the suit in the Eastern District of Virginia district court. 35
U.S.C. § 145 (2012).
4
prosecution laches because Mr. Hyatt had unreasonably delayed the examination
process. Id. at 2-3; Laches Op. 2-5. Prosecution laches is an equitable doctrine
providing for the forfeiture of patent rights following “unreasonable and unexplained
delay in prosecution, even though the patent applicant complied with pertinent
statutes and rules.” In re Bogese, 303 F.3d 1362, 1367 (Fed. Cir. 2002).
The USPTO presented evidence that (1) Mr. Hyatt delayed for decades in
presenting any of the now-pending claims, (2) he ballooned the number of claims in
these particular applications from less than 100 to over 1,000, and (3) in the
approximately 400 related cases still before the USPTO, he obstructed examination,
ballooning his claims to over 115,000, constantly shifting the subject matter of each
claim, and refusing to identify written description support. Laches Op. 13-14.
3. On August 1, 2018, the district court issued opinions and judgments in
these cases. The district court rejected the USPTO’s prosecution laches defense.
Laches Op. 38-39. Although the court agreed with the USPTO that Mr. Hyatt was
uncooperative and that he had ballooned his claims and shifted his inventions, the
court found that Mr. Hyatt had not breached any duty to cooperate with the USPTO
in these particular applications. E.g., id. at 31.
On the merits, the district court affirmed the USPTO’s determinations that
certain claims of Mr. Hyatt’s patent applications were unpatentable and reversed the
USPTO’s patentability determinations on other claims. Merits Op. 41-43. Most of
5
the rejections at issue were for lack of written description under 35 U.S.C. § 112,
¶ 1. 3 The written description requirement must be met at the time the application is
filed or—if the application claims priority to an earlier date—on the priority date.
See 35 U.S.C. § 132(a) (prohibiting applicants from adding, during the application
process, any “new matter into the disclosure of the invention”). “Rely[ing] heavily
upon new evidence presented at trial, in the form of expert testimony,” the district
court found many of Mr. Hyatt’s claims supported by the written description. Merits
Op. 17 n.22; see id. at 18 (“[N]either the examiners . . . nor the Board had the benefit
of a presentation like” Mr. Hyatt’s expert’s, but that was “irrelevant to the merits of
the de novo § 145 actions.”). The district court thus decided the written description
rejections based heavily on evidence not available within the as-filed written
description. The district court also decided the rejections of some claims based on
anticipation and obviousness, affirming some and reversing others. Id. at 36-41.
In each case, the district court ordered that the USPTO “shall issue a patent in
Mr. Hyatt’s [] application at-issue in this case,” covering the claims for which the
court reversed the USPTO’s patentability determinations. Case No. 1:05-cv-2310-
RCL, ECF No. 236 (Attachment 3); Case No. 1:09-cv-1864-RCL, ECF No. 233
(Attachment 4); Case No. 1:09-cv-1872-RCL, ECF No. 226 (Attachment 5). Mr.
Hyatt moved to amend the judgments in each case and moved to correct a
3
The pre-2011 version of § 112(a) applies in these cases.
6
typographical error in the judgment in one case, and the court granted those motions,
entering a new judgment in each of these cases on August 29, 2018. Case No. 1:05-
cv-2310-RCL, ECF No. 239 (Attachment 6); Case No. 1:09-cv-1864-RCL, ECF No.
237 (Attachment 7). The language stating that the USPTO “shall issue a patent” in
each order did not change.
4. The USPTO filed a notice of appeal in each case on September 12,
2018, and contemporaneously asked the district court to stay portions of its orders—
those requiring the USPTO to issue a patent—pending appeal. Case No. 1:05-cv-
2310-RCL, ECF No. 241 (Attachment 8). The district court has not yet ruled on that
motion, but we will promptly inform this Court of any district court ruling.
Argument
In deciding a motion to stay pending appeal, courts consider four factors: “(1)
whether the stay applicant has made a strong showing that it is likely to succeed on
the merits; (2) whether the applicant will be irreparably injured absent a stay; (3)
whether issuance of the stay will substantially injure the other parties interested in
the proceeding; and (4) where the public interest lies.” Nken v. Holder, 556 U.S.
418, 434 (2009). Ordinarily the movant must first seek such a stay in the district
court before proceeding to the court of appeals. See Fed. R. App. Prod. 8(a)(1), (2).
7
A. Likelihood of Success
The USPTO is likely to succeed on the single aspect of the district court’s
orders for which it seeks a stay. The district court’s orders require the USPTO to
issue a patent. But, in the context of district court actions under 35 U.S.C. § 145,
this Court has unambiguously explained, “Turning now to the issue of whether the
district court has authority to direct the issuance of a patent, we conclude it does
not.” Gould v. Quigg, 822 F.2d 1074, 1079 (Fed. Cir. 1987); see also In re Gould,
673 F.2d 1385, 1386 (CCPA 1982). Instead, a court’s role in a section 145 action is
limited to “resolv[ing] questions of patentability to the extent issues are raised at
trial.” Gould v. Quigg, 822 F.2d at 1079.
“The object and policy of the patent law require issuance of valid patents.”
BlackLight Power, Inc. v. Rogan, 295 F.3d 1269, 1273 (Fed. Cir. 2002). Thus,
before issuing a patent, the USPTO has authority to take even “extraordinary action
to withdraw a patent from issue when a responsible PTO official reasonably believes
that the subject matter may be unpatentable and that the application may have been
allowed in error.” Id.
That authority is broad because the agency’s authority to withdraw a patent
ends, after a patent issues. An issued patent is a form of property that has vested,
which is not true of a patent application. See Giuliani v. United States, 6 F. App’x
863, 864 (Fed. Cir. 2001) (citing McClurg v. Kingsland, 42 U.S. 202, 206 (1843));
8
see also Oil States Energy v. Greene’s Energy Grp., 138 S. Ct. 1365, 1375-76
(2018). Indeed, the Supreme Court recently had to rule on whether the agency has
the authority to cancel an issued patent at all—even after Congress passed a statute
providing for significant process, a decision by a panel of three administrative patent
judges, and appeal rights in this Court. Oil States, 138 S. Ct. 1365. Thus, the
agency—rather than a court—has the responsibility to determine whether and when
to issue a patent in the first place. In re Gould, 673 F.2d at 1386 (“After our decision
in an ex parte patent case, the Patent Office can always reopen prosecution and cite
new references, in which limited sense our mandates amount to remands.” (quoting
In re Fisher, 448 F.2d 1406, 1407 (CCPA 1971))).
Furthermore, there are other statutory hurdles to issuing any patent to Mr.
Hyatt. That is why section 145 itself does not state that the district court can order
issuance of a patent; it states that the district court may “authorize the Director to
issue such patent on compliance with the requirements of law.” 35 U.S.C. § 145
(emphasis added). For example, the USPTO may not issue any patent without the
applicant paying an issue fee. 35 U.S.C. § 151. The district court’s orders requiring
the USPTO to “issue a patent” cannot be squared with the statutory requirement that
the USPTO and Mr. Hyatt must take further steps before any patent can issue. Thus,
if the Solicitor General authorizes appeals, the USPTO intends to argue before this
9
Court that the district court’s orders requiring it to issue a patent violate this Court’s
law and Congress’s statutory commands on the subject.
B. Irreparable Harm
For similar reasons, significant irreparable harm will occur if the USPTO is
forced to issue a patent before an appeal can be heard. This Court has not previously
recognized a mechanism for the USPTO Director to claw back a patent erroneously
issued in analogous circumstances. To require the Director to issue the patent
immediately and without an opportunity for appellate review of the district court’s
judgment would therefore cast the Director, the public, and Mr. Hyatt into uncharted
waters.
That is part of the reason why, as this Court has explained, a court in a section
145 action does not have the authority to direct the USPTO to issue a patent. Gould
v. Quigg, 822 F.2d at 1079; see also In re Gould, 673 F.2d at 1386.
Furthermore, the USPTO Director’s statutory obligations require him to issue
a patent only “if it appears that the applicant is entitled to a patent under the law.”
35 U.S.C. §§ 131, 151(a). Here, the Director believes that Mr. Hyatt’s applications
are not entitled to a patent and has the right to have the district court’s decisions on
that score reviewed by this Court. Consistent with the Director’s statutory
responsibility to ensure that issued patents are valid, the Director should be able to
avail himself of the right to appellate review before issuing any patent.
10
While the Director has the authority to order an ex parte reexamination—a
separate proceeding from patent examination—to revoke an issued patent, that
proceeding is available only for claim rejections based on prior art, namely
obviousness and anticipation. 35 U.S.C. § 303(a). Because the bulk of the
arguments against patentability in these three cases are based not on prior art but on
the written description requirement and prosecution laches (see Merits Op.; Laches
Op.), that option is not available against most of the claims in these cases. Instead,
the USPTO would have to ask this Court, if it were to agree with the USPTO’s
positions, to grant the unusual remedy of ordering cancellation of the claims. And
even then, the USPTO’s mechanism for undoing issuance and canceling those claims
would be unclear.
In the district court, Mr. Hyatt pointed to a patentee’s ability to voluntarily
surrender an issued patent in a reissue proceeding under 35 U.S.C. § 251 as a way
for the USPTO to undo the earlier issuance of a patent. He further pointed to a
patentee’s ability to voluntarily disclaim an issued patent claim under 35 U.S.C.
§ 253. Those provisions do not allow the USPTO to claw back claims; they provide
a mechanism for the patentee, upon payment of a fee, to disclaim claims. And it is
no response for Mr. Hyatt to say that he can agree to have any claims withdrawn if
this Court reverses the patentability determination on those claims. Mr. Hyatt would
still be receiving patents on claims that the USPTO believes to be not patentable,
11
contrary to its statutory obligations under sections 131 and 151, before this Court
has a chance to review those patentability questions.
For those reasons, an order requiring the USPTO to issue a patent before it
has exhausted its appeal rights will cause irreparable harm.
C. Public Interest
The public interest also significantly favors a stay. If the USPTO has to issue
a patent now, Mr. Hyatt can immediately send demand letters and bring infringement
actions, before the USPTO has an opportunity to exercise its right to an appeal. The
USPTO believes any such patent to be invalid or unenforceable, and “[t]he public
interest is not served by the enforcement of allegedly invalid patents or the extension
of monopoly pricing by means of invalid patents.” Abbott Labs. v. Sandoz, Inc., 500
F. Supp. 2d 846, 855 (N.D. Ill. 2007); see Par Pharms., Inc. v. TWI Pharms., Inc.,
No. CIV. CCB-11-2466, 2014 WL 3956024, at *5 (D. Md. Aug. 12, 2014) (staying
judgment pending appeal).
D. Injury to Mr. Hyatt

The issuance of a stay will not substantially injure Mr. Hyatt. We recognize
that Mr. Hyatt’s pre-GATT applications have been pending a long time. On the
other hand, Mr. Hyatt had two avenues for review in federal court of the USPTO’s
rejections of his claims. He could have taken a district court action under 35 U.S.C.
§ 145—which he did—or he could have taken an appeal directly to this Court under
12
35 U.S.C. § 141. Mr. Hyatt understood that, while a district court action under
section 145 provided him the opportunity to present evidence in court that he chose
not to present to the agency, it came with the drawback that the proceeding takes a
longer time. Moreover, in light of this Court’s binding precedent that district courts
may not order the USPTO to issue a patent in a section 145 action, Mr. Hyatt could
not have reasonably expected his district-court action to have resulted in such an
order, rather than a simple remand that would not have required the government to
seek a stay pending appeal to avoid immediate issuance of any patent.
Mr. Hyatt must also understand that a decision from a district court proceeding
provides a possible further delay in the form of an appeal to this Court. See, e.g.,
Hyatt v. USPTO, Case No. 2:14-cv-311-LDG, ECF No. 29 at 4 (D. Nev. Sept. 30,
2014) (“The USPTO notes that, if this matter is transferred to the Eastern District of
Virginia, the decision will ultimately be appealed to the Federal Circuit. As Hyatt
has brought this suit seeking to hasten the agency action, a transfer directly to the
Federal Circuit presents the avenue of least delay. . . . However, the Court will grant
Hyatt’s request because, as plaintiff in this litigation, he could elect to file his suit in
any appropriate forum, including the Eastern District of Virginia, even if that might
result in greater delay in obtaining the relief Hyatt ostensibly seeks.”). Furthermore,
any patents from these pre-GATT applications will receive a seventeen-year term of
exclusivity, regardless of when they issue. Laches Op. 11-12.
13
Thus, although the USPTO recognizes that a stay means Mr. Hyatt will not
have a patent for as long as this Court takes to decide an appeal, the significance of
the other factors as well as Mr. Hyatt’s own choice to take a substantially longer
route of review work in favor of granting a stay.
Conclusion
For these reasons, the USPTO respectfully requests that the Court stay the
portions of its judgments that require the USPTO to issue three patents until the
Court issues a decision and mandate on the USPTO’s appeal of those orders or the
USPTO dismisses those appeals.
Dated: September 25, 2018 Respectfully submitted,
/s/ Molly R. Silfen

JOSEPH MATAL
Acting Solicitor
THOMAS W. KRAUSE
Deputy Solicitor
MOLLY R. SILFEN
PHILIP WARRICK
Associate Solicitors
USPTO Office of the Solicitor

Mail Stop 8, P.O. Box 1450
Alexandria, Virginia 22313
(571) 272-9035
Attorneys for the Director of the USPTO
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Certificate of Compliance
I certify that the foregoing Time-Sensitive Motion for Stay Pending Appeal
contains 3,255 words as measured by the word-processing software used to prepare
this motion.
/s/ Molly R. Silfen

MOLLY R. SILFEN
Attorney for the Director of the USPTO
Certificate of Service
I hereby certify that on September 25, 2018, I electronically filed the
foregoing Time-Sensitive Motion for Stay Pending Appeal with the Court’s
CM/ECF filing system, which constitutes service, pursuant to Fed. R. App. P.
25(c)(2) and Fed. Cir. R. 25(e)(1).
/s/ Molly R. Silfen

MOLLY R. SILFEN
Attorney for the Director of the USPTO
Index of Attachments to Time-Sensitive

Motion for Stay Pending Appeal
Attachment Description
Memorandum Opinion, Finding of Facts, and Conclusions of Law,
1 Case No. 1:05-cv-2310-RCL, ECF No. 233 (Aug. 1, 2018)
(“Laches Op.”)
Memorandum Opinion,
2 Case No. 1:05-cv-2310-RCL, ECF No. 235 (Aug. 1, 2018)
(“Merits Op.”)
Judgment and Order,

3
Case No. 1:05-cv-2310-RCL, ECF No. 236 (Aug. 1, 2018)
Judgment and Order,

4
Judgment and Order,

5
Order Granting Motion to Amend,

6
Order Granting Motion to Correct,

7
Motion to Stay Portions of Judgments Pending Appeal,

8
Case No. 1:05-cv-2310-RCL, ECF No. 241 (Sept. 12, 2018)
Attachment 1
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UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF COLUMBIA
)
GILBERT P. HYATT, )
)
Plaintiff, ) Civil Action No. 05-2310 (RCL)
) Civil Action No. 09-1864 (RCL)
V. ) Civil Action No. 09-1869 (RCL)
ANDREI IANCU, )
)
Defendant. )
MEMORANDUM OPINION, FINDINGS OF FACT,

AND CONCLUSIONS OF LAW
I. BACKGROUND
Before the Court is the defendant's asserted affirmative defense of prosecution laches in
the four above-captioned cases. Prosecution laches is an equitable doctrine that can hold patents
unenforceable when an applicant engages in unnecessary and unexplained delays in prosecuting a
patent. See In re Bogese, 303 F.3d 1362, 1367 (Fed. Cir. 2002); Symbol Technologies, Inc. v.
Lemelson Medical, 277 F.3d 1361, 1365-66 (Fed. Cir. 2002) (Symbol Techs. I); Woodbridge v.
United States, 263 U.S. 50, 56 (1923) ("It is a case of forfeiting the right to a patent by designed
delay.").
Plaintiff Gilbert P. Hyatt is a prolific inventor who has received more than 70 issued patents
and has pending nearly 400 patent applications before the United States Patent and Trademark
Office (PTO), the federal agency responsible for examining patent applications and for granting
1
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U.S. patents. 35 U.S.C. § 1 et seq. Andrei Iancu is the named defendant in these matters in his
official capacity as the Under Secretary of Commerce for Intellectual Property and the Director of
the PT0. 1 Because of the nature and lengthy history of the actions at-hand, throughout this opinion
the Court refers to the defendant as "PTO."
Mr. Hyatt brought these actions pursuant to 35 U.S.C. § 145 to obtain patents on four of
his patent applications following decisions in the Board of Patent Appeals and Interferences, now
known as the Patent and Trial Appeal Board (the "Board"). 2 Section 145 allows an applicant
dissatisfied with the decision of the Board to "have remedy by civil action" in district court, rather
than taking an appeal directly to the Federal Circuit. 3 See also Kappas v. Hyatt, 566 U.S. 431
(2012). In a series of opinions issued August 23, 2016, the Court found genuine disputes of
· material fact precluded summary judgment in these·matters; 4 trials on the merits would be required
with respect to claims in three of the four applications.
After the Court resolved the summary judgment motions, the PTO moved to dismiss these
actions for prosecution laches. Def. 's Mot Dismiss, ECF No. 91. In that set of motions, PTO
argued that Hyatt's conduct in prosecuting these four patent applications, as well as approximately
400 others, called for dismissal. Id. at **8-9 ("Mr. Hyatt's conduct in each application and across
his roughly 400 applications has been unreasonable, inexcusable, and warrants dismissal of his
pending claims under the equitable doctrine of prosecution laches."). The PTO stressed that some
of the applications claim priority to patents over 45 years old, id. at *9, and that Hyatt bulk-filed
1
Andrei Iancu has been automatically substituted for Joseph Matal in these actions under Fed. R. Civ. P. 25(d).
2
Case number 05-cv-2310 relates to the 08/457 ,211 application (the '211 application); No. 09-cv-1864 relates to the
08/456,398 application (the '398 application); No. 09-cv-1869 relates to the 08/472,062 application (the '062 ,
application); and No. 09-cv-1872 relates to the 08/431,639 application (the '639 application). All docket citations
herein are to 05-cv-2310 unless otherwise specified.
3
At the time Mr. Hyatt filed the present cases, venue lay by statute with the District Court of the District of Columbia.
In 2011, Congress amended the venue provision of certain patent-related statutes, including § 145, such that suits under
those sections are henceforth to be filed in the Eastern District of Virginia. Pub. L. 112-29, §9 (Sept. 16, 2011 ).
4
See ECF No. 75 (05-cv-2310); ECF No. 71 (09-cv-1864); ECF No. 75 (09-cv-1869); ECF No. 72 (09-cv-1872).
2
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approximately 400 photocopies of eleven applications in the days leading up to the effective date
of the General Agreement on Tariff and Trade (GATT) in June 1995. 5 Id. It noted an October 24,
1995 meeting, during which Mr. Hyatt agreed to focus each application on a different invention,
id. at 21, but that some twenty years later, in 2015, Mr. Hyatt revealed that he never had a "master
plan" for amending all 400 applications. Id. at **30-31. Mr. Hyatt, on the other hand, argued that
the PTO was responsible for extensive delay in adjudicating many of the applications, Pl. Mot.
Dismiss, ECF No. 101 at **7-9, and made the case that he was entitled to discovery. Id. at **37-
38.
On March 16, 2017, the Court found that genuine disputes of material fact required treating
the motions to dismiss as if they were for summary judgment, and denied them accordingly. ECF
No. 116. With leave of Court, the PTO subsequently amended its answers on leave of the Court
to assert prosecution !aches as an affirmative defense. ECF No. 123.
The Court set the PTO's affirmative defense of prosecution !aches across all four actions
for a bench trial, which also would consider evidence relating to Mr. Hyatt's approximately 400
pending applications. ECF No. 150. The PTO, bearing the burden of proof on the affirmative
defense of prosecution !aches and upon agreement of the parties, presented its case-in-chief first.
During the five trial days beginning October 6, 2017, during which the PTO presented its
case in chief, the PTO presented the testimony of three witnesses: Robert A. Clarke, Gregory
Morse, and Stephen Kunin, its expert witness. The parties also introduced a number of exhibits.
Mr. Clarke has worked for the PTO for 27 years, and he is currently the editor of the Manual
of Patent Examining Procedure ("MPEP"), a 3,000-page collection of guidance material for use
by patent examiners in the examination of patent applications. Trial Tr. 75:20-76:14 (Oct. 6, 2017
5 The Court has addressed the GATT in previous memorandum opinions. Information about GATT and its impact on
patents is available in those opinions or at the websites of the PTO or WTO.
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A.M. Session). He also spent 9 years examining patent applications, wrote an article on patent
procedure, taught more than 600 hours of classes to patent examiners, and served in the Office of
Patent Legal Administration (which drafts examination guidelines), as Chief of Staff for the PTO,
and as an Administrative Patent Judge. Trial Tr. 75:15-78:21, 81 :20-83:16 (Oct. 6, 2017 A.M.
Session). Mr. Clarke has had no personal involvement in the examination of Mr. Hyatt's patent
applications. In or around 2012, however, Mr. Clarke spent approximately three days reviewing
the file histories of approximately 80 of Mr. Hyatt's patent applications that were then subject to
an undue delay action brought by Mr. Hyatt in the United States District Court for the Eastern
District of Virginia and offered a declaration attesting to certain facts ·about those patent
applications. See Trial Tr. 55:5-56:14 (Oct. 6, 2017 P.M. Session).
Mr. Morse is currently Supervisory Patent Examiner ("SPE") of Art Unit 2615, which is'
assigned to examine Mr. Hyatt's pending patent applications. Mr. Morse has worked at the PTO
since 1992 and has been supervising the examination of Mr. Hyatt's patent applications since
March 2013. Trial Tr. 72:19-75:3 (Oct. 10, 2017 A.M. Session). Before March 2013, Mr. Morse
had no involvement in the examination of Mr. Hyatt's patent applications. Trial Tr. 47:14-49:5
(Oct. 11, 2017 P.M. Session).
Mr. Kunin, PTO's retained expert, testified as to PTO patent policy, practice, and
procedure, and how the prosecution of the applications at-issue in these cases presented uniquely
difficult circumstances for the PTO. Mr. Kunin, an attorney with an engineering background and
over thirty years of service in the PTO, rose to very senior positions within the agency, including
spending ten years as its Deputy Commissioner for Patent Examination Policy. In that position he
provided administrative oversight to and coordinated the activities of several offices within the
PTO, and was responsible for the promulgation of patent examination guidelines and training
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materials. DX-1486 at paras. 7-13. Mr. Kunin offered no opinion as to whether prosecution laches
should be applied to Mr. Hyatt's cases.
At the close of the PTO's case-in-chief, Hyatt moved for judgment pursuant to Federal
Rule of Civil Procedure 52( c). Hyatt argued four bases for his motion: 1) the PTO did not prove
that it provided Mr. Hyatt with adequate warnings of impending laches rejections; 2) the PTO
failed to prove any intervening rights of third-parties in the technologies claimed in the present
applications; 3) although the PTO may issue laches rejections, no such rejections are at issue in
these cases and the Patent Act displaced the equitable remedy of prosecution laches in the context
of a §145 action; and 4) assuming that an affirmative defense of prosecution laches is available in
a § 145 action, the PTO failed to meet its burden of proving unreasonable and unexplained delay.
Upon consideration of the evidence and arguments presented during trial and the entire
records in these cases, and review of the relevant case law, the Court found the PTO failed to prove
unreasonable and unexplained delay that supports a finding of prosecution laches, and accordingly
granted Mr. Hyatt's motion on his fourth proffered ground. The present opinion, including the
Court's findings and conclusions, is issued pursuant to Federal Rule of Civil Procedure 52(a)(l). 6
II. LEGAL STANDARD
a. Rule 52(c)
Federal Rule of Civil Procedure 52(c) permits the Court to enter judgment against a party
fully heard "on a claim or defense that, under the controlling law, can be maintained or defeated
only with a favorable finding on that issue." Fed. R. Civ. P. 52(c). In determining a Rule 52(c)
6
In a separate Order, the Court granted PTO's Motion for Leave to File its Corrected Response to Plaintiffs Proposed
Findings of Fact and Conclusions of Law [ECF No. 214]. The Court therefore treats ECF No. 214-1 as the PTO's
operative Responsive filing.
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motion, "a district court may not draw any special inferences in favor of the non-movant." Burke
v. Record Press, Inc., 951 F.Supp.2d 26, 31 (D.D.C. 2013). However, if the party with the burden
of proof has failed to meet that burden by the conclusion of its case-in-chief, the district court is to
grant the motion against it. Cf id.
b. Patent Prosecution Laches
Although the government has asserted prosecution !aches administratively, see, e.g., In re
Bogese, 303 F.3d 1362 (Fed. Cir. 2002), and both the government and private party litigants have
done so in, e.g., infringement actions, see, e.g., Woodbridge v. United States, 263 U.S. 50 (1923);
Symbol Techs. I, 277 F.3d 1361 (Fed. Cir. 2002), these four cases are the first in which the PTO
has asserted prosecution !aches in actions before a district court under 35 U.S.C. §145.
"Prosecution !aches is an equitable defense." Cancer Research Tech. Ltd. V. Barr Labs., Inc., 625
F.3d 724, 728 (Fed. Cir. 2010). 7 In its traditional articulation, the doctrine stands for the
proposition that an already issued patent "may be rendered unenforceable if it was obtained after
an unreasonable and unexplained delay in prosecution." In re Bogese, 303 F.3d at 1367 (citing
Symbol Techs. I, 277 F.3d at 1365-66).
A pair of Federal Circuit opinions in 2002 concerning prosecution !aches, and a 2012
Supreme Court case articulating district courts' duties under §145, Kappas v. Hyatt, 566 U.S. 431
(2012), make clear the Court can consider the PTO's affirmative defense of prosecution !aches
here, where the PTO has issued neither a patent nor any !aches warnings. In Symbol Techs. I, the
Federal Circuit upheld a district court's authority to find prosecution !aches in an infringement
case. Soon thereafter, that court affirmed the PTO's authority to assert prosecution !aches as a
7 This differs from standard laches, which "is an affirmative defense rather than a claim for equitable relief." See
Foster, 733 F.2d at 90.
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basis for rejecting a patent application. See In re Bogese, 303 F.3d at 1367. Because the PTO is
empowered to assert prosecution laches administratively, and because litigants may assert the same
before district courts, the affirmative defense ought also be available to the PTO in a §145 action.
Cf id. ("[W]e see no basis for denying the power to the PTO itself that we have recognized exists
in the district courts in infringement actions. It necessarily follows that the PTO has the authority
to reject patent applications for patents that would be [otherwise unenforceable].").
Further, under the Supreme Court's ruling in Kappas v. Hyatt, 8 district courts can consider
new evidence not in the administrative record before the PTO from prosecution of a § 145
plaintiffs antecedent patent application, and "the district court must niake a de nova finding when
new evidence is presented on a disputed question of fact." 566 U.S. at 434. This mandate for de
nova findings likewise opens the door 'to new arguments concerning the evidence in the case, and
just as the PTO can accordingly raise new grounds for rejecting a §145 plaintiffs claims on the
merits in response to new evidence presented as to those claims, so too can the PTO raise an
affirmative defense for the district court to consider. See also Troy v. Samson Mfctrn 'g Corp., 758
F.3d 1322 (Fed. Cir. 2014) (holding that, under Kappas v. Hyatt, new issues and arguments may
be presented to district courts in §145 and §146 actions). In that vein, the Court here exercised its
discretion to allow the PTO to amend its Answer to include an affirmative defense of prosecution
laches. ECF No. 122.
Although there is no case directly on-point regarding how a district court should analyze
prosecution laches as an affirmative defense in a§ 145 case, the contours of the doctrine previously
articulated in infringement suits and in reviews of agency administrative actions, are instructive.
"The doctrine [of prosecution laches] should be applied only in egregious cases of misuse of the
8Mr. Hyatt's application that gave rise to the Kappas v. Hyatt decision, 08/471,702, first litigated in this court, 09-
cv-901, has origins and ancestry largely in common with the applications at issue here.
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statutory patent system." Symbol Technologies, Inc. v. Lemelson Medical, 422 F.3d 1378, 1385
(Fed. Cir. 2005) (Symbol Techs. II). In other situations not involving prosecution laches, the
Federal Circuit has cautioned, "The mere passage of time does not constitute laches." Advanced
Cardiovascular Systems v. Scimed Life Systems, 988 F.2d 1157, 1161 (Fed. Cir. 1993). The
Supreme Court has held the same. United States v. American Bell Tel. Co., 167 U.S. 224, 246
(1897) ("The mere fact of delay does not, therefore, operate to deprive the inventor of his legal
rights."). Indeed, lengthy patent application prosecutions have been held not to implicate
prosecution laches in many cases. See, e.g., Cancer Research, 625 F.3d at 728 (reversing finding
of prosecution· laches, despite "eleven continuation applications, ten abandonments, and no
substantive prosecution for nearly a decade"); Studiengesellschaft Kahle mbH v. Northern
Petrochem. Co., 784 F.2d 351,352 (Fed. Cir. 1986) (per curium) (affirming district court's finding
ofno laches despite prosecution period that lasted over twenty years); Regents of the Univ. of Cal.
v. Monsanto Co., 2005 WL 3454107, *25-26 (N.D. Cal. 2005) (finding the doctrine of prosecution
laches inapplicable despite the fact that twenty-four years had passed between the application filing
and patent issue); Koninklijke Philips Electronics NV. v. Cinram Intern., Inc., 2012 WL 4074419,
*7 (S.D.N.Y. 2012) (prosecution laches inapplicable despite nearly 19 years between the
application filing and patent issue dates).
Rather than merely calculating the passage of time, delay must be unreasonable and
unexplained. To determine this, courts are to look to "the totality of the circumstances, including
the prosecution history of all of a series of related patents and overall delay in issuing claims."
Symbol Techs. IL 422 F.3d at 1386. Further, prosecution laches principally looks to a patent
applicant's conduct, not his intent; although evidence that an applicant intended to delay issuance
of a patent can be relevant, the absence of such intent does not forgive conduct that does, in fact
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unreasonably and inexplicably delay examination of his application(s). See, e.g., Woodbridge, 263
U.S. at 56 ("This is not a case where evidence has to be weighed as to the purpose of the
inventor.").
Finally, whereas in an action between private parties a court will balance equities in its
analysis, see Symbol Techs. II, 422 F.3d at 1385, the Federal Circuit has elsewhere determined that
"a delay by the PTO cannot excuse the applicant's own delay." See In re Bogese, 303 F.3d 1362,
1369 (Fed. Cir. 2002). It is significant that each of those matters is somewhat distinct from the
instant cases in their present posture. The Symbol Techs. cases involved private parties litigating
issued patents, and in Bogese the Federal Circuit was reviewing an appeal from the Board's
upholding administratively-issued prosecution laches rejections on an arbitrary and capricious
standard.
In a § 145 action where the district court is making a de novo determination on the
evidentiaryrecord before it and not the administrative record of the PTO, its review of the propriety
of applicants' prosecution conduct in a § 145 action is not done in light of any presumptions as to
the validity of PTO's earlier a~tions. To the contrary, the same ground from which this Court
derives authority to entertain the PTO's equity-based affirmative defense in the first instance, i.e.,
PTO's broader administrative authority to reject patent applications, is relevant to an equitable
inquiry that necessarily concerns, in part, PTO's failure or otherwise declining to exercise that
authority earlier. An adapted standard is therefore appropriate where, as here, a district court is
conducting a de novo analysis of PTO's ex-post assertion of prosecution laches during litigation,
as opposed to during examination in which an applicant may have an opportunity to cure the
alleged inequitable conduct in response to an agency's action or warning. While it remains that
any delay by the PTO does not excuse any unreasonable and unexplained delay by the applicant,
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under the totality of the circumstances test PTO's actions and omissions can likewise be considered
in determining the reasonableness of any delay actually attributable to the applicant, and the
applicant's explanations therefor.
III. ANALYSIS
The PTO accuses Mr. Hyatt of inequitable prosecution conduct that caused unreasonable
and unexplained delay in the examination of his applications. PTO argues, inter alia, that the
following alleged factors contributed to unreasonable delay in examination: 1) the large number
of claims in and across Mr. Hyatt's applications; 2) his amendment practice; 3) his alleged shifting
of claims; 4) numerous and complicated priority claims in Mr. Hyatt's applications, including that
the claims of priority made it· difficult for examiners to identify written description support; 5)
difficulties in identifying written description support for Mr. Hyatt's claims due to challenges in
identifying priority dates for claims, the length of the applications, the incorporation by reference
of other applications, and unclear interconnections among claim elements; 6) double-patenting,
duplicate claims, and indistinct claims across the applications, including overlaps with claims in
applications pending before the Court; 7) prosecution of claims previously allowed in another
application (06/663,094, referred to as 'the '094 application'); 8) reintroducing certain claims
previously lost in interference actions; and 9) delay in presenting the claims contained in his 1995
pre-GATT applications, including the four applications pending before this Court, which claim
priority to earlier-filed applications.
The Court does not doubt that Mr. Hyatt's "GATT Bubble" applications (i.e., those filed
in the spring of 1995) have menaced the PTO for decades. They are long, highly technical, and
voluminous. But also true, and particularly telling for present purposes, is that many of Mr. Hyatt's
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applications spent an inordinate time in a proverbial Never-Never Land, during which he was not
allowed under PTO's procedures to prosecute his applications further, until the PTO took certain
actions. As detailed further below and as PTO concedes, ECF No. 214-1 at *29, at least a nine-
year period thus does not factor into the Court's laches analysis.
Unsurprisingly, the PTO's approach at trial tracked very closely with its earlier motions to
dismiss for prosecution laches. ECF No. 91 (05-cv-231 O); ECF No. 91 (09-cv-1864); ECF No. 94
(09-1869); ECF No. 93 (09-cv-1872). For example, the PTO spent most of its presentation
addressing facts concerning Mr. Hyatt's approximately 400 applications not otherwise implicated
in the four cases before this Court, with a particular and peculiar emphasis on prosecution conduct
related to those applications that post-date the filing of the present actions in district court. The
obvious rationale for the PTO's doing so is that PTO apparently understands the Federal Circuit's
totality test to include consideration of all prosecution conduct as to all related applications,
without temporal or procedural limitation. 9 But, for reasons explained below, that sweeping
construction cannot reasonably be applied to these cases. The PTO also relies upon representations
allegedly made at a meeting with Mr. Hyatt in 1995, but does not adequately establish a
corresponding duty by Mr. Hyatt to ease PTO's burden as a result of that meeting. These and other
factors are detailed in the Court's findings and conclusions below.
a. Findings of Fact
The Nature of the Cases and Mr. Hyatt's Applications
Each of the applications at issue in these cases was filed before June 8, 1995, the effective
date of the law that changed the term of a patent from 17 years after issuance to 20 years from the
9 At the same time, however, the PTO objects to this Court making any findings as to those other 400 applications that
are not the subject to any of the four actions here. See, e.g., ECF no. 214-1 at *3, *16. This desire for the Court to
consider but not decide matters not directly before it permeated PTO's entire litigation strategy.
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application date of the oldest application from which the application claims priority. This change
in the U.S. patent term was part of the implementation of the Uruguay Round of the General
Agreement on Tariff and Trade ("GATT"). See Trial Tr. 43:8-44:3 (Oct. 6, 2017 P.M. Session);
20:6-14 (Oct. 10, 2017 P.M. Session).
To address circumstances where an applicant had the right under U.S. patent law to file a
new patent application to pursue claims described in a specification that had already been filed
with the PTO (known as a "continuing application"), Congress required the PTO to promulgate
rules to provide applicants further examination of additional patent claims that claim priority from
pre-GATT applications without loss of patent term. Pub. L. No. 103-465, sec. 532(a)(l), §
532(a)(2), 108 Stat. 4809, 4984 (1994) (codified as amended at 35 U.S.C. § 154). The PTO's rule
'implementing this legislation is in 37 C.F .R. § 1.1'29 ("Rule 129"), which was promulgated on
April 25, 1995. See 60 Fed. Reg. 20,195, 20,226-27 (Apr. 25, 1995) ("Changes to Implement 20-
Year Patent Term and Provisional Applications"); see also Trial Tr. 45:18-47:9 (Oct. 6, 2017 P.M.
Session) (addressing Rule 129).
To preserve the opportunity to obtain a 17-year term for patents based on pre-GATT
applications, many applicants filed a large number of patent applications during the brief period
between the promulgation of Rule 129 in April 1995 and the date on which the new patent term
law went into effect, June 8, 1995. The surge in applications filed during this period is known as
the "GATT Bubble." Trial Tr. 104:17-107:21 (Oct. 6, 2017 P.M. Session).
Mr. Hyatt's GATT Bubble applications filed in 1995, including the four applications
pending before the Court, were continuing applications that claim the benefit of earlier-filed parent
applications under 35 U.S.C. § 120. Their claims also claim the benefit of the date of the earliest-
filed parent application whose specification provides support for the claims.
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Mr. Hyatt's GATT Bubble applications differed in number and size from those filed by
most other applicants. Mr. Hyatt filed many more applications, with much longer specifications,
and many more claims, than most other applicants. The number, volume, length, and complexity
of Mr. Hyatt's applications are not ordinary.
Mr. Hyatt's patent applications, including the four applications pending before the Court,
contain lengthy and detailed disclosures, including specifications. The 700-family specification,
which forms the basis of the '211 and '398 applications, is comprised of 576 pages of text and 65
pages of figures. PTX-001.05255-5830; PTX-001.05840-905. The 500-family specification,
which forms the basis of the '062 application, is comprised of 238 pages and 40 pages of figures.
PTX-002.01183-1458. The 600-family specification, which forms the basis of the '639
application, is comprised of 518 pages and 46 pages of figures. PTX-003.01333-1896. "Typical"
specifications are 20 or 30 pages. Trial Tr. 23:16 (Oct. 6, 2017 P.M. Session).
Mr. Hyatt's applications, including the four applications pending before the Court, contain
unusually large sets of claims. Trial Tr. 79:10-11 (Oct. 10, 2017 P.M. Session) ("[I]t was
extremely unusual. I can recall one case that had approximately that number of claims."). The
four applications before this Court presented a total of approximately 1,592 claims, including
claims that were subsequently canceled by Mr. Hyatt. Trial Tr. 50:6-20 (Oct. 12, 2017 P.M.
Session). Across Mr. Hyatt's approximately 400 applications pending before the PTO in 2003,
those applications presented a total of approximately 115,000 claims, or on average approximately
300 claims per application. Trial Tr. 68:19-70:9 (Oct. 10, 2017 P.M. Session).
A PTO study of patent applications filed between 1995 and 2013 reveals that the "typical
application" contained 20 claims at the time it was filed. Trial Tr. 78:22-81: 19 (Oct. 6, 2017 A.M.
Session); 74:2-8 (Oct. 10, 2017 P .M. Session); DX 251. A typical examiner on average is allotted
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about 20 hours to examine 20 claims. Only 0.02% of all applications filed included more than 299
claims. See DXl 486 ,r 162.
The largest technology companies filing GATT Bubble applications did not engage in the
same examinational behavior as Mr. Hyatt engaged in. See, e.g., Trial Tr. Day 4 P .M. Session,
29:17-31:15 (describing how 10 large companies filed pre-GATT applications with only 17.7
claims per application, as opposed to Mr. Hyatt's average of299 claims per application), 55:17-
25, Oct. 10, 2017.
The cases before the Court were filed in 2005 and 2009. In accord with a PTO stipulation,
see, e.g., 214-1 at *29, the years 2003-2012, a period in which PTO suspended examination of the
majority of Mr. Hyatt's applications, is not considered in the present analysis. PTO restarted
examination of Mr. Hyatt's remaining applications in 2013. PTO began issuing Requirements that ·
included prosecution laches warnings beginning in April 2015. 10
The Four Applications Before the Court
The '211 Application (Case no. 05-cv-2310)
Mr. Hyatt filed the '211 application on June 1, 1995. PTX-004.07554. The '211
application is a continuation of patent application serial number 07/289,355, filed December 22,
1988, which is a continuation of patent application serial number 06/663,094, filed October 19,
1984. PTX-004.07555. The PTO entered a non-final Office Action rejecting the claims on
10
During oral arguments before the Federal Circuit in Hyatt v. Lee, 797 F.3d 1374 (Fed. Cir. 2015), Judge Moore
asked Government counsel, "How could there be 115,000 claims that were filed prior to June 8, 1995, that are still
kicking around? .... If Mr. Hyatt is responsible ... why aren't you nailing him to the wall with prosecution !aches?
We handed it to you - why aren't you using it?" See oral arg., dkt. 2014-1596, May 6, 2015 40:06 - 44:09.
· Presumably, Judge Moore was referring to Bogese in 2002. PTO issued its first prosecution !aches warning in one of
Mr. Hyatt's applications nineteen days before that exchange. After oral arguments and up through its filing of its
Motion for Leave to file its Motion to Dismiss for Prosecution Laches in this Court on September 30, 2016, PTO
issued fifty-one additional warnings. See ECF 81-2 at *21-22.
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September 22, 1995, and entered a final rejection made on July 31, 1996. PTX-087 .00004. Mr.
Hyatt, using the transitional rules provided in 37 C.F.R. § l.129(a) ("Rule 129(a)"), petitioned to
file an amendment, the effective equivalent of a continuing application, on March 25, 1997. PTX-
004.06587-89. The PTO issued a non-final Office Action rejecting the claims on August 3, 1998.
PTX-087.00004. The PTO entered a final rejection of the claims on August 27, 1999. PTX-
087.00003; Trial Tr. 30:12-31 :18 (Oct. 11, 2017 P.M. Session). Prosecution concluded in just
over four years, when the PTO issued a final rejection from which Mr. Hyatt appealed. PTX-087
(PALM record).
Having been twice rejected, the '211 claims were eligible for an appeal to the Board. E.g.,
Trial Tr. 6:16-20 (Oct. 13, 2017 P.M. Session); 35 U.S.C. § 134(a). Mr. Hyatt timely noticed his
appeal to the Board on February 28, 2000, ahd he filed his appeal brief on August 28, 2000. PTX-
087.00003; Trial Tr. 30:12-31:18 (Oct. 11, 2017 P.M. Session). In the course of its decisions on
Mr. Hyatt's appeal and subsequent motion for reconsideration, the Board reversed several
rejections by the examiner of the '211 application claims, ending the PTO's administrative
adjudication of the '211 application on September 21, 2005. PTX-087.00006. Mr. Hyatt filed suit
under 35 U.S.C. § 145 to obtain a patent on claims in the '211 application on which the Board
affirmed at least one ground ofrejection on November 18, 2005. At that time, jurisdiction passed
from the PTO to the United States District Court for the District of Columbia.
Mr. Hyatt filed the '398 application on June 1, 1995. PTX-001.05921. The '398
application is a continuation of patent application serial number 07/289,355, filed December 22,
1988, which is a continuation of patent application serial number 06/663,094, filed October 19,
1984. PTX-001.05921; see PTX-004.07555. The PTO entered a non-final Office Action rejecting
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the claims on September 19, 1995, and a final rejection on August 9, 1996. PTX-001.05184; PTX-
001.05137. Mr. Hyatt petitioned to enter a submission pursuant to 37 C.F.R. § 1.129(a) with an
amendment, effectively equivalent to a continuation application; the PTO subsequently rejected
the then-pending claims in a non-final Office Action on December 12, 2000. PTX-001.04812;
PTX-001.04505-06. Mr. Hyatt amended the claims on January 30, 2002. PTX-001.04268-69.
On July 31, 2002, January 23, 2003, and August 18, 2003, the PTO suspended prosecution in the
'398 application for a cumulative total of twenty months ending on February 18, 2004. PTX-
001.04255-57; PTX-001.04246-48; PTX-001.04211-13; Trial Tr. 31:20--33:13 (Oct. 11, 2017
P.M. Session). The PTO issued a non-final Office Action on September 7, 2004. PTX-001.04025- ·
26; Trial Tr. 33:6-34:7 (Oct. 11, 2017 P.M. Session).
Mr. Hyatt timely noticed his appeal to the Board on March'?, 2005. PTX-001.03898: He
filed his appeal brief on August 26, 2005, thereby closing prosecution. PTX-001.00928; Trial Tr.
34:14-25 (Oct. 11, 2017 P.M. Session). In the course of its decisions on Mr. Hyatt's appeal and
subsequent two motions for reconsideration, the Board reversed numerous grounds of rejection
found by the examiner of the '398 claims, concluding the PTO's administrative adjudication of
the '398 application on July 8, 2009. PTX-086.00007. Mr. Hyatt filed suit under 35 U.S.C. § 145
to obtain a patent on claims on which the Board affirmed at least one ground of rejection on
September 25, 2009. At that time, jurisdiction passed from the PTO to the United States District
Court for the District of Columbia.
Mr. Hyatt filed the '062 application on June 6, 1995. PTX-002.1223. The '062 application
is a continuation of patent application serial number 06/661,649, filed Octo her 17, 1984, through
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several other continuation applications. PTX-002.1224. The PTO entered a non-final Office
Action rejecting the claims on September 18, 1995, and another non-final Office Action rejecting
the claims in full on June 26, 1996. PTX-088.00004. After Mr. Hyatt amended his claims, the
PTO entered a final rejection on October 16, 1997. PTX-088.00003. It therefore took the PTO
approximately two years and four months to issue the final rejection of Mr. Hyatt's claims from
which he appealed. Trial Tr. 25:7-26:5 (Oct. 11, 2017 P.M. Session).
Mr. Hyatt timely noticed his appeal to the Board on or around March 4, 1998. PTX-
002.00891; PTX-088.00006. He filed his appeal brief on September 3, 1998. PTX-002.00557;
Trial Tr. 25:7-26:22 (Oct. 11, 2017 P.M. Session). In the course of its decisions on Mr. Hyatt's
appeal and three subsequent motions for reconsideration, the Board reversed numerous rejections
by the examiher of the '062 claims, concluding the PTO's administrative adjudication of the '062
application on July 8, 2009. PTX-088.0006. Mr. Hyatt filed suit under 35 U.S.C. § 145 to obtain
a patent on claims on which the Board affirmed at least one ground of rejection on September 25,
2009. At that time, jurisdiction passed from the PTO to the United States District Court for the
District of Columbia.
The 639 Application (Case no. 09-cv-1872)
Mr. Hyatt filed the '639 application on May 1, 1995. The '639 application is a continuation
application of patent application serial number 07/279,592, filed December 2, 1988. PTX-
003.01380. The PTO entered a restriction requirement requiring Mr. Hyatt to elect one group of
claims for examination drawn to one invention on October 19, 1995. PTX-003.01311-13. On
July 24, 1996, the PTO rejected the claims in a non-final Office Action. PTX-085.00005. The
PTO rejected the claims in a final Office Action dated May 19, 1999. PTX-085.00005. It therefore
took the PTO just over four years from the filing of the '639 application to issue the final rejection
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from which Mr. Hyatt appealed to the Board. Mr. Hyatt timely noticed his appeal on October 19,
1999. PTX-085.00005.
Mr. Hyatt filed his Appeal Brief on April 18, 2000, thereby closing prosecution. PTX-
085.00005; Trial Tr. 28:2-29:15.7. In the course of its decisions on Mr. Hyatt's appeal and three
subsequent motions for reconsideration, the Board reversed numerous rejections by the examiner
of the '639 claims, concluding the PTO's administrative adjudication of the '639 application on
July 8, 2009. PTX-085.00005. Mr. Hyatt filed suit under 35 U.S.C. § 145 to obtain a patent on
claims on which the Board affirmed at least one ground of rejection on September 25, 2009. At
that time, jurisdiction passed from the PTO to the United States District Court for the District of
Columbia.
PTO's Examination Policy and Practice
PTO's longstanding policy is to engage in "compact prosecution." The goal of compact
prosecution is for the examiner to raise every noncumulative ground of rejection or objection that
the examiner finds to exist in one office action. See Trial Tr. 8:22-9:11; 84:17-85:7 (Oct. 6, 2017
P .M. Session). In general, the practice and policy of compact prosecution is prudent for PTO and
patent applicants alike, with the aim of resolving applications as quickly as possible. Trial Tr.
85:8-86:1.
Patent applicants have discretion as to how to prosecute their claims within the PTO's rules
and regulations. The PTO has several legal authorities to regulate inequitable applicant conduct
during the examination process. These include undue multiplicity rejections, PTO's Rule 11.18,
and 37 C.F.R. §1.145. PTO policy is that, absent entry of a restriction requirement, undue
multiplicity rejection, or prosecution laches rejection, applicants are entitled to an examination of
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the claims presented in a single application, including claims directed to multiple inventions,
provided the applicant pays the required fees and complies with the patent statutes. Trial Tr. 15: 13-
18 (Oct. 10, 2017 A.M. Session); 16:8-22 (Oct. 10, 2017 A.M. Session); 65:14-23 (Oct. 13, 2017
A.M. Session); see also Trial Tr. 78:24-79:3 (Oct. 10, 2017 P.M. Session) ("There is no limit to
what can be presented.").
Applicants pay for every independent claim in excess of three and for every claim in excess
of 20 total claims in accordance with fee schedules set by the Government. Trial Tr. 16:23-17:11
(Oct. 10, 2017 A.M. Session). Mr. Hyatt has paid more than $7,000,000 in fees to the PTO in
recent ye.ars to have his applications arid claims examined. PTX..:099; Trial Tr. 17:2-19 (Oct. 10,
2017 AM Session); 65:9-12 (Oct. 11, 2017 P.M. Session). The PTO's accounting is that Mr. Hyatt
paid only approximately $59 per claim, in light of the fact that an examiner on average'was allotted
about 20 hours to examine 20 claims. See Trial Tr. Day 1 P .M. Session, 31 :4-14, 4:9-16, Oct. 6,
2017; Trial Tr. Day 1 A.M. Session, 89:17-20, Oct. 6, 2017. In the past 5 years, the PTO has paid
over $10 million to examine Mr. Hyatt's claims. See Trial Tr. Day 4 A.M. Session, 57:1-16, Oct.
12, 2017.
The time a patent application is pending in the PTO can vary based on factors intrinsic and
extrinsic to the application. Intrinsic factors might include: the number of claims presented for
examination, the claim amendment practice, claim "shifting," entitlement to priority and benefit
sought by the applicant, written description support issues, double-patenting issues, and other
discrete issues raised by the patent office. See Trial Tr. 4:6-7:3 (Oct. 12, 2017 P.M. Session).
Extrinsic factors generally relate to PTO's workload and allocation of resources, but also can
include an applicant's willingness to cooperate with PTO examiners' informal requests during the
examination process.
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If an applicant wants to show entitlement to the right of priority to establish an earlier
effective filing date as against intervening prior art, it is the applicant's burden to establish that
right of priority. See Trial Tr. 23:20-24:7 (Oct. 13, 2017 P.M. Session).
Under 35 U.S.C. § 112(1), the test for whether a specification contains an adequate written
description of the subject matter claimed in a patent application is whether it enables any person
with ordinary skill in the art to make and use the invention. Trial Tr. 22:9-14 (Oct. 10, 2017 P.M.
Session). That is a legal determination regularly made in patent application examination. Written
description rejections are "fairly common" in PTO practice, with numerous court decisions and
specific PTO guidelines addressing such issues. Trial Tr. 97:11-99:5 (Oct. 6, 2017 P.M. Session);
23:4-15 (Oct. 13, 2017 P.M. Session). The PTO can and does address claims that it contends lacks
written description support through written description rejections. Trial Tr. 97:11...:..99:10 (Oct. 6,
2017 P.M. Session); 23:4-24:12 (Oct. 13, 2017 P.M. Session). Should the examiner make a
written description rejection, the application must then demonstrate that there is adequate written
description support for the claims.
Double patenting is relevant to examination to avoid issuing a claim that is substantially
similar to another claim that is also under examination and may be subject to a rejection that ~ould
be relevant to the other pending claim. The PTO attempts to police double-patenting issues during
examination, and issues provisional double-patenting rejections to which applicants respond, when
those issues arise in two (or more) pending applications. See, e.g., Trial Tr. Day 1 P.M. Session,
92:5-17, Oct. 6, 2017; Trial Tr. Day 3 A.M. Session, 40:18-41 :4, Oct. 11, 2017; Trial Tr. Day 4
A.M. Session, 44:19-45-17, Oct. 12, 2017. Double patenting rejections "may be deferred until
allowable subject matter has been indicated. At that time, the allowed claims should be reviewed
against all related application claims for any double patenting issues." PTX-003.00970.
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Patent applicants are entitled to traverse rejections, including challenging those decisions
before the Board and/or in the courts. Patent applicants are entitled to amend or cancel claims to
avoid a ground of rejection.
After a patent application is filed, further mandatory action on the part of the applicant can
only be triggered by formal means in accord with PTO regulations.
Examination and Prosecution of Mr. Hyatt's Applications
Despite being 3,000 pages long, the PTO's Manual of Patent Examining Procedure does
not cover a case such as Mr. Hyatt's. The PTO could not practice its typical and preferred mode
of compact prosecution of Mr. Hyatt's claims across 400 lengthy applications. The PTO's policy
of compact prosecution made it impossible to complete examination of Mr. Hyatt's applications
in its desired manner under the time typically given to examiners. Mr. Hyatt's applications could
not be treated as typical applications given their size and scope. See ECF No. 214-1 at *9 ("the
evidence showed that the applications could not be treated as typical applications given their size
and scope") (citing Trial Tr. Day 2 A.M. Session, 75:14-77:15, Oct. 10, 2017); id. at *30 ("all
agree that Mr. Hyatt's applications are far from typical"). The PTO has conceded that it could not
engage in compact prosecution with respect to Mr. Hyatt's applications, given their unusual
characteristics. See ECF no. 214-1 at *8.
Mr. Hyatt attended a meeting in October 1995 with Nicholas Godici, a former PTO group
Director, during which they discussed focusing each of his applications on different subject matter.
Trial Tr. 54:10-65:3 (Oct. 10, 2017 P.M. Session). At the meeting, Mr. Hyatt agreed to "focus"
his claims by increasing the demarcation between applications. Trial Tr. 69: 14-70:9 (Oct. 10,
2017 P.M. Session). Neither Mr. Godici nor Mr. Hyatt memorialized the purported agreement in
an interview summary, even though doing so is required by PTO rules. Trial Tr. 53: 17-20 (Oct.
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11, 2017 P.M. Session); 14:4-15:1 (Oct. 6, 2017 P.M. Session); 12:25-13:20 (Oct. 10, 2017 A.M.
Session). Despite those formal rules, conversations between applicants and examiners, never mind
Group Directors like Mr. Godici, are not always memorialized in interview summaries. Trial Tr.
Day 2 A.M. Session, 62:10-16, Oct. 10, 2017.
After his conversation with Mr. Godici, Mr. Hyatt proceeded to file petitions to enter
amendments in some of his applications. Trial Tr. 53:1-13 (Oct. 11, 2017 P.M. Session). A
number of those petitions were denied by Mr. Godici. Trial Tr. 54:3-56:12 (Oct. 11, 2017 P.M.
Session); PTX-051; PTX-052. After the October 1995 meeting, the PTO continued examining
Mr. Hyatt's applications, rather than make rejections on procedural grounds.
Mr. Hyatt never "focused" his claims in accordance with the informal agreement made
during the October 1995 meeting. In 2015, Mr. Hyatt stated he never had a "master plan" to do
so. See ECF 81-2 at *23; Trial Tr. 73:7-76:5 (Oct. 11, 2017 A.M. Session).
Mr. Hyatt has made numerous amendments to the claims in his applications, including the
four applications pending before this Court. See Trial Tr. 68: 19-70:9 (Oct. 10, 2017 P.M. Session)
(contending Mr. Hyatt submitted 115,000 claims for examination via his amendments); 51 :3-
56:15 (Oct. 10, 2017 P.M. Session) (testifying regarding amendments in the four applications
before the Court); see also PTX-001.05167; PTX-001.04951; PTX-001.04812; PTX-001.04268;
PTX-002.01180; PTX-002.01102; PTX-002.01111; PTX-003.01314; PTX-003.01257; PTX-
003.00990; PTX-004.06831; PTX-004.06716; PTX-004.06607; PTX-004.06309; PTX-
004.05962; Trial Tr. 50:6-20 (Oct. 12, 2017 P.M. Session) (stating Mr. Hyatt submitted 1,592
claims for examination via amendments). Mr. Hyatt's amendments, in some instances,
substantially rewrite claim language and add additional claims. E.g., Trial Tr. 75:13-78:14 (Oct.
10, 2010 P.M. Session) (Morse testimony discussing amendment in the '211 application).
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From approximately 1995 through 2003, the PTO issued numerous non-final and final
Office Actions on the merits of Mr. Hyatt's patent applications. The PTO issued 13 of Mr. Hyatt's
patent applications (between June 1995 and May 1997), and withdrew from issuance 4
applications. For approximately 100 of Mr. Hyatt's applications, the PTO issued rejections that
Mr. Hyatt appealed (closing prosecution) and briefed before the Board. See PTX-005; PTX-
019.00008-9; DX-254; DX-268.
Between approximately 2003 and 2012, 80 of Mr. Hyatt's pending applications were held
by PTO in a proverbial Never-Never Land, with no Examiners' Answers filed that, under PTO
regulations, were required to trigger Board consideration of Mr. Hyatt's appeals in those
applications. PTO has stipulated that this period is not time that can be attributed to Mr. Hyatt's
allegedly unreasonable and unexplained delay. See, e.g., ECF No. 214-1 at *29.
The PTO did not issue any prosecution !aches warnings as to any of Mr. Hyatt's pending
applications prior to the commencement oflitigation in these cases, although it had authority to do
so if it had deemed his conduct so inequitable as to merit it.
The PTO did not reject any of Mr. Hyatt's pending claims under the doctrine of prosecution
!aches prior to the commencement of litigation in these cases, although it had authority to do so if
it had deemed his conduct so inequitable as to merit it.
There is no record of the PTO invoking Rule 11.18 in these applications, nor did the PTO
apply undue multiplicity rejections or deny entry of amendments in Mr. Hyatt's applications prior
to 2013. More recently, the PTO has issued formal Requirements, !aches warnings, and !aches
rejections as to several of Mr. Hyatt's applications not among the four directly at issue ~n this
litigation.
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The PTO did not issue any rejections or otherwise invoke 37 C.F .R. §_ 1.145 to refuse to
enter any amendment prior to 2015. Trial Tr. 59:10-60:1 (Oct. 13, 2017 A.M. Session).
The PTO has shown evidence of so-called "claim shifting," or amending claims in a
wholesale way as ifto re-write them to refer to or reflect a different invention, without renumbering
them, since the agency began issuing Requirements against Mr. Hyatt's remaining applications
after reopening prosecution in 2013. See, e.g., DX136 at *25-29. The alleged claim shifts in other
applications identified by the PTO long postdate the close of prosecution at the PTO and this
Court's assumption of jurisdiction over the four applications pending before the Court. See Trial
Tr. 59:10-60:1 (Oct. 13, 2017 A.M. Session). The PTO has also shown evidence of amendments
in the four applications before the Court that it considers to be unusual. See DX-050; DX-086;
DX-090; DX-103; DX-108; DX-120; DX-208;'DX-222; DX-267; Trial Tr. 74:14-91:11 (Oct. 10, ·
2017 P.M. Session).
The PTO experienced difficulty conducting double-patenting reviews of Mr. Hyatt's
applications. Such reviews are typically done in accord with the agency's policy of compact
prosecution.
The PTO allowed Mr. Hyatt's claims in 1989 in the '094 application, but Mr. Hyatt chose
not to pay for issuance of those claims, and he re-submitted those claims in continuing application
07/289,355 (the '355 application). Trial Tr. 5:17-7:15 (Oct. 10, 2017 P.M. Session). The PTO's
expert, Mr. Kunin, testified that Mr. Hyatt chose not to take the allowed claims in the '094
application because he wanted to submit additional prior art references via an Information
Disclosure Statement; Mr. Hyatt's patent could have been rendered unenforceable if he had not
done so. After allowance of the '094 claims, Mr. Hyatt was not entitled to receive consideration
of the Information Disclosure Statement, so he filed a continuation application to have that
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Information Disclosure Statement considered. Trial Tr. 52:7-59:9 (Oct. 13, 2017 A.M. Session).
Prior to 1995, it was common for applicants to file a continuation application to obtain
consideration of prior art references. Trial Tr. 52:7-59:9 (Oct. 13, 2017 A.M. Session).
Ultimately, the previously-allowed claims were subjected to a restriction requirement in the '355
application, and Mr. Hyatt elected to proceed with a different invention in the '355 application.
See Trial Tr. 42:10-11 (Oct. 12, 2017 P.M. Session).
Mr. Hyatt presented at least one claim in an application that he had previously lost in an
interference proceeding regarding the single-chip microprocessor. See Trial Tr. 9: 5-15 :2 (Oct. 11,
2017 P.M. Session); 47:8-24 (Oct. 12, 2017 P.M. Session); 4:15-24 (Oct. 13, 2017 P.M. Session).
The PTO has methods to address any claims it contends were lost in interference: it can issue an
interference estoppel rejection. See Trial Tr: 45:3-47:6 (Oct. 12, 2017 P.M. Session). Mr. Hyatt
canceled one claim the PTO contends was lost in an interference. Trial Tr. 4:15-5:13 (Oct. 13,
2017 P.M. Session) (addressing cancellation of claim 186 in the '879 application). While the
USPTO can issue an interference estoppel rejection, it would have facilitated examination for Mr.
Hyatt not to introduce claims that he lost in an interference.
During the pendency of these four cases before the Court, the Court has never issued an Order
to Show Cause why any of these cases should not be dismissed for failure to prosecute.
b. Conclusions of Law
Prosecution laches is an issue "to be decided as a matter of equity, subject to the discretion
of a district court before which the issue is raised." Symbol Techs., II, 422 F.3d at, 1385. As it is
the party asserting the affirmative defense, the PTO bears the burden of proof and persuasion. See,
e.g., Brunswick Bank & Tr. Co. v. United States, 707 F.2d 1355, 1360 (Fed. Cir. 1983) ("the party
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raising an affirmative defense has the burden of proof on the issue."). The parties dispute the level
of that burden. These actions under § 145 are civil matters in which the Court is making de novo
findings on patentability for the claims for which new evidence is presented. The burden of proof
on the merits of these actions is thus on the applicant-plaintiff to establish by a preponderance of
the evidence that he is entitled to a patent on those claims. See generally SD3, LLC v. Lee, 205
F.Supp.3d 37 (D.D.C. 2016) (making findings by a preponderance). Even though Administrative
Procedure Act deference may be appropriate regarding claims for which the plaintiff has not
offered new evidence, this Court will assume and apply a preponderance standard to PTO's
affirmative defense for the simple reason that, if it can prove by a preponderance that it is entitled
to dismissal of these actions, then it is necessarily the case that Mr. Hyatt cannot, in tum, meet his
burden that he is entitled to the relief he seeks. Assuming that the preponderance standard applies,
PTO has not met its burden here.
The Relevant Period, and Related Patent Applications
In their most simplistic forms, the parties' arguments boil down to this: the PTO says Mr.
Hyatt's applications should be denied for prosecution laches because his conduct across all 400 of
his applications from the filing of their parent applications through today unreasonably and
inexplicably delayed examination. Hyatt, on the other hand, wishes the Court to determine he did
not commit prosecution laches because the examination of the four applications before the Court
concluded in a timely manner. As is often the case in litigation, and especially in cases of first-
impression, neither side is spot-on.
Although determining whether the four applications before the court ought to be dismissed
for prosecution laches takes into account the applicant's conduct in his related applications, that
totality principle does not apply in a manner as to require this Court to account for the entirety of
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the prosecution history of each related application from its inception to final disposition.
Transactions or occurrences that take on special legal significance in any one application may
operate prospectively to remove the subject application from the prosecution laches calculus. An
applicant's filing of a § 145 action in district court is such an occurrence, as it initiates a wholly
different set of obligations on behalf of both the applicant-plaintiff and the examining agency-
defendant than those that pre-existed the court action. Therefore, Mr. Hyatt's general prosecution
conduct across his remaining factually (though no longer legally) related applications to the ones
before the Court, which post-dates his filing of the §145 actions at-issue here, is only relevant
insofar as it might demonstrate circumstantially something about Mr. Hyatt's conduct across all
related applications before these four cases were filed in 2005 and 2009.
Because the PTO stipulates that the period between 2003 ahd 2012 ought not be considered
in the Court's prosecution laches analysis, see, e.g., 214-1 at *29, and because by 2012 these
matters were already subject to litigation in this Court, the Court, is left only to consider Mr. Hyatt's
prosecution conduct up through 2002. The PTO's stipulation functions as an admission that the
PTO shoulders responsibility for the delay during that period. That nearly decade-long delay by
the PTO, and any other delay that might be attributable to the agency, is not directly relevant to
the applicant's delay. See Bogese, 303 F.3d at 1369. Mr. Hyatt could not, for example, elect to
delay his prosecution because the PTO had first delayed in processing or examining his
applications. There is no tit-for-tat in the examination and prosecution process. But the question
before the court is whether Mr. Hyatt engaged in unreasonable and unexplained delay. The very
totality test that PTO wishes to leverage in its favor similarly functions such that, whether Mr.
Hyatt's delay is unreasonable is not wholly divorced from the greater context of his interactions
with PTO, and the agency's actions or failures to act, of which the near-decade of suspended
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examination is but one example.
Although the PTO wishes to restart the clock once more after 2012, the cases before the
Court had been filed years earlier. Any delay in prosecuting the § 145 litigation was within the
power of the Court to enforce, 11 and the relevance of any post-2012 delays in prosecuting the other
400 applications not at-issue in these cases is so circumspect that the Court must decline to consider
it here. 12 In other words, even in light of the totality of the circumstances test applicable in
prosecution laches cases, this Court ascribes no weight to the subsequent prosecution history of
other applications not before the Court following the onset of litigation in these matters.
A Unique and Extraordinary Circumstance
In its objections to Mr. Hyatt's proposed findings and conclusions, PTO repeatedly refers
to its typical procedures, while at the same time grounding its case in how unusual Mr. Hyatt's
applications were and are. For example, PTO explains that it "did not make all applicable
rejections to Mr. Hyatt's claims because it would have been impossible to do so under the time
typically given to examiners." ECF 214-1 at *7 (regarding proposed findings 20-22). See also id.
at, e.g., *9 (regarding proposed findings 52-53); *12 (regarding proposed findings 62 and 66); *16
(regarding proposed finding 81); *17 (regarding proposed findings 93-94); *25 (regarding
11
A plaintiff's "prosecution" of his civil action in district court is a different use of the word than that implied by
administrative patent "prosecution." Though the homonyms are even thematically similar, they entail different duties
and procedures and, without more, do not compound each other for the purposes of this analysis.
12
The PTO tries mightily to avoid the necessary inference that the relevance of such later conduct lies in how it might
relate back to Mr. Hyatt's intent and strategy from the start. As noted supra, this Court construes the supposed
irrelevance of intent in prosecutions !aches to be limited to the irrelevance of a lack of evidence of intent on the part
of the applicant to delay examination; an established intention on the part of the applicant to delay issuance of his
patents, however, can be grounds not to issue them. Compare Symbol Techs. II, 422 F.3d at 1382, 1384, with
Woodbridge, 263 U.S. at 56-62 (discussing indicia of deliberateness, willfulness, and intent). The closest evidence
PTO presented that could be construed as evidence of Mr. Hyatt intending to delay is his lack of a "master plan" to
cooperate with examiners. As explained further below, especially in light of the PTO's own inaction to exercise
formally any of its authorities to require further action from Mr. Hyatt on his applications undergoing examination,
this is insufficient for the Court to draw an inference warranting dismissal of Mr. Hyatt's applications at this stage
based on his prosecution conduct between 1995 and 2003.
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proposed findings 118-121 ). 13 And yet, PTO explains, "it is not disputed, and in fact is judicially
recognized, that Mr. Hyatt's applications are not ordinary, and that ordinary rejections and
complete examination could not be made with respect to his claims given," for example, the
applications' complexity. Id. at *21. See also, e.g., id. at *32 (quoting Federal Circuit precedent
describing Hyatt's patent applications and prosecution history as "extraordinary"); id. at *9 ("the
applications could not be treated as typical applications given their size and scope."); id. at *28
("Mr. Hyatt's applications are far from typical."); id. at *30 (same).
Implied in this dichotomy is that the PTO wishes the Court to find Mr. Hyatt caused
unreasonable and unexplained delay in the examination against the benchmark of the PTO's
typical practice. But the PTO itself explains a great deal of the delay: Mr. Hyatt's applications
were nottypical. See also 214-1 at *25. The court notes that anything "unusual" can cause delay
by its very nature and not due to unreasonable actions of the applicant. Even "unique" and
"extraordinary," see 214-1 at *32, do not necessarily connote "unreasonable." PTO's blind spot
is in neglecting that the unusual scenario with which it was presented in Mr. Hyatt's GATT Bubble
applications required it to employ and embrace atypical procedures for addressing the challenge
before them. It appears to the Court that, from 1995 through today (and certainly 1995-2002),
13PTO repeatedly argues that, "To the extent certain rejections were reversed, this supports the USPTO's argument
that the examiners could not effectively examine the cases under the time allowed, leading to reversal of the rejections
that were made, and leading to further examination or appeals in the applications at issue." ECF no. 214-1 at *12,
*13, *17. The PTO offered no evidence as to this alleged causal link, nor any comparative data concerning typical
reversal rates at any level (agency-wide, within certain art groups, or among the specific examiners who took action
on Hyatt's applications), from which the Court could reasonably draw such an inference. Strangely, the PTO also has
not pointed the Court to any new ground for rejection that it has discovered since this litigation commenced and that
wishes to assert in the four applications before the Court. This includes the lack of any double-patenting rejections,
even though PTO's witnesses at trial discussed at length the importance of double-patenting reviews during
examination. Even if it was impossible to conduct a complete double-patenting analysis in these four applications
before their respective § 145 actions were filed, PTO has had an additional 8-13 years to conduct those reviews, using
ever-improving technologies to search the digitized file wrappers for Mr. Hyatt's applications. Just as resolution of a
double-patenting rejection is not necessary for, and does not stand in the way of, advancing prosecution on all other
matters, the filing of a § 145 action does not prevent PTO from asserting double-patenting as a grounds for rejection
before the district court. See also Troy v. Samson, 758 F.3d 1322 (Fed. Cir. 2014).
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PTO seems, in the respects relevant here, largely to be wedded to its typical practices and
procedures with only minor, if any adaptations. 14 The PTO's witnesses' numerous references
during trial to a general policy and preference for examiners to engage in compact prosecution is
unavailing. The PTO itself acknowledges that, despite its operational efficiency in the majority of
cases, there is no legal requirement that the PTO engage in compact prosecution. See 214-1 at *8
(in light of Troy v. Samson's application of Kappas v. Hyatt, "neither Mr. Hyatt, nor the USPTO,
[is] required to make all arguments for or against patentability during examination.").
That the PTO simultaneously argues that "the applications could not be treated as typical
applications given their size and scope," 214-1 at *9 (relating to proposed findings 52-53), and
that the Court must consider the prosecution history in these cases in light of its typical procedures
and timelines, is somewhat bizarre and, perhaps, unreasonable. Suffice it to say, PTO's lengthy,
even noble attempts through 2002 to fit the large proverbial square peg of Hyatt's applications into
the rounded-out and well-trodden hole of its 3,000 page practice manual do not warrant a
prosecution laches finding against Mr. Hyatt.
The October '95 Meeting and Agreement
The PTO places much emphasis on Mr. Hyatt's October 1995 meeting with Mr. Nicholas
Godici, a former PTO group Director, and the promises Mr. Hyatt made during that meeting to
"focus" his claims. Although the PTO has certain formal mechanisms by which it can compel
patent applicants to comply with its demands, there is no evidence this informal conference was
14 The suspensions between 2003 and 2012 appear largely to be responses to pending litigation, not the applications,
themselves. Compare ECF no. 200 at **45-51 with ECF no. 214-1 at **29-33. To the extent PTO resents having had
to devise "unusual procedures ... that were not needed with respect to other applicants, who for example, did not
litigate regarding procedural issue[s] and did not file Section 145 appeals," ECF 214-1 at *32, the Court finds that
sentiment to be somewhere between vexing and outright galling. It takes a certain chutzpah for a government agency
to chafe against citizens seeking to vindicate their rights through lawfully available means, even in those cases where
the opposing party's litigious zeal is itselfremarkable for any number ofreasons.
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an exercise of any of those authorities. To the contrary, what little evidence there is concerning
what was discussed at that meeting (since it was not contemporaneously memorialized) could be
interpreted as it having been PTO's attempt to orient itself to the unusual challenge Mr. Hyatt's
applications presented.
Patent applicants have discretion as to how to prosecute their claims within the PTO's rules
and regulations. The PTO argues vehemently that Mr. Hyatt "frustrated examination by failing to
cooperate with the US PTO" during the examination process. 214-1 at * 18. See also id. at *7, *34,
*36. It contends that "failing to cooperate [by failing to provide] material information that would
assist examination" is inequitable conduct. Id. at *36. The Court is concerned by 'the PTO's
characterization of a supposed "increased burden[] on the USPTO to examine Mr. Hyatt's claims
resulting from Mr. Hyatt's lack of assistance." Id. at *18. Certainly it would seem to have been
in Mr. Hyatt's interest to assist examination when invited to do so, if he had indeed prioritized
having his applied-for patents issue at the earliest possible date. But this Court finds dubious the
proposition that a Government agency can compel such self-help via an informal meeting, such
that negative legal consequences result for the citizen who elects instead to pursue his own private
enterprise while the bureaucracy fulfills its duties to the applicant and to the public. The potential
economic benefit to Mr. Hyatt from PTO's difficulties under pre-GATT rules does not alter this
principle, where PTO had ample opportunity over many years to act to resolve its difficulties
through formal means. If the examiners(s), for example, could not find written description support
for certain claims, see id., the examiner was likewise empowered to issue written description
rejections or other specific and formal Requirements under PTO rules and regulations, rather than
await Mr. Hyatt's help, which, it appears obvious, was not forthcoming.
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The PTO asserts: "That the USPTO could have, but did not" invoke certain authorities or
make certain rejections earlier is irrelevant. 214-1 at *13 (as to undue multiplicity rejections and
Rule 11.18); id. at *14 (as to Rule 1.145); id. at *27 (as to prosecution !aches). The Court finds
PTO's repetition of this concept rather troubling, as well. Though perhaps not relevant in a case
in law, failure to exercise certain authorities is most certainly relevant in a post hoc equity
determination where there was neither formal and proper notice nor opportunity for the applicant
to cure the allegedly offensive conduct. 15 Cf, e.g., 37 C.F.R. §1 l.18(c) (providing for adjudication
of certain alleged rules violations "after notice and reasonable opportunity to respond."). Because
"the PTO's authority to sanction undue delay is even broader than the authority of a district court
to hold a patent unenforceable," Bogese, 303 F.3d at 1367, the PTO's decision not to exercise that
authority is relevant to a district court's ex post analysis of the applicant's allegedly unreasonable
delay in prosecuting his applications.
"The PTO has inherent authority to govern procedure before the PTO, and that authority
allows it to set reasonable deadlines and requirements for the prosecution of applications." In re
Bogese, 303 F.3d at 1368. Such deadlines were never set in a properly formal and binding manner
here. Nor did the PTO take action to enforce compliance with the informal agreements it now
argues it had with Mr. Hyatt, during the pendency of these applications before the agency. PTO
examiners knew how to enter formal Restriction requirements, and even did so in his '639
application currently being litigated before this Court. This is critical because patent applicants
are entitled to amend or cancel claims to traverse a ground of rejection. But in many of his
15
The Court also questions the relevance of the PTO's curious speculation that, had it exercised certain authorities,
"it would have only led to a procedural dispute with Mr. Hyatt, as it has today." 214-1 at *13 (regarding undue
multiplicity rejections); id. at *14 (regarding Rule 11.18). If such a procedural dispute was inevitable, the PTO's own
arguments in equity suggest that it would have been preferable to resolve those disputes at the earliest juncture.
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applications, Mr. Hyatt was not given a similar opportunity to amend or cancel claims to avoid
rejections during the period relevant here, i.e., prior to 2003.
It is entirely likely that Mr. Hyatt "could have" been more helpful during the examination
process. Cf 214-1 at *19. But there is no abstract requirement for a citizen to tailor his conduct
in pursuit of his constitutional right to a patent, to conform to what is "feasible" for the agency.
Cf, e.g., 214-1 at *23. Agency demands for further action by the filer of an accepted patent
application must be tied to properly constituted statutory or regulatory authorities. 16 The Court is
left with no choice but to conclude that the PTO itself ignored for 20 years the details of whatever
informal agreement Mr. Hyatt and Mr. Godici had. PTO offers that "conversations between
applicants and examiners, never mind Group Directors like Mr. Godici, are not always
· memorialized in interview summaries, even in typical cases, and Mr. Hyatt's applications are far
from typical." 214-1 at *28. The atypicality of Mr. Hyatt's applications and his meeting with a
Group Director would seem to be all the more reason to memorialize the conversation and
agreement. Regardless, Mr. Hyatt and Mr. Godici did not reach any agreement that the Court can
now enforce. 17 Further, Mr. Hyatt's failure to devise a "master plan" to "focus his claims"
subsequent to the October 1995 meeting, see ECF No. 81-2 at *23; Trial Tr. 73:7-76:5 (Oct. 11,
2017 A.M. Session), though it may have been helpful for him to do so, did not violate his duty of
disclosure, candor, and good faith to the PTO, as "There is no duty to submit information which
is not material to the patentability of any existing claim." 37 C.F.R. § l .56(a). 18
16
Although the Court did not consider this fact when ruling on the plaintiff's Rule 52( c) motion, it is telling for context
that Mr. Hyatt's trial testimony in the 09-1864 case that he was told to re-file photocopies of applications as
placeholders by PTO personnel, went unchallenged and umebutted. Trial Tr. 41:8-23, 09-cv-1864 (Feb. 12, 2018
AM. Session).
17
The Court understands that the PTO "does not seek to enforce a contract per se," 214-1 at *28, but reiterates that
exercising its equitable powers against Mr. Hyatt in this context would be inappropriate.
18
Notably, PTO did not invoke § 1.56, including its "bad faith or intentional misconduct" language, as a ground to
reject any of Mr. Hyatt's applications prior to this litigation. Further, 37 C.F.R. § 11.18 itself specifies that alleged
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The PTO fears that, in declining to agree with its position on prosecution laches here, the
Court will have established that the PTO can suffer legally from attempting to resolve patentability
issues at the examiner level without formally flexing its regulatory muscle. Although the Court
does not wish today's ruling to chill informal interactions between examiners and applicants, the
overall theme of PTO's case is to ask the Court to do as they now say, not as they have done, or
failed to do, for decades. This is not a case where "designed delay" has been proven, Woodbridge,
263 U.S. at 56, 19 demanding the Court find "abandonment by conduct," id. at 59. Rather, the
evidence before the Court principally Mr. Hyatt's decision not to affirmatively assist the PTO in
its examination, despite the potential consequences for not doing so including, e.g., having his
applications rejected on any number of potential grounds- for rejection in the 3,000 page Manual
of Patent Examinatio·n Procedure. See also Trial Tr. 9:6-7 (October 6, 2017, P.M. Session)
("[C]ertainly the examiner needs to keep in mind all of those potential grounds of rejection.").
One such ground of rejection is for lack of written description support under 35 U.S.C. §112, by
far the most common rejection at issue on the remaining claims in the four applications before the
Court. The Court is highly skeptical of PTO's contention that failing to provide written description
support for a claim or element of a claimed invention, a statutory ground for rejection on the merits,
is simultaneously evidence of "unreasonable delay." See Trial Tr. 25:1-7 (Oct. 13, 2017, P.M.
Session). To equate the two would certainly would run counter to the Supreme Court's ruling in
Kappas v. Hyatt allowing patent applicants to present new evidence in §145 cases, and effectively
divest the Court of jurisdiction to review §112 rejections on the merits in a §145 proceeding.
violations of the PTO's certification requirements are to be adjudicated by the PTO "after notice and reasonable
opportunity to respond." Id. at§ l l.18(c).
19
Indeed, the PTO hast repeatedly disclaimed any attempt at all to show Mr. Hyatt intended to obstruct the patent
system.
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The Court here does not wish to incentivize the PTO to take an unreasonably hard line
against flawed but meritorious applications - examiners working in concert with applicants to
ensure patents are awarded when deserved lies at the heart of PTO's mission. But the PTO cannot
have it both ways here - it cannot at once lament decades of allegedly outrageous conduct, while
simultaneously arguing that its own inaction for much of that time is irrelevant to the Court's
analysis. If Mr. Hyatt's conduct were so outrageous as to make available so many potential
grounds for the PTO to take definitive action against his claims or entire applications, there comes
a time that a court must ask, "Why not?" The answer in a case like this cannot simply amount to
the bureaucratic equivalent of, "We were just being nice."
Further, aside from generalizations about Mr. Hyatt's conduct, PTO presented no evidence
of just how much of the delay was caused by·Mr. Hyatt's representations concerning the focusing
of his claims. That the PTO finally, in 2015, got fed-up enough with the difficulties of examining
Mr. Hyatt's claims that it began issuing prosecution laches rejections, does not itself have any
relevance to this Court's treatment of the applications' respective prosecution histories through
2002.
Other Matters
Mr. Hyatt paid to PTO over $7 million in fees for the 400 applications at issue; PTO has
spent more than $10 million in the last five years examining his claims in those applications. "This
means that the amount of money Mr. Hyatt was paid does not approach the amount of time spent
to examine his claims." 214-1 at *13. The PTO's fiscal "loss" in the course of examining Mr.
Hyatt's applications is given little weight. The PTO both sets the examination fees and, through
various mechanisms, the salaries of the employees assigned to examine Mr. Hyatt's applications.
Presumably it does so in a manner designed to be fiscally neutral over time - the PTO will
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inevitably see either some "profit" or "loss" as to nearly any application or applicant, but those
gains and losses should even out over time in accord with the Law of Large Numbers, despite the
occasional outlier to typical examination scenarios.
Mr. Hyatt argues that the PTO's allegations of claim shifting is "just applying a new label
to its contentions regarding the number of claims in Mr. Hyatt's applications and Mr. Hyatt's
amendment practice." ECF No. 200 at *23. The Court disagrees. There is a fundamental
difference between amending a patent application by adding new numbered claims (and paying
the accompanying fees), and significantly amending the language of individual claims that have
neither been cancelled nor re-numbered in such a way as to effectively create a new claim. At the
very least, the latter red-line method is more opaque and complicates review of an administrative
record far more than the former. Indeed, the Court in other circumstances would likely be inclined
to agree with the PTO that shifting "is inimical to furthering prosecution." DX-136.000026. But
the Court here is faced with the facts that: 1) it is "not unusual to see a few claims rewritten," Trial
Tr. 88:7-8 (Oct. 10, 2017, P.M. Session); 2) most if not all of the activity in question occurred, as
PTO ensured the Court was aware, after the October 1995 meeting between Mr. Hyatt and Mr.
Godici; Trial Tr. 75:16-17, 79:15-17, 81:22-24, 85:22-86:4, 91:6-11 (Oct. 10, 2017 P.M. Session);
arid 3) the PTO accepted the amendments and continued examination of each of these applications
to their conclusion. Under the circumstances, the PTO has not made clear to the Court by a
preponderance of the evidence that the agency found any of the amendments to be unreasonable
at the time they were filed or for several years afterward. The PTO did not reject the amendments,
nor does it appear that any PTO official attempted to schedule a second meeting with Mr. Hyatt to
clarify the matters discussed in 1995 or express that the amendments were not in accord with the
agreement, which one might reasonably have suspected to occur if the PTO assessed that Mr. Hyatt
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was doing anything other than attempting to refocus his claims per the informal agreement made
during the 1995 meeting. The Court sees and appreciates the challenge that faced the PTO in
processing these unusual applications during an unique time of a paradigm shift in the U.S. patent
system, but the PTO has left the Court without a basis to draw such adverse conclusions against
Mr. Hyatt's conduct at this stage, in this legal posture, when the PTO itself did nothing to police
the conduct they now complain of for the better part of two decades. In any event, much of the
PTO's testimony on this matter was ·conclusory, and it did not present evidence of just how Mr.
Hyatt's alleged claim shifting unduly frustrated examination in the four applications before the
Court, and PTO has not presented evidence sufficient to establish that other applications saw
similar shifts before 2003 and that the shifts in those applications and the four before the court
mutually, unreasonably, and inexplicably delayed examination to such an extent as to warrant
dismissal for prosecution laches for conduct up through that time. Had the PTO done so, this
might be a significantly different case.
The PTO introduced evidence concerning four claims not in the applications before the
Court that Mr. Hyatt re-submitted despite having previously lost them in interference. Hyatt v.
Boone, 146 F.3d 1348 (Fed. Cir. 1998). It is reasonable for the PTO to assume that an applicant
is not claiming an invention that he has already been told he did not invent. And it is unreasonable
for Mr. Hyatt to continue to seek claims that he has lost, particularly without noting the similarity
of the claims to the examiner, thereby forcing the PTO to expend time and resources to identify
the improper conduct to issue the rejection(s). See, e.g., Trial Tr. Day 3 P.M. Session, 5:6-15:2,
Oct. 11, 2017; Trial Tr. Day 4 P.M. Session, 43:4-49:16, Oct. 12, 2017; DX1486 ,r,r 29, 220-225.
Mr. Hyatt's conduct as to these four claims was not reasonable. But unreasonable conduct as to
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four allegedly illustrative claims does very little to move the ball in consideration of the totality of
Mr. Hyatt's conduct across approximately 115,000 claims.
IV. CONCLUSION
In light of the above, the Court concludes that Mr. Hyatt's conduct did not cause
unreasonable and unexplained delay under the totality of the circumstances relevant here sufficient
to warrant dismissal of these four matters for prosecution !aches. In so holding, the Court takes
this opportunity briefly to clarify the scope of this opinion.
The PTO objected to Mr. Hyatt's proposed findings and conclusions, among other reasons,
"to the extent they find or conclude that Mr. Hyatt's conduct in the related 400 applications still
pending before the USPTO did not result in or cause any unreasonable and unexplained delay with
respect to those applications." 214-1 at *4. Although the Court's opinion today does not reach
those applications not subject to the§ 145 cases before it, it is worth noting that the PTO's objection
in this regard rests on similarly faulty logic to the rest of its !aches argument. First, the PTO insists
the Court consider the totality of the circumstances, including Mr. Hyatt's conduct in prosecuting
those other 400 applications. The PTO, again, cannot have it both ways - the Court is dubious of
the notion that any consideration of Mr. Hyatt's conduct with respect to the other applications can
nevertheless produce a judgment that has no bearing whatsoever on those same applications. To
the extent the PTO wishes the Court to mine and weigh the evidence produced relative to Mr.
Hyatt's applications that are not themselves before the Court, the Court is fully capable and
authorized to make findings and conclusions as to the entirety of the evidence the PTO has
produced for the Court to consider. The PTO's strategy in pursuit of its prosecution !aches theory
thus was a gamble with potentially widespread ramifications. It was not Mr. Hyatt's §145 merits
actions, but the PTO itself that created the possibility of such an outcome.
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Although the PTO did not prevail in its gamble here, the Court's ruling today is
nevertheless a narrow one. The Court today grounds its ruling in findings as to the prosecution
conduct before the PTO up through 2002, the last date the PTO includes in its own calculations
prior to the onset oflitigation in these cases. The Court's opinion does not reach patent prosecution
conduct after those dates, and should not be read either to draw conclusions based upon later
conduct, nor upon the PTO's prosecution laches rejections that presumably took into account that
later conduct in conjunction with pre-2003 conduct in a totality of the circumstances approach. 20
In other words, though Mr. Hyatt's 1995-2003 conduct itself is not sufficient to warrant
applying prosecution laches here; that does not mean that it is irrelevant to a totality of
circumstances analysis that would include later-occurring events.
Ah order consistent with this holding accompanies this opinion.
Date: ~c.;11~
Royce C. Lamberth
United States District Judge
20
The Court likewise makes no findings or conclusions as to the intervening rights of third-parties.
39
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I
)
GILBERT P. HYATT, )
)
V. ) Civil Action No. 09-1872 (RCL)
)
ANDREI IANCU, )
)
Defendant. )
MEMORANDUM OPINION 1
I. Background
Before the Court is a trio of actions brought under 35 U.S.C. §145, related to three of
Gilbert Hyatt's applications to patent features of his "600- family" and "700-family" specifications
that purport to describe innovations Mr. Hyatt made in the field of video processing and associated
computing and memory architectures in the mid-1980s. Plaintiff Gilbert P. Hyatt is a prolific
inventor who has received more than seventy issued patents and has, pending at various stages of
prosecution and appeal, nearly 400 patent applications before the United States Patent and
Trademark Office (PTO), the federal agency responsible for examining patent applications and for
granting U.S. patents. 35 U.S.C. § 1, et seq. Andrei Iancu is the named defendant in these matters
in his official capacity as the Under Secretary of Commerce for Intellectual Property and the
1
Although these cases were not consolidated for trial, because of their complex but nevertheless overlapping records
and litigation histories, and common legal issues, the Court is issuing this single opinion concerning the merits in aJI
three matters. Separate judgments will issue in each case.
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Director of the PTO. 2 Because of the nature and lengthy history of these actions, the Court refers
to the defendant as "PTO" throughout this opinion.
Mr. Hyatt brought these actions pursuant to 35 D.S.C. § 145 to obtain patents on three of
his patent applications following decisions in the Board of Patent Appeals and Interferences, now
known as the Patent and Trial Appeal Board (the "Board"). 3 Section 145 allows an applicant
dissatisfied with the decision of the Board to "have remedy by civil action" in district court, rather
than taking an appeal directly to the Federal Circuit. 4 See also Kappas v. Hyatt, 566 U.S. 431
(2012). In a series of opinions issued August 23, 2016, the Court found genuine disputes of
material fact precluded summary judgment in these matters, which therefore required trials on the
merits. 5
After the Court resolved the summary judgment motions, however~ the PTO moved to
dismiss these actions for prosecution !aches. Def.'s Mot Dismiss, ECF No. 91. In that set of
motions, PTO argued that Hyatt's conduct in prosecuting these three patent applications, as well
as approximately 400 others, called for dismissal. Id. at 8-9. Mr. Hyatt, on the other hand, argued
that the PTO was responsible for extensive delay in adjudicating many of the applications, Pl. Mot.
Dismiss, ECF No. 101 at 7-9, and made the case that he was entitled to discovery. Id. at 37-38.
On March 16, 2017, the Court found that genuine disputes of material fact required treating the
motions to dismiss as if they were for summary judgment, and denied them accordingly. ECF No.
116.
2
Andrei Iancu has been automatically substituted for Joseph Matal in these actions under Fed. R. Civ. P. 25(d).
3
Case number 05-cv-2310 relates to the 08/457,211 application (the '211 application); No. 09-cv-1864 relates to the
08/456,398 application (the '398 application); and No. 09-cv-1872 relates to the 08/431,639 application (the '639
application). All docket citations herein are to 05-cv-2310 unless otherwise specified.
4
At the time Mr. Hyatt filed the present cases, venue lay by statute with the District Court of the District of Columbia.
In 2011, Congress amended the venue provision of certain patent-related statutes, including § 145, such that suits under
those sections are henceforth to be filed in the Eastern District of Virginia. Pub. L. 112-29, §9 (Sept. 16, 2011).
5
See ECF No. 75 (05-cv-2310); ECF No. 71 (09-cv-1864); ECF No. 72 (09-cv-1872).
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With leave of Court, the PTO subsequently amended its answers to assert prosecution
laches as an affirmative defense. ECF No. 123. The Court set the PTO's affirmative defense of
prosecution laches across all three actions for a bench trial, 6 which also would consider evidence
relating to Mr. Hyatt's approximately 400 other pending applications. ECF No. 150. The PTO,
bearing the burden of proof on the affirmative defense of prosecution laches and upon agreement
of the parties, presented its case-in-chief first. During the five trial days beginning October 6,
2017, during which the PTO presented its case-in-chief, the PTO presented the testimony of three
witnesses. The parties also introduced a number of exhibits. 7
At the close of the PTO's case-in-chief on prosecution laches, Mr. Hyatt moved for
judgment pursuant to Federal Rule of Civil Procedure 52(c). Upon consideration of the evidence
and arguments presented during trial and the entire records in these cases up to· that time, and
review of the relevant case law, the Court found the PTO failed to prove unreasonable and
unexplained delay that would support dismissal for prosecution }aches, and accordingly granted
Mr. Hyatt's motion. 8 The Court's ruling on prosecution laches necessitated trials on the merits in
these three cases. Each of the three trials featured three witnesses: the plaintiff called Mr. Hyatt
and his expert witness, Mr. Bradford Hite, while PTO called its expert, Dr. Kenneth Castleman.
Plaintiffs expert Mr. Hite has booth a Bachelor of Science and a Master of Science degree
in Electrical Engineering from California State University at Northridge. For the past 23 years, he
has worked as an electrical engineer for ITT Corporation (including as a technical lead on certain
6 The PTO's prosecution !aches argument, and the accompanying trial, also applied to a fourth case, 09-1869, arising
out of a § 145 matter related to patent application 08/4 72,062, entitled "A System of Weighting and Scaling Image
Information." The affirmative defense was the last unresolved issue in that case, so it did not proceed to a trial on
the merits.
7
Because the proceedings regarding prosecution !aches are part of the record in each of these three cases, in addition
to one other, see 09-cv-1869, the Court includes for background some citations to that October 2017 trial.
8 In addition to the present Opinion and in accord with Federal Rule of Civil Procedure 52(a)(l), the Court today
also issued a separate Memorandum Opinion, Findings of Fact, and Conclusions of Law further explaining its ruling
on the PTO's affirmative defense.
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projects), Magellan Systems, Raytheon, Curtis-Wright, Lear Astronics, MiniMed, RoundTrip
Technologies, SiRF, Quallion LLC, Paylon Medical, ASML, and Neural Analytics. Trial Tr.
32:25-49:5 (Nov. 14, 2017 AM Session) (09-1872). Mr. Hite has worked on complex electrical
engineering projects involving missile defense radars, flight control systems, the Global
Positioning System ("OPS") for consumer and military applications, glucose meters and insulin
pumps for diabetics and cancer pain-management, long-distance tracking, battery modules for
military aircraft and space applications, avionics computers, and Doppler radar imaging for
concussions in football.
Mr. Hite's experience with memory systems and image processing includes a project at
ITT in 1984 working on graphical displays for equipment that interfaced with external control
devices like keyboards for which he contributed computer code, and working on image
processors and various types of memory architectures for a Navy missile defense project with
ITT in 1987. During his tenure at Magellan, Mr. Hite worked on dot-matrix LCD displays that
would scan out images, using a block of Random Access Memory ("RAM") to do so. At
MiniMed, Mr. Rite's work included a graphical interface with RAM memory organization, and
Mr. Hite wrote software to test and operate the display. Id. Mr. Hite was qualified without
objection as an expert in application-specific processors, including memory and image
processing. Trial Tr. 49:2---6 (Nov. 14, 2017 AM Session) (09-1872).
Defense expert Dr. Castleman received his Bachelor of Science, Master of Science, and
Doctor of Philosophy (Ph.D.) degrees in Electrical Engineering from the University of Texas at
Austin. See Trial Tr. 477:9-11 (Feb. 14, 2018); see also DX3034 (0003). Dr. Castleman has more
than fifteen years of experience in image processing for public sector endeavors, including in the
image processing lab at NASA's Jet Propulsion Laboratory as a member of the Scientific
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Working Group on Imaging Technology for the FBI, where he assisted NASA in the image
analysis of the Challenger and Columbia space shuttle accidents. See DX3034 (0001); see also
1872 Trial Tr. 19: 14-22: 19 (Nov. 15, 2017 PM Session). He also has about twenty years of
private sector experience designing and building image processing systems as president (or
CEO) of a company he co-founded. See Trial Tr. 477:11-14 (Feb. 14, 2018); see also Trial Tr.
1872 Trial Tr. 19:14-21:4 (Nov. 15, 2017 PM Session); 1872 Trial Tr. 22:20-24:15 (Nov. 15,
2017 PM Session); DX3034 (001-002).
Dr. Castleman has written college-level textbooks on image processing, including Digital
Image Processing (1979 and 1996 editions), published more than 60 scientific articles in
technical journals, and has taught college courses related to image processing. See 1872 Trial Tr.
24:16-26:22 (Nov. 15, 2017 PM Session); Trial Tr."477:23-478:2 (Feb. 14, 2018). He has
previously served as an expert in approximately 33 cases. See DX3024.
Each trial lasted five days. The Court addresses each case in chronological order by docket
number, rather than the order in which they were tried.
Case 05-2310 (the '211 application)
Civil case 05-2310, filed November 18, 2005, concerns patent application 08/457 ,211 (the
'211 application), entitled "Improved Image Processing Architecture," which Mr. Hyatt filed with
the PTO on June 1, 1995. One of several applications flowing from Mr. Hyatt's 641-page9 "700-
family" specification, the '211 application is a continuation of patent application serial number
07/289,355, filed December 22, 1988, which is a continuation of patent application serial number
06/663,094, filed October 19, 1984. The PTO entered a non-final Office Action rejecting the
9
The specification contains 576 pages of text and 65 pages of figures. PTX-001.05255-5830; PTX-001.05840-905 .
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claims on September 22, 1995, and entered a final rejection made on July 31, 1996. Mr. Hyatt,
using the transitional rules provided in 37 C.F.R. § 1.129(a) ("Rule 129(a)"), petitioned to file an
amendment, the effective equivalent of a continuing application, on March 25, 1997. PTX-
004.06587-89. The PTO issued a non-final Office Action rejecting the claims on August 3, 1998.
PTX-004.6053~54. The PTO entered a final r~jection of all claims on August 27, 1999. PTX-
004.06373.
Mr. Hyatt timely noticed his appeal to the Board on February 28, 2000, and he filed his
appeal brief on August 28, 2000. PTX-004.04965. In the course of its decisions on Mr. Hyatt's
appeal and subsequent motion for reconsideration, the Board reversed several rejections by the
examiner of the '211 application claims and upheld others. See PTX-004.00103-04. Two
hundred twenty-one claims in the '211 application remain before the Court, all of which were
rejected by PTO for lack of written description. ECF No. 227 at 1. During a five-day trial that
began on December 4, 2017, 10 Mr. Hyatt presented new evidence concerning sixty-six of those
claims. See PTX-912. 11
Civil case 09-1864, filed September 25, 2009, concerns patent application 08/456,398 (the
'398 application), also entitled "Improved Image Processing Architecture" and sharing the 700-
family specification, was similarly filed with the PTO on June 1, 1995. Like the '211 application,
the '398 application is a continuation of patent application serial number 07/289,355, filed
10
The trial in this case was originally scheduled to run December 4-8, 2017, but was suspended on December 6,
2017 due to a medical emergency. The Court had previously been assigned to sit by designation in the Western
District of Texas beginning January 2, 2018. With the parties' consent and to conserve judicial and the parties'
resources, and consistent with 28 U.S.C. § 141(b)(l), the Chief Judge of the District Court for the District of
Columbia authorized this trial to resume as a special session in San Antonio, Texas. ECF No. 223. The special
session in this case took place on January 18-19, 2018.
11
Claim 467 is erroneously listed twice on page 164 of this exhibit.
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December 22, 1988, which is a continuation of patent application serial number 06/663,094, filed
October 19, 1984. PTX-001.05919-23. The PTO entered a non-final Office Action rejecting the
claims on September 19, 1995, and a final rejection on August 9, 1996. PTX-001.05137. Mr.
Hyatt petitioned to enter a submission pursuant to 37 C.F.R. § 1.129(a) with an amendment,
effectively equivalent to a continuation application; the PTO subsequently rejected the then-
pending claims in a non-final Office Action on December 12, 2000. PTX-001.04505-06. Mr.
Hyatt amended the claims on January 30, 2002. PTX-001.04268-69. The PTO issued a non-final
Office Action rejecting all claims on September 7, 2004. PTX-001.04025-26.
Mr. Hyatt timely noticed his appeal to the Board on March 7, 2005. PTX-001.03898. He
filed his appeal brief on August 26, 2005, thereby closing prosecution. PTX-001.00928. In the
course of its decisions on Mr. Hyatt's appeal and subsequent two motions for reconsideration,
the Board reversed numerous grounds ofrejection found by the examiner of the '398 claims and
upheld others, concluding the PTO's administrative adjudication of the '398 application on July
8, 2009. A total of twenty-eight claims in the '398 application remain subject to Mr. Hyatt's
§145 action before this Court: twenty-two rejected for lack of written description, and six
because of anticipation. 12 A five-day trial began February 12, 2018, 13 during which new
evidence was presented on each of the twenty-eight claims. See PTX-917.
12 Mr. Hyatt has also asked the Court to order patents to issue on '398 application claims for which examiners'
rejections were reversed by the Board., but are not part of the present litigation. See 09-1864 ECF No. 220 at 1. The
Constitution's case or controversy requirement bars the Court from issuing an Order on claims not in dispute before
it. U.S. CONST. ART. III, §2(1).
13 The trial in 09-1864 was originally scheduled to begin on December 11, 2017. Due to the same circumstances
that gave rise to suspending proceedings in 05-2310 and resuming them in the Western District of Texas, the trial
was rescheduled to February 12, 2018 in San Antonio, in accord with the Order Authorizing Special Sessions under
28 U.S.C. §141(b)(l). See 09-1864 ECF No. 215.
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Civil case 09-1872, also filed September 25, 2009, concerns patent application
08/431,639 (the '639 application), entitled "Adaptive Memory System," which Mr. Hyatt filed
on May 1, 1995. One of several applications flowing from Mr. Hyatt's 564-page 14 "600-family"
specification, the '639 application is a continuation application of patent application serial
number 07/279,592, filed December 2, 1988. PTX-003.01380. The PTO entered a restriction
requirement requiring Mr. Hyatt to elect one group of claims for examination drawn to one
invention on October 19, 1995. PTX-003.01311-13. On July 24, 1996, the PTO rejected the
claims in a non-final Office Action. PTX-085.00005. The PTO rejected the claims in a final
Office Action dated May 19, 1999. PTX-085.00005. Mr. Hyatt timely noticed his appeal on
October 19, 1999. PTX-085.00005.
Mr. Hyatt' filed his Appeal Brief ort April 18, 2000, thereby' closing prosecution. PTX-
085.00005. In the course of its decisions on Mr. Hyatt's appeal and three subsequent motions for
reconsideration, the Board reversed numerous rejections by the examiner of the '639 claims and
upheld others, concluding the PTO's administrative adjudication of the '639 application on July
8, 2009. PTX-085.00005. Mr. Hyatt filed suit under 35 U.S.C. § 145 to obtain a patent on claims
on which the Board affirmed at least one ground of rejection on September 25, 2009. A total of
fifty-eight claims in the '639 application remain subject to Mr. Hyatt's § 145 action before this
Court: fifty-two rejected for lack of written description, and six because of obviousness. See 09-
1872 ECF No. 197 at 3; 15 09-1872 ECF No. 220 at 1. A five-day trial began November 13, 2017,
14The specification contains 518 pages of text and 46 pages of figures. PTX-003.01333-1896.
15
Document 197, Mr. Hyatt's pre-trial statement, lists sixty claims, but his challenges to two of those, claims 95 and
215, were withdrawn at trial. See 09-1872 ECF No. 219 at 5. Mr. Hyatt's proposed findings and conclusions list
seventy-two claims on which he wants the Court to order PTO to issue a patent. See 09-1872 ECF No. 219 at 1.
This appears to include the non-disputed independent claims upon which several disputed claims are dependent, e.g.,
independent claim 103, upon which claims 220-24 depend. The Constitution's case or controversy requirement bars
the Court from issuing an Order on claims not in dispute before it. U.S. CONST. ART. III, §2(1).
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during which new evidence was presented on each of the disputed claims. See, e.g., PTX-901;
PTX904.
II. Legal Standard
a. §145 and Kappos v. Hyatt
Section 145 provides that a patent applicant dissatisfied with the Board's decision may
sue the PTO in district court to determine the patentability of his alleged invention. 16 "The court
may adjudge that such applicant is entitled to receive a patent for his invention, as specified in
any of his claims involved in the decision of the [Board], 17 as the facts in the case may appear
and such adjudication shall authorize the Director to issue such patent on compliance with the
requirements oflaw." 35 U.S.C. §145.
In 2012, in a case arising out of one of Mr. Hyatt's related applications with origins and
ancestry largely in common with the applications at issue here, and also first litigated in this
court, 18 the Supreme Court determined that district courts can consider new evidence that was
not before the PTO during prosecution of a § 145 plaintiffs antecedent patent application, and
"the district court must make a de nova finding when new evidence is presented on a disputed
question of fact." Kappas v. Hyatt, 566 U.S. 431,434 (2012). 19 District courts may nevertheless
16
As noted at n. 4, supra, venue for§ 145 actions now lies in the Eastern District of Virginia. Pub. L. 112-29, §9
(Sept. 16, 2011 ).
17
The Supreme Court recently decided with respect to a different patent statute that "any" means "every." See SAS
Institute Inc. v. Iancu, 138 S.Ct. 1348 (2018). To the extent that reading might be applied in a §145 context such
that the PTO might, as cross-plaintiffs, ask the court in these proceedings to reverse Board determinations in an
applicant's favor, cf Troy v. Samson Mfctrn 'g Corp., 758 F.3d 1322 (Fed. Cir. 2014) (holding that new issues and
arguments may be presented to district courts in§ 145 and§ 146 actions), that question has not been presented in this
case, and the Court will not go beyond the claims Mr. Hyatt has brought before the Court.
18
See 09-cv-901, concerning patent application number 08/471,702.
19
The Supreme Court held that, in§ 145 actions, applicants are "free to introduce new evidence ... subject only to
the rules applicable in all civil actions, the Federal Rules of Evidence and the Federal Rules of Civil Procedure."
Kappas, 566 U.S. at 444. In so doing, the Court upheld the Federal Circuit's rejection of PTO's argument that "new
evidence" be limited to "that [which] could not reasonably have been provided to the agency in the first instance."
Hyatt v. Kappas, 625 F.3d 1320, 1323 (Fed. Cir. 2010). In other words, the definition of"new evidence" in the rules
applicable to post-trial or post-judgment proceedings such as motions for reconsideration do not apply
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exercise their discretion to "consider the proceedings before and findings of the Patent Office in
deciding what weight to afford an applicant's newly-admitted evidence." Id. at 445 (quoting
Hyatt v. Kappas, 625 F.3d 1320, 1335 (Fed. Cir. 2010).
Section 145 cases remain "hybrid" actions after Kappas, see also SD3, LLC v. Dudas,
952 F.Supp.2d 97 (D.D.C. 2013), and APA deference is owed to Board decisions on claims for
which no new evidence is presented. See Alberts v. Kappas, 917 F. Supp. 2d 94, 104 (D.D.C.
2013) ("If the parties do not submit new evidence during a§ 145 proceeding, 'the reviewing
court must apply the AP A's substantial evidence standard to Patent Office fact findings.')
(quoting Hyatt v. Kappas, 625 F.3d at 1336), affd sub nom. Alberts v. Lee, 552 F. App'x 986
(Fed. Cir. 2014).
Like the plaintiffs, the PTO is free to introduce new evidence and arguments for rejecting
a §145 plaintiffs claims on the merits in response to new evidence presented as to those claims.
See also Troy v. Samson Mfctrn 'g Corp., 758 F.3d 1322 (Fed. Cir. 2014). All evidence
concerning the claims at issue must be presented to the Court for full consideration, because
Section 145 "does not provide for remand to the PTO to consider new evidence." Kappas, 556
U.S. at 439.
b. Written description requirement
The vast majority of the claims now before the Court are the subject of earlier rejections
within the PTO for lack of written description under 35 USC §112. That statute provides, in
relevant part:
The specification shall contain a written description of the invention, and of the manner
and process of making and using it, in such full, clear, concise, and exact terms as to
enable any person skilled in the art to which it pertains, or with which it is most nearly
connected, to make and use the same, and shall set forth the best mode contemplated by
the inventor or joint inventor of carrying out the invention.
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The Federal Circuit has explained "[t]he purpose of the 'written description' requirement
is broader than to merely explain how to 'make and use'; the applicant must also convey with
reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in
possession of the invention." Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir.
1991 ). The rationale for the written description requirement is clear:
' [A] patent is not a hunting license. It is not a reward for the search, but
compensation for its successful conclusion.' Requiring a written description of the
invention limits patent protection to those who actually perform the difficult work
of 'invention'-that is, conceive of the complete and final invention with all its
claimed limitations-and disclose the fruits of that effort to the public .... It is part
of the quid pro quo of the patent grant and ensures that the public receives a
meaningful disclosure in exchange for being excluded from practicing an invention
for a period of time.
Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1353'(Fed. Cir. 2010) (internal citations
omitted). Put another way, "[t]he essence of the written description requirement is that a patent
applicant, as part of the bargain with the public, must describe his or her invention so that the
public will know what it is and that he or she has truly made the claimed invention." AbbVie
Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 1298 (Fed. Cir. 2014).
Whether there is sufficient written description is ultimately one of fact. See GlaxoSmithKline LLC
v. Banner Pharmacaps, Inc., 744 F.3d 725, 729 (Fed. Cir. 2014).
Whether there is written description support for a claim is examined from the point of view
of one skilled in the art at the time of the claimed invention. Phillips v. AWH Corp., 415 F.3d
1303, 1313 (Fed. Cir. 2005) ("[T]he ordinary and customary meaning of a claim term is the
meaning that the term would have to a person of ordinary skill in the art in question at the time of
the invention, i.e., as of the effective filing date of the patent application."). Section 112's twin
requirements, of (1) describing the manner and process of making and using the full scope of the
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invention, and (2) describing the invention sufficiently to convey the patentee had possession of
the claimed invention, are viewed in this same light and "usually rise and fall together."
LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1344-45 (Fed. Cir. 2005).
In determining whether there is sufficient written description, courts do not use bright-
line rules, Ariad, 598 F.3d at 1351, but, in general "the test for sufficiency is whether the
disclosure of the application relied upon reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date." Id. Although this
does not require an applicant to det1:1.il each and every instantiation of a claimed invention, see id.
at 1352, PTO guidelines, adopted by the Federal Circuit, require·"disclosure of sufficiently
detailed, relevant identifying characteristics ... i.e., complete or partial structure, other physical
and/or chemical properties, functional characteristics when coupled with a known or.disclosed
correlation between function and structure, or some combination of such characteristics." Enzo
Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 964 (Fed. Cir. 2002). In other words, "the
applicant must 'convey with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention,' and demonstrate that by disclosure in the
specification of the patent." Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115,
1122 (Fed. Cir. 2008) (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563--64 (Fed. Cir.
1991)). Further, claims added during prosecution must themselves find support sufficient to
satisfy§ 112 in the written description of the original priority application. See, e.g., Anascape,
Ltd. v. Nintendo ofAm., Inc., 601 F.3d 1333, 1335 (Fed. Cir. 2010). And if the applicant is
purporting to provide written description for a genus, "One needs to show that one has truly
invented the genus, i.e., that one has conceived and described sufficient representative species
encompassing the breadth of the genus. Otherwise, one has only a research plan, leaving it to
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others to explore the unknown contours of the claimed genus." Abb Vie Deutsch/and GmbH &
Co., KG v. Janssen Biotech, Inc., 759 F.3d at 1300.
Although the doctrines of written description and enablement are distinct, determining if
there is sufficient written description support for a broadly claimed invention can be "analogous
to enablement of a genus under § 112, ,r 1, by showing the enablement of a representative
number of species within the genus." Regents of the Univ. of California v. Eli Lilly & Co., 119
F.3d 1559, 1569 (Fed. Cir. 1997); see also Kennecott Corp. v. Kyocera Intern., Inc., 835 F.2d
1419, 1421 (Fed. Cir. 1987) ("These requirements may be viewed separately, but they are
intertwined."). A claim does not satisfy the written description requirement when it recites "a
technically difficult solution that the ... specification does not solve, let alone contemplate or
suggest as a goal or desired result." Cisco Systems, Inc. \r. Cirrex Systems, LLC, 856 F.3d 997,
1010 (Fed. Cir. 2017).
c. Anticipation rejections
In case 09-1864, the Court is considering six claims in the '398 application subject to
anticipation rejections. A patent application will be rejected for anticipation under 35 U.S.C. §
102 if "the invention was patented or described in a printed publication ... more than one year
prior to the date of the application .... " 35 U.S.C. § 102(b) (2006). 20 If every claim limitation
recited was disclosed in a single prior art reference (i.e., publications showing that the
technology was known before the instant application) more than a year before the applicant filed
the application, the application will be rejected. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir.
1997); In re Spada, 911 F.2d 705, 708 (Fed.Cir. 1990).
20
Section 102 was amended by the Leahy-Smith America Invents Act, Pub.L. 112-29, Sec. 3, 125 Stat. 284 (Sept.
16, 2011 ). But, the old version still applies to this case, since the patent application was filed well before the
amendment's effective date. See id. Sec. 35
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d. Obviousness rejections
In case 09-1872, the Court is considering six claims in the '639 application for which Mr.
Hyatt challenges their obviousness rejections. For two of the claims, Claims 89 and 104, he
challenges the rejection on two independent grounds. A patent application will be rejected for
obviousness where "the differences between the subject matter sought to be patented and the
prior art are such that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said subject matter
pertains." 35 U.S.C. § 103(a) (2006). Obviousness is a legal conclusion underpinned by "factual
questions relating to the scope and content of the prior art, the differences between the prior art
and the claimed invention, the level of ordinary skill in the art, and any relevant secondary
considerations such as commercial success, long-felt need, and the failure of others."21
PharmaStem Theapeutics, Inc. v. ViaCell, Inc., 419 F.3d 1342, 1359 (Fed. Cir. 2005).
To render a claimed invention obvious, the prior art must allow or enable one skilled in
the art to create the claimed invention. See In re Kumar, 418 F.3d 1361, 1368 (Fed. Cir. 2005)
(citing Motorola, Inc. v. Interdigital Tech. Corp., 121 F.3d 1461, 1471 (Fed. Cir. 1997)); cf KSR
Int'! v. Teleflex Inc., 550 U.S. 398 (2007) ("If [an obvious combination of elements] leads to the
anticipated success, it is likely the product not of innovation but of ordinary skill and common
sense."). The prior art itself need not be enabled, since even "a non-enabling reference may
qualify as prior art for the purpose of determining obviousness, and even an inoperative device is
prior art for all that it teaches." ABT Sys. LLC v. Emerson Elec. Co., 797 F.3d 1350, 1360 n. 2
21
Referred to as the Graham factors, these considerations are derived from the Supreme Court's decision in Graham
v. John Deere Co., 383 U.S. 1, 17-18, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). It is the rule in the Federal Circuit that
district courts evaluating a claim of obviousness engage in the inquiry outlined in Graham. Ruiz v. A.B. Chance Co.,
234 F.3d 654, 662--63 (Fed.Cir.2000).
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(Fed. Cir. 2015) (internal punctuation omitted) (internal quotation marks omitted) (quoting
Symbol Tech., Inc. v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991) and Beckman
Instruments, Inc. v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989)).
III. Analysis
Before reaching the claims themselves, the Court must determine the characteristics of
one of ordinary skill in the relevant arts, whose point(s) of view the Court must adopt in
reviewing the claims in each of these applications. Two of the applications, the '211 application
and the '398 application, have the same lineage and a common ancestor application making their
claim priority date October 1984. The '639 application has a slightly newer origin, with a claim
priority date of December 1988.
The Court finds that an ordinary artisan in 1984 attempting to practice the technology the
700-family specification purports to teach in the '211 and '398 applications, would have a
master's degree in electrical engineering or closely related field, and three to five years'
experience in digital circuit design. The ordinary artisan in 1984 attempting to practice the
technology taught in the 600-family specification as applied in the '639 application would have a
master's degree in electrical engineering or a related field, and would have three to five years of
experience in designing logic and circuits.
a. Claims Rejected by PTO for Lack of Written Description
To satisfy the written description requirement under § 112, one must: (1) "describe the
manner and process of making and using the invention so as to enable a person of skill in the art
to make and use the full scope of the invention without undue experimentation" and, (2) "describe
the invention sufficiently to convey to a person of skill in the art that the patentee had possession
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of the claimed invention at the time of the application, i.e., that the patentee invented what is
claimed." LizardTech, 424 F.3d at 1344-45. This determination is one of fact. GlaxoSmithKline,
744 F.3d at 729. With certain exceptions, Mr. Hite's expert testimony illuminated the necessary
facts supporting a finding of written description on most of the still-disputed claims for which Mr.
Hyatt presented new evidence.
In determining de novo the patentability of claims for which new evidence has been
presented, determinations of the Board are not accorded deference, nor are grounds of rejection
identified in relevant Office Actions evidence of the matters asserted therein, though the Court
has discretion to consider the earlier proceedings and findings when weighing the new evidence.
See Kappas, 566 U.S. at 445. Thus, the key inquiry for the Court with respect to written
description support is whether it exists and whether it could have been discerned by a reasonable
artisan, not whether the examiner or Board discovers it. Here, those rejections serve as the
backbone of PTO's defense in these cases, since PTO has not asserted any additional grounds of
rejection since litigation commenced, as Troy suggests they could have. See 758 F.3d 1322.
In each of the three cases at bar, PTO cites to Purdue Pharma L.P.' s metaphor that "one
cannot disclose a forest in the original application, and then later pick a tree out of the forest and
say [']here is my invention.[']" ECF No. 228 at 68; 09-1864 ECF No. 227 at 96; 09-1872 ECF
No. 220 at 69, quoting 230 F.3d at 1326-27 (citing In re Ruschig, 379 F.2d 990 at 994-95 (CCPA
1967). This Court, however, is mindful of the context of Purdue Pharma and its limited
applicability with respect to most of the challenges at issue in these cases. In Perdue Pharma,
certain vague adjectives (i.e., "flat" and "substantially flat") in the specification were found not
to define the specific measurement parameters and concepts Purdue later claimed. The examples
provided in Purdue's application likewise failed to make clear that the later-claimed property of
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the invention (a concentration ratio for a delayed-release opioid) was "an important defining
quality" of the originally filed disclosure. 230 F.3d at 1327.
Although Purdue Pharma is instructive here in the respects for which it is cited infra,
PTO's thematic reliance on the forest and trees metaphor is, for the most part, misplaced in the
present matters. In these cases, PTO largely supports the written description rejections by
appealing (though never explicitly) to a needle-in-a-haystack metaphor. And while it is
understandable as a practical matter that it is difficult for even the best patent examiners to track
several hundred pages of specification, especially as they attempt to apply to it the guidance
contained in a 3,000 page manual, that fact holds little weight in a§ 145 case. The tenet central
to the Supreme Court's holding in Kappas is that additional evidence may exist that assists a
district court in finding, e.g., written description support that, for whatever reason, had not earlier·
been found or deemed adequate. 22
Also common across all three applications is a series of plaintiffs exhibits prepared
specifically for trial depicting graphically Mr. Hyatt's "top-down" design of his inventions. See,
e.g., PTX-910 at 32 (graphical representation of the "top-down" design); PTX-912.005-10
("Figure IA" and associated figures). The PTO argues the Court should give these figures little
to no weight, as neither they, nor their expert Dr. Castleman, saw them prior to Mr. Hyatt's
testimony on the first day of the first merits trial. But evidence such as this, and plaintiffs expert
Mr. Hite' s testimony, is exactly the type of new evidence that is helpful to the Court in a § 145
case.
22
To the extent the Court is fairly characterizing the PTO's metaphorical approach, it is noteworthy that it is not
here looking for a needle in a haystack, but rather some of the hay which, far from being out of place, has always
been there and, according to the inventor, is integral to the haystack itself. The Court's finding written description
support for certain claims in this instance is thus not a moral judgment of any sort as to examiners' or the Board's
diligence - indeed, it took many hours of expert testimony over many weeks of trial for the Court to be able to make
these findings. Rather, the Court's findings rely heavily upon the new evidence presented at trial, in the form of
expert testimony, establishing that certain of Mr. Hyatt's claims have adequate written description support.
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As such, the Court recognizes that it has had the benefit of Mr. Hyatt's and Mr. Rite's
diagrams, figures, and in-court presentation, as it is required to consider under Kappos,
establishing that the descriptive features in question were included in Mr. Hyatt's respective
applications (even without the video contemporaneously documenting and describing features of
his experimental system). What is left for the Court is merely to find whether ordinary artisans
in the 1980s could similarly have discerned the substance of the inventions as Mr. Hyatt has
described and Mr. Hite has laid bare. With some particularized exceptions, the Court finds that
the ordinary artisan could.
Mr. Rite's claim mapping technique very clearly points out where the specification
recites the features appearing in the still-challenged claims. The PTO correctly observes that
neither the examiners of these applications nor the Board had the benefit of a presentation like ·
Mr. Rite's, but that is irrelevant to the merits of the de novo §145 actions. Still, while Mr. Rite's
claim mapping paints a clear picture of Mr. Hyatt's best case for written description support of
his still-challenged claims, it does not carry the day for all the claims before the Court, where
ambiguities or an unreasonably large number of potential permutations of chip sets, for example,
do not satisfy the Court that the specification provides adequate written description support for
those claims.
PTO also objects to the Court's consideration of Mr. Hyatt's video submitted as part of
PTO's former Documents Disclosure Program, arguing it to be irrelevant to these cases. See,
e.g., 09-1864 ECF No. 227 at 105. PTO argues that 37 C.F.R. §1.57 does not allow Disclosure
Documents to be incorporated by reference into patent applications, see, e.g., 09-1872, dkt 220 at
26 n.12 ("The only incorporated material that may be relied upon for purposes of demonstrating
written description are 'a U.S. patent or U.S. patent application publication.' ... [A] Disclosure
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Document is not a U.S. patent application.") (quoting §l.57(d)), and, even ifit did, the program
only permitted documents and photographs to be submitted, and Mr. Hyatt's videotape evidence
is neither.
PTO's reading of§ 1.57(d) in isolation is unpersuasive here, for three reasons. First,
subsection (d)'s definition of "essential material" is too narrow in the present context, where
there is new evidence (i.e., Mr. Hite's testimony and expert report) for the Court to consider.
Second, under subsection (t), an examiner can require copies of any material, essential or not,
that has been incorporated by reference - the video prospectively satisfied any obligation Mr.
Hyatt would have had in that regard. Third, subsection (g) provides for material incorporated by
reference to be attached as a later amendment, which the Court potentially could order be done
here.
The Court understands, however, the sound reasons for PTO's resistance to Mr. Hyatt's
video demonstration of his experimental system in the examination (vs. litigation) context. If,
for example, there was no way to make the video publicly available contemporaneous with any
issued patent, then, by definition, the video could not teach the invention. This is especially true
concerning applications filed before file wrappers were digitized and the PTO's patent database
was available online. Even today, where PTO's patent databases are fully searchable online, 23
this Court is not in any position to order PTO to create a "PatentTube" site to host video content
in connection with patent applications, although the PTO would certainly be free to do so if it so
chose. And, in these matters, merely transcribing the video and ordering the transcript attached
to the patents to be issued would not be very helpful to the public.
23
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The above merely demonstrates one way in which there is a disconnect between the
material Mr. Hyatt presented to examiners that may not have conformed to certain PTO
regulations at the time, and what this Court may consider de novo in determining patentability
under §145. Even assuming PTO properly disregarded the video during examination, that
merely renders the video "new evidence" for the purposes of these actions, and there is no doubt
the video disclosure, at a minimum, tends to prove Hyatt's possession of certain features of the
inventions claimed in the present applications at the time the video was recorded. Because the
video is not part of the specification and cannot be readily included in useful form in an issued
patent, however, it can be given little weight to the inquiry of whether it can be said to have
taught the purported invention(s) to the ordinary artisan at the time the respective applications
were filed. 24
i. Written Description Rejections in 05-2310 (the '211 application)
The '211 specification purportedly recites an improved image processing system and
certain uses for it. In particular, the specification discusses image processing "capable of
geometrically manipulating a highly detailed image in true real time; such as for simultaneous
rotation, translation, expansion, compression 3D perspective, and warping at a 30-times per
second update rate." A93. The manipulated image can be imported "from a video camera or
from a database memory." Id. In the '211 specification, the terms rotation, translation,
24
To be sure, the video evidence at-issue that shows implementation of certain features claimed in Mr. Hyatt's
applications unambiguously shows possession of those inventive features as of the date of the video. Strangely,
although PTO argues that the Court should not consider the video as evidence establishing that Mr. Hyatt possessed
the relevant features of his experimental system as being outside of the specifications, PTO also seems to want to it
against Mr. Hyatt where a feature (e.g., 3D perspective or multiple channels) is absent from the experimental
system, even though PTO has not squarely put enablement before the Court. In any event, although it does not offer
much help with respect to written description, the video nevertheless could, however, reasonably assist in traversing
the anticipation and obviousness rejections at-issue in two of these cases, in that it better shows what the system
actually did, versus what is taught in the other patents.
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expansion, compression, 3D processing, and warping are each described in the context of a flight
simulator application in which an operator uses joysticks to control a virtual airplane. A 116-117
(discussing "flight simulator application"); A 131; A 134; A220 (discussing movement using a
joystick). The user is looking out a window of the airplane cockpit and sees the ground below.
See, e.g., A523 ("The moving map display can be implemented ... as if the display is a special
optical window in the floor of the cockpit."). For example, as the user operates the joystick to
move the simulated airplane higher, the user sees objects shrink to look farther away; as the
simulated airplane turns, objects rotate. Al 16-117; A131 (describing rotation); A134 (describing
shrinking).
The system described in the '211 specification is built upon different technology than
what today is known as graphical user interface (GUI) technology. Mr. Hyatt's technology relies
on having two monitors. A18 (showing separate "interface" and "mainframe"). One is a
terminal that has input devices such as a keyboard or joystick, in which the user inputs
commands, sets up initial conditions, and selects an image to be displayed. A93-94 ("user
interface comprising a computer terminal with keyboard, joysticks, or trackball"). For example,
the terminal may show a menu for setting initial conditions of the system. A625. The other
monitor is a display screen that shows the image. Al08 ("The processed image is scanned out to
[the] display monitor."). Mr. Hyatt built an "experimental system" that "embod[ies] the
invention claimed in the '211 Application." A108; ECF No. 57-4 at 2. The experimental system
includes these two separate devices: an "interface" or "terminal" for inputting commands and a
separate display monitor for output, shown below right. The terminal shows only text, while the
display monitor shows an image but does not accept any direct user input. Mr. Hyatt's current
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claims all include the term "window," in which these "windows" overlay each other and include
interactive features such as menus and icons.
PTO argues all of the still disputed claims must fail because they recite "windows," and,
for some, "menus" and/or "icons." PTO says the term "window" is used in different ways and
not specifically defined in the specification, and, especially when read in conjunction with the
application's use of "menus, cursors, icons, or other computer operator aids," can be read
broadly enough to encompass modem graphical user interfaces with user-interactive windows.
The Court disagrees that the specification and claims can be so broadly read. The evidence at
trial indeed revealed multiple possible meanings of the word "window" across the '211
application's 641-page specification, but each would have been distinctly understood from
context and usage by an ordinary artisan in 1984. Even a layman of moderate sophistication can
recognize the difference between a "window" that is a portion of image memory, for example,
versus that which we call a "window" that is a defined portion of what is displayed on a
computer screen. The two uses are not interchangeable in context. Nor is PTO's argument
furthered by the notion that menus and icons fall into the general category of "operator aids," as
the evidence makes clear the limits of the technology Mr. Hyatt developed in the early 1980s.
Mr. Hyatt's system depended on a separate terminal to receive input and generate the desired
outcome on the display screen; it was not a self-contained personal computing system (though,
as discussed below, the '639 application purports to invent an image memory architecture useful
in such a system). Although phenotypically similar, there is a very basic and readily discemable
difference between icons or menu commands that are, in effect, self-executable (i.e., icons that
represent operations, e.g., .exe files, or menu items that similarly require a mere click of a mouse
to execute a command), versus those that are merely graphical or textual representations of
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images, portions of images, representations or other thumbnails of images, or even certain
options from which a human operator may choose within a program but which require a different
terminal to execute. Even the PTO's expert, Dr. Castleman, noted that not all menu-driven
interfaces are graphical; graphical interfaces use graphics to facilitate the interaction with the
user. See Trial Tr. 159:1-5 (Jan. 18, 2018).
Even so, in and of itself, the method by which an operator initiates a command to execute
a program or procedure (e.g., typing, point-and-click, etc.), though a necessary precursor to the
image processing done within the computer, is not itself fairly characterized as "image
processing" in a computing sense. Said differently, a photographer who uses a software program
to interface with a computer to achieve "post-production processing" of a photograph is only
himself"processing" the image to the extent that he is giving the computer a set of instructions
through which he hopes or expects the computer to render the desired results through its own
processing system. PTO itself effectively made this argument in case 09-1864 regarding Mr.
Hyatt's "searching for a feature" claims in his '398 application, arguing there is a difference
between a human operator searching for a feature on a screen, versus a computer itself
performing a search given certain inputs. See 09-1864 Trial Tr. 31 :25-32:7 (Feb. 12, 2018).
Further, the PTO put on no evidence that the specification contains written description support
for a GUI of the sort it argues the claims could be construed to include.
The looming issue in this case is a question of enablement concerning non-destructive
image overlaying and the requisite multiplexer/demultiplexer (mux/demux) to achieve that
functionality. Mr. Hyatt's experimental system operated at an image refresh rate of 9MHz on a
single-channel system; Dr. Castleman testified that building a high-speed multiplexer device
needed for true video - 30 frames per second, would require far more inventing than Mr. Hyatt's
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application achieves, especially in applications in which each image displayed requires a
separate channel. The mux/demux device used a commonly available 74 LS365 chip, the claims
themselves appear to envision no more than five channels, see, e.g., Trial Tr. 321 :6-11 (Jan. 19,
2018) (concerning Claim 394), and anything above five channels would not have been capable of
the processing necessary to handle the associated data rates. The Court therefore finds that the
'211 application has adequate written description support for up to five channels covering the
helicopter training simulator application, landscape architecture application, moving map display
application, and remotely piloted vehicle application claims for which evidence was produced at
trial.
In light of the above, two hundred, twenty claims remain disputed in the '211 application
being litigated in case 05-231 O; at trial new evidence ·and argument was heard on sixty-seven of
those claims, leaving one hundred, fifty three claims unaddressed in the relevant proceedings in
this matter.
Section 145 cases are usually referred to as "hybrid" actions because those claims for
which new evidence is presented are decided de novo, while claims for which no new evidence is
presented are reviewed with discretion afforded to the agency's decision on a substantial
evidence standard. Hyatt v. Kappas, 625 F .3d at 1336. This Court denied summary judgment in
this case because the Court determined there to be outstanding genuine issues of material fact.
See ECF No. 75. In the case of the written description rejections, whether there is adequate
written description is itself the material fact. See GlaxoSmithKline, 744 F.3d at 729 (written
description is a fact question). The Court has reviewed the Board's rejections of those claims for
which no new evidence was presented at trial, and finds no basis in the administrative record to
come to conclusions contrary to those of the Board. Hyatt's decision not to put on new evidence
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or arguments at trial to assist the Court in analyzing those claims leaves open those same
questions of fact and, in this context, means he has not satisfied his burden as to those claims.
ii. Written Description Rejections in 09-1864 (the '398 application)
Twenty-two claims in the '398 application remain disputed based on prior rejections for
lack of written description support. Three of these are what Mr. Hyatt calls "textured claims;"
the remaining nineteen fall generally under the category of searching images or video, which Mr.
Hyatt at trial further differentiated as "searching for a feature" claims, and "coarse and fine
search" claims, but which earlier were combined into a single category of "coarse and fine
searching for a feature of interest." See 09-1864 ECF No. 71 at 17. The Court will treat the
searching claims together.
1. Textured claims
Claims 117, 138, and 455 are directed to generating processed "video information." For
example, claim 138 from this set of claims recites a system that includes "means for generating a
sequence of frames of geometric transformed video information in response to the sequence of
frames of video information stored in the memory means, in response to the spatial compression
information, and in response to the warped overlaid image information." A4408-4409.
The central issue for these three claims is whether the specification provides support for
the claim requirement of generating processed "video information." In particular, "the parties
have disputed [whether] the specification would teach one skilled in the art the processing of
video images or simply only still images." 09-1864 ECF No. 71 at 4. There is also "a genuine
dispute as to whether one skilled in the art would recognize the specification as teaching the use
of video, as opposed to still image processing." Id. at 18. The PTO argues that processing video
at 30 unique frames per second is much more complex than processing still images, to include
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accounting for redundant pixel data across consecutive frames to make the processing faster and
to save bandwidth, and Dr. Castleman opined a skilled artisan reading the '398 specification in
October 1984 would not have understood Mr. Hyatt to have developed an invention for
processing video at the 30-frames-per-second rate.
At trial, Dr. Castleman did not offer an opinion concerning Claim 117; in other words,
the PTO offered no evidence rebutting the testimony of Messrs. Hyatt and Hite as to that claim.
Because the plaintiffs evidence met his burden, the Court will order a patent to issue as to Claim
117.
Dr. Castleman did, however, opine as to Claims 138 and 455, and, as suggested above,
the central dispute over those claims is whether the 700-family specification discloses the
processing of video, rather than merely still images. Hyatt argues that video is merely a
sequence of frames of images; for its part, the PTO agrees with the basic definition, see 09-1864
ECF No. 227 at 59, but says that processing video nevertheless requires different processing
technology than what Mr. Hyatt is claiming to have invented.
To the extent the PTO relies upon the original title of the '398 application's specification
when filed with its grandfather application in 1984 ("Improved Image Processing Architecture")
(emphasis PTO's) as evidence that Mr. Hyatt's specification does not cover video processing,
see 09-1864 ECF No. 227 at 17, that is about as unpersuasive as citing the title of a statute as
evidence of the substantive law contained therein. The PTO is correct however, that simply
because an input device for the 700-family system is a video camera and the output device is a
monitor capable of displaying video that does not necessarily imply the intermediary processing
system itself is capable of video processing, which poses technical hurdles such as transmission
bandwidth and content redundancy. See id. Nevertheless, the system described in the
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specification describes processing images in "real time" at 3 0 frames per second, see 09-1864
Trial Tr. 618:23---<519:3 (Feb. 15, 2018) (Castleman testimony), i.e., common video frame-rate.
Thus the Court finds there is sufficient written description support for Claims 138 and 455.
2. "Searching for a Feature" claims
Mr. Hyatt classifies twelve of his claims as reciting "searching for a feature." Several of
those are dependent upon challenged independent claims. The parties dispute whether "one
skilled in the art would understand the description of human searching as disclosing the full
range of searching required by the claim[s]." 09-1864 ECF No. 71 at 17-18. In other words, if
the claims at-issue can be read broadly enough to include automated searching not covered in the
specification, they fail for want of written description support.
The parties agree that the specification supports manual searching of an image. The
Court finds that the claims in the '398 application generally reciting searching for a feature can
reasonably be read to encompass automated searching as well as manual searching. The manual
search is certainly the more straightforward operation, wherein a user might use a joystick to pan
or search the image on the display screen. But the 700-family specification's design and
interface, as discussed supra with respect to the '211 application, and infra concerning the
anticipation rejection of Claim 168 of this application, suggests that automated searching is
possible in the system. Mr. Hyatt's arguments concerning Claim 168 reveal that the '398 system
is designed to include textual information concerning features of interest, and that an operator
can select certain displayed features to show (or, Hyatt says, "generate") more information about
them. The system would therefore logically include functionality by which an operator can use
the input terminal to execute a search of image information not already displayed on the screen
that the computer could then retrieve from memory and display. The claims adding the further
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feature of pattern recognition support this reasoning, and also fail accordingly, since one of
ordinary skill in the art in 1984 would have presumed that "pattern recognition" is an automated
feature.
3. Coarse and fine searching claims
Similarly to the "searching for a feature" claims, to the extent that the coarse and fine
searching claims merely connote zooming in and out to locate a feature of an image, as with
using a simple overhead projector on a map to find a tourist attraction in a given city, see 09-
1864 Trial Tr. 13:2-12 (Feb. 12, 2018), there is little doubt that the 700-family specification
supports that capability. However, without naming it as such, Mr. Hyatt testified at trial that he
had, in essence, designed a system capable of imagery intelligence functions, or perhaps even
imagery-defined measurement and signature intelligence (IDM) capabilities. See, e.g., 09-1864
Trial Tr. 239:16-241 :8 (Feb. 13, 2018) (discussing a hypothetical operator of his system,
presumably an intelligence analyst, using his system to help determine the presence of a tank on
a battlefield). Such a capability necessarily implies an automated process by which a computer
compares the features of an object within an image to image information that resides elsewhere
on the system. The Court therefore finds the coarse and fine searching claims able to be read
broadly enough to encompass automated search functions unsupported by the '398 application's
specification.
iii. Written Description Rejections in 09-1872 (the '639 application)
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The '639 application is more directly tied to memory architecture than either the '211 or
'398 applications. The application includes detailed schematics and figures, including details of
the address logic, a timing diagram that purports to show the most important signals in the wired-
up breadboard, and accompanying sample software code. See PTX-901.
With respect to claims 89, 104, and 300, the parties dispute whether the '639
specification describes a system including a television receiver, a disk memory, and a television
display, as is required by the claim language. The Board already determined that the '639
application has adequate written description support in the 600-family specification for a
television receiver receiving television information. See PTX-3.00075-77, 83, 292-93. The
Court finds the present claims similarly benefit from that finding. The evidence also shows that
the experimental system section of the '639 specification describes the system Mr. Hyatt
constructed with a host computer using disk drives and disk memory as a peripheral, and that the
disk memory inherently has an access circuit, which the specification describes as a direct
memory access controller. See Trial Tr. 69:5-18, 70:12-22 (Nov. 14, 2017 AM Session). The
Court thus finds these claims to have adequate written description support.
With respect to claim 151, the parties dispute whether the '639 specification describes a
system including "memory means" and "means for writing buffered information into the
memory means, the memory means storing the buffered information." The plaintiff presented
evidence establishing that Figure 4C of the '639 specification describes the memory means as
memories 222A through B. Trial Tr. 65:1-3 (Nov. 13, 2017 PM Session) (Hyatt) (citing PTX-
3.01335). Expert testimony established that the '639 specification "describes a database
operation where the main database memory implemented on a disk memory and a disk - a
database buffer or cache memory for temporary buffering database information accessed from
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the memory, that would create buffered information being written into, since it's in the buffer."
Trial Tr. 57:22-58:2 (Nov. 14, 2017 PM Session) (citing PTX-3.01851). The Court therefore
finds that the '639 application provides adequate written description support for Claim 151.
At trial, Dr. Castleman did not offer an opinion concerning Claim 214; in other words,
the PTO offered no evidence rebutting the testimony of Messrs. Hyatt and Hite as to that claim.
Because the plaintiffs evidence met his burden, the Court will order a patent to issue as to Claim
214.
The remaining fifty-one claims in this application at-issue for written description fail. The
Court will first account for the disputes in the various groupings of remaining claims, then explain
its reason for the lot of them. With respect to claims 209, 215, 227, 301, and 34425 , the parties
dispute whether the '639 specification' describes a system or process that includes a cache memory
interacting with television information, as is required by the claims. PTO presented evidence that
the '639 specification does not include such a disclosure, and that Mr. Hyatt cannot rely on the
specification's disclosure of "buffer memory" or a "frame buffer" for the "cache memory" claim
elements because a skilled artisan would not have equated those terms with "cache memory."
See, e.g., ECF No. 50, Ex. E at ,r,r 79-82.6 With respect to claim 206, the parties dispute whether
the '639 specification describes a system that uses the claimed cache memory in combination
with transform processing. PTO presented evidence that the disclosure of "buffer memory" or a
"frame buffer" is not the same as the disclosure of "cache memory," see, e.g., id at ,r,r 79-82, and
that the generalized disclosures in the specification that Mr. Hyatt relies on are insufficient to
25
Hyatt has withdrawn his challenge to the rejection of Claim 343, upon which Claim 344 depends, but argues the
Court can substitute the parameters of (challenged) Claim 104, instead. Because the Court finds Claim 344 to lack
adequate written description support, the Court will not here decide whether Troy allows the substation of Claim 104
as the underlying independent basis for the dependent claim, or if Mr. Hyatt is, in the present procedural posture,
tethered to the claim's dependency on Claim 343.
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describe the system of claim 206. See id. at ,r,r 161-163. With respect to claims 249 and 372, the
parties dispute whether the '639 specification describes a system or process that requires a
Fourier processor as well as cache memory. PTO presented evidence that the specification does
not describe a system or process that uses both a Fourier processor and cache memory as
required by claims 249 and 372. See, e.g., id. at ,r,r 196-197, and that Mr. Hyatt's reliance on
other types of processors disclosed in the specification is insufficient to adequately describe
claims that require a Fourier processor or "generating Fourier information." Id. With respect to
claims 253, 364, and 368, the parties dispute whether the '639 specification describes the
systems or processes recited in these claims. PTO argued that Mr. Hyatt may not solely rely on
his prior cache memory arguments, as these claims require different components,
interconnections, and information transfers, see, e.g., id. at ,r,r 198-200, 297- 302, and, in any
event, presented evidence that the disclosure of "buffer memory" or a "frame buffer" is not the
same as the disclosure of "cache memory."
Five further groups of eight claims each relate to specific types of processing. With
respect to claims 220,228,235,242,396,406,416, and 426, the parties dispute whether the '639
specification describes a video processor coupled to cache memory in the manner recited in the
claims. With respect to claims 223,231,238,245,399,409,419, and 429, the parties dispute
whether the '639 specification describes a correlation processor coupled to cache memory in the
manner recited in the claims. With respect to claims 221,229,236, 243,397,407,417, and 427,
the parties dispute whether the '639 specification describes a transform processor coupled to
cache memory in the manner recited in the claims. With respect to claims 222,230,237,244,
398, 408, 418, and 428, the parties dispute whether the '639 specification describes a graphics
processor coupled to cache memory in the manner recited in the claims. With respect to claims
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224,232,239,246,400,410,420, and 430, the parties dispute whether the '639 specification
describes a pattern recognition processor coupled to cache memory in the manner recited in the
claims. For each of these categories, PTO presented evidence that Mr. Hyatt failed to show
written description support for systems or processes including the specific type of processor
coupled to cache memory, as required by the claims.
Dr. Castleman explained that Mr. Hyatt has "called out by example" sixteen different
types of processors, sixteen different types of memory, and seven different memory technologies
in the '639 application. This results in 1,792 possible combinations of processors and memories
if using only one of each, and leaps to over 200,000 possible permutations if adding a second
memory. 09-1872 Trial Tr. 49:11-52:15 (Nov. 15, 2017 P.M. Session). Of this evidence, PTO
admits· that, "whether a skilled artisan would know how to· build each of the claimed systems
may be more closely aligned with the enablement requirement of§ 112, ,r 1 rather than the
written description requirement," but argues that LizardTech's language that the two
requirements "usually rise and fall together" rescue its relevance here. 09-1872 ECF No. 220 at
73 n. 24 (citing 424 F.3d at 1344-45). For his part, the plaintiff obviously strenuously objects to
any notion that enablement might be considered by the Court in this case. See 09-1872 ECF No.
221 at 19-20.
Although the Court cannot speculate as to why the PTO did not properly invoke
enablement grounds for these claims, such evidence concerning these claims does inherently
raise genus/species issues in the context of the written description requirement. The Federal
Circuit in Abb Vie held that, "With the written description of a genus ... merely drawing a fence
around a perceived genus is not a description of the genus. One needs to show that one has truly
invented the genus, i.e., that one has conceived and described sufficient representative species
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encompassing the breadth of the genus." AbbVie, 759 F.3d at 1300 (emphasis in original). Hyatt
argues there is no genus/species issue here, but rather one of alternative embodiments which, he
says, "are a well-accepted method of disclosure." 09-1872 ECF No. 221 at 12. But the cases he
cites for that proposition, Clearstream Wastewater v. Hydro-Action, 206 F.3d 1440 (Fed. Cir.
2000), and Signetch v. Vutek, 174 F.3d 1352 (Fed. Cir. 1999), did not have occasion to consider
anything approaching the scale of Hyatt's disclosure here. "Alternative embodiments" is more
fairly read to mean some finite number of options that mere mortal ordinary artisans can
comprehend and choose between, not thousands of possibilities that vary in composition,
compatibility, and purpose that require someone of Mr. Hyatt's intelligence and expertise to
envision. The number of possible permutations at issue in this case is more accurately described
as a·genus.
Perhaps one of the best cases for Mr. Hyatt concerning what constitutes an adequate
description of a genus is Union Oil Co. of California v. Atlantic Richfield Co., 208 F.3d 989
(Fed. Cir. 2000). There, the Federal Circuit affirmed a district court's finding that claims to
gasoline compositions capable of reducing tailpipe emissions had adequate written description
support, despite the fact that the patent's claims defined the claimed gasoline compositions in
terms of various chemical and physical properties, rather than reciting a recipe of specific
ingredients. There, however, a jury found, and the record supported its finding that:
ordinarily skilled petroleum refiners would immediately appreciate that the

qualitative chemical properties recited in the claims translated to specific,
manifest compositions that would yield those properties. In other words, given the
target properties, anyone having ordinary skill in the art of petroleum refining
would have been able to envision and readily produce a composition having those
characteristics.
Novozymes AIS v. DuPont Nutrition Biosciences APS, 723 F.3d 1336, (Fed. Cir. 2013)
(summarizing Union Oil's reasoning for finding written description support of the claims at-
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issue). But the record in this case is not as strong in the relevant regard, nor is there a jury
finding to which this Court must give deference.
More on-point given this record and posture is Application ofAngstadt, 537 F.2d 498
(C.C.P.A. 1976). There, the claimed invention was using a hexaalkylphosphoramide and a
transition metal salt to catalyze the oxidation of secondary or tertiary alkylaromatic hydrocarbons
to form hydroperoxides. Id. at 503. The applicants did not disclose every catalyst that could
work, as that would necessitate thousands of examples. Instead, they provided 40 working
examples. Id. at 502-03. The Federal Circuit explained that, "[s]ince appellants have supplied
the list of catalysts and have taught how to make and how to use them, we believe that the
experimentation required to determine which catalysts will produce hydroperoxides would not be
undue and certainly would hot 'require ingenuity beyond that to be expected of one of ordinary
skill in the art."' Id. at 503 (quoting Fields v. Conover, 443 F.2d 1386, 1390-91 (C.C.P.A.
1971)). Although Mr. Hyatt intended the disclosure in the '639 application to be illustrative of
other configurations, the examples he does provide do not cover the broad, albeit not unlimited,
breadth of his claims. Though he need not specify the contours of his invention in haec verba,
Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010), Mr. Hyatt did need
to show that he "truly invented the genus, i.e., that [he] has conceived and described sufficient
representative species encompassing the breadth of the genus." AbbVie Deutsch/and GmbH &
Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 1300 (Fed. Cir. 2014). Far from providing the
necessary working examples for these specific applications in the 600-family specification, Mr.
Hyatt used general terms to include, for example, categories of memories, but not the specific
types and combinations necessary to achieve the results he later claimed. Although it is true, as
Mr. Hyatt argues, that the types of processors and memories that Dr. Castleman discusses were
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publicly available and commonly used, without such examples providing further guidance in the
specification concerning compatibility and usefulness of various combinations of processor and
memory types given the vast number of possibilities, Mr. Hyatt has not here met his burden to
overcome the "undue experimentation" element of written description. See also LizardTech, 424
F.3d at 1344-45.
Ultimately, the sufficiency of written description support is a case specific inquiry and
may certainly take into account the predictability of the art, but it also takes into account the size
of the genus and nature of the species described. AbbVie Deutsch/and GmbH & Co., KG v.
Janssen Biotech, Inc., 759 F.3d 1285, 1300 (Fed. Cir. 2014). While in a given case any number
of factors could be relevant, the central inquiry is the same: did the inventor reasonably convey
· to those skilled in the art·that he had possession of the claimed subject matter as of the filing
date. Ariad, at 1351. The Court finds that, for the above fifty-one claims, Mr. Hyatt did not.
b. Claims Subject to PTO Rejections for Anticipation
Six claims in the '398 application (case 09-1864) that were rejected for anticipation under
§ 102 remain in dispute. In its summary judgment opinion, this Court determined that factual
issues of anticipation exists for each of the claims rejected by Chan, Lotspiech and Tescher that
needed to be resolved at trial. See 09-1864 ECF No. 71 at 18-20.
As an initial matter, the PTO suggested that anticipation rejections are based on PTO
findings of fact to which this Court owes deference. See Trial Tr. 32:16-33:3 (09-1864).
Although the agency has not included that suggestion in its proposed findings and conclusions,
the Court feels compelled to note that, to whatever extent the PTO may wish to preserve the
argument, PTO is wrong. In Kappas, the Supreme Court did not distinguish anticipation
rejections from any other matters that might come before a district court in a § 145 action. In
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fact, aside from being the triggering mechanism for a plaintiff to file suit under § 145, and with
the possible exception of certain affirmative defenses that might be available to the PTO under
certain facts, nothing the PTO did or failed to do in the course of examining a § 145 plaintiffs
application carries any inherent weight before the Court. It bears repeating, especially because
the PTO made this argument, without citation, in the last of the three merits trials, that this Court
has discretion over how to weigh prior agency findings concerning claims upon which new
evidence is presented. Kappas, 566 U.S. at 445. Findings concerning anticipation are treated no
differently in this respect than those concerning any other rejection. Further, the PTO's
contention in this regard is nonsensical, since, just as "anticipation is a finding of fact," Trial Tr.
32:21-22 (09-1864), so, too, is written description a factual determination. GlaxoSmithKline,
744 F.3d at 729.
1. Tescher rejections
Claims 120, 121, and 361 were rejected as anticipated by Tesc~er (U.S. Patent No.
4,541,012). A5687-5688. The parties dispute what Tescher discloses. 09-1864 ECF No. 227 at
74. Tescher discloses a video bandwidth reduction system using "interframe block
differencing." A5687. The Examiner found that "Tescher covered 'an input circuit generating a
sequence offrames of data compressed video information." ECF No. 71 at 20 (citing A5044)
(emphasis in original). Hyatt argues, "Tescher only processes and stores fields - not frames - of
video information." See ECF No. 71 at 19 (citing Hyatt SJ Mem. at 45).
The evidence before the Court demonstrates by a preponderance that Tescher teaches a
system of interlaced fields, rather than a progressive-scan frame system. Tescher's usage of
"frame" is as a function of two interlaced fields. To repeat the genotype/phenotype metaphor
used earlier, although the resulting display (phenotype) might look the same to human eyes, the
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processing function used to achieve that result (genotype) is built on different processing
technology. The evidence showed Mr. Hyatt's processing system not to be compatible with
interlaced video display. The Court accordingly finds that Claims 120, 121, and 361 are not
anticipated by Tescher.
For the three remaining claims at-issue for anticipation, Claims 168, 186, and 195, the
parties dispute how to interpret Mr. Hyatt's claims (as opposed to what is taught by the patent
that served as the basis for the anticipation rejection).
Claims 168, 186 and 195 are directed to basic image processing circuits or methods that
compress and decompress image data, without specifying how the compression or
decompression must occur. Claim 168 also requires generating "location information"
representing the location of a feature of interest, and claims 186 and 195 additionally require
rotating or warping the image information. See A4419; A4426; A4428.
11. han rejection
The Board affirmed the examiner's anticipation rejection of claim 168 based on Chan
(U.S. Patent No. 4,520,506). A5677-5679. The Board found that "Chan discloses a method and
digital system for the compression and reconstruction of' cultural' data, including linear, area
and point features, for use in conjunction with a real-time moving map display of terrain data
over which a vehicle, such as an aircraft:, is passing, or a simulation thereof." A5678. The
evidence shows that Chan's system displays moving maps that include "cultural features" on a
fixed scale useful for aerial navigation, for example, to include rivers, mountains, and buildings,
along with the latitude and longitude of the aircraft piloted. See 09-1864 ECF No. 227 at 76. A
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"cultural data selector" allows for the operator to view certain "subset[ s] of the scene memory
cultural data." See 09-1864 Trial Tr. 334:11-19 (Feb. 13, 2018).
Hyatt's Claim 168, on the other hand, recites generating "location information
representing location of a feature of interest," that he says might include global positioning
system coordinates of the feature and other information, presumably to include the name of the
feature, though that was never specified at trial. Cf 09-1864 ECF No. 220 at 139-40. In other
words, Chan's calibrated map shows the proper locations and even contours of geographic or
manmade features of interest to navigators in relation to the direction they are traveling, for
which a navigator may select certain features on the map to learn what they are (e.g., the names
of certain features). Mr. Hyatt's expert testified that he considered "location information" to be
more specific than where a feature is relative to the plane, and its naine. See 09-1864 Trial Tr.
450:9-19 (Feb. 14, 2018).
Even though Mr. Hyatt's claim certainly adds further information to what is displayed
over what Chan teaches, the Court finds Claim 168 to have been anticipated by Chan. "Location
information" and "cultural data" are, in essence, the same thing. They both appear to allow for
the display of information to the pilot information that is already loaded into the map program's
memory; Mr. Hyatt did not put on evidence establishing that the word "generating" as used in
this claim has any substantive meaning beyond "displaying." Chan's system allows a pilot to
know his own coordinates, and displays a scaled map through which a pilot can easily determine
the coordinates of the fixed objects appearing relative to his position. 26
26
The Court notes a tension between Claim 168 in this case and Mr. Hyatt's insistence in 05-2310 that the '211
application, derived from the same specification at-issue in this case, does not claim a graphical user interface.
Because PTO never presented evidence or arguments in this regard in 05-2310, the Court does not make any
findings or conclusions in this regard, but if Mr. Hyatt drafted Claim 168 to encompass functionality whereby a
navigator can select a feature from the displayed moving map, that would seem to be suggestive of a GUI system.
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iii. Lotspietch rejections
The Board affirmed the rejection of claims 186 and 195 based on Lotspiech (U.S. Patent
No. 4,271,476). A5680-5682. Claim 186 is generally directed to a process for compressing
image information, decompressing the compressed image information, and rotating the
decompressed image information. A4426. Claim 195 is similar to claim 186, requiring
"warping" the decompressed image information. A4428. The Board found that Mr. Hyatt failed
to demonstrate that the broadest reasonable construction of the claim term "warping" excludes
rotation, or that the broadest reasonable construction of the term "driving function" excludes
memory addressing. A5681-5682. In his rehearing request, Mr. Hyatt argued that Lotspiech's
use of "rotate the image" does not in fact teach image rotation. A5784-5785. In Mr. Hyatt's
view, Lotspiech never rotates the image·because the image "orientation" remains the same if the
image is scanned in horizontally and then printed out vertically. A5785.
The Court finds that the evidence establishes that the Lotspiech patent provides for
mirroring and reorganizing images, not rotating them as in Mr. Hyatt's claims. The Court has no
trouble finding that Claims 186 and 195 are not anticipated by Lotspietch.
c. Claims Subject to PTO Rejections for Obviousness
Six disputed claims in the '639 application (09-1872) were rejected based on
obviousness. Specifically, PTO contends that claims 86, 89, 98, 104, 300, and 367 are
unpatentable pursuant to 35 U.S.C. § 103 because they would have been obvious in view of U.S.
Patent No. 4,357,624 ("Greenberg") and U.S. Patent No. 4,546,451 ("Bruce"). Three claims,
Claims 89, 104, and 300, were also subject to written description rejections. This particular
combination of grounds for rejection - written description and obviousness - though not unheard
of, is peculiar. In simplistic terms, it is as if the examiner has said, "I don't know what it is
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you're trying to patent, but if it is what I think it is, that's obvious anyway." Or, "I don't think
the applicant possessed this, but it would have been obvious ifhe had." There is inherent tension
in this logic, the notion that something nebulous is simultaneously obvious. If Mr. Hyatt's
memory architecture claims in his '639 application must fail for lack of written description
because of too many possible combinations of processor and memory types, it is difficult if not
impossible to suggest that one of ordinary skill in the art would have thought it obvious to take
the numerous steps necessary to scale the Bruce patent in such a way to make it compatible with
the Greenberg patent. That, arguably, constitutes the sort of experimentation that the written
description requirement guards against.
In any event, evidence at trial established that it would require eighty-four Bruce units to
make them ·compatible with Greenberg's system, requiring over three thousand integrated
circuits and about twenty-five square feet of floor space. 09-1872 Trial Tr. 17:3-21:15 (Nov. 20,
2017). The Court agrees with the plaintiff that it would not have been obvious, for an ordinary
artisan in 1984 to have undertaken such an endeavor to combine the 8-bit system of the
Greenberg reference with the 1-bit system of the Bruce reference, based on the design difficulties
and physical impracticability of doing so. See also PharmaStem Theapeutics, Inc. v. ViaCell,
Inc., 419 F.3d 1342, 1359 (Fed. Cir. 2005) (discussing obviousness as a legal conclusion
underpinned by "factual questions relating to the scope and content of the prior art, the
differences between the prior art and the claimed invention, the level of ordinary skill in the art,
and any relevant secondary considerations such as commercial success, long-felt need, and the
failure of others."). Therefore, to the extent Claims 86, 89, 98, 104, and 367 were rejected for
obviousness because of a supposed compatibility between Greenberg's memory and Bruce's
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update circuit, the Court agrees with Mr. Hyatt that the Greenberg/Bruce combination is not
obvious.
What remains is Claim 300, and whether Greenberg fails to disclose a computer
"coupled" to a disk memory, or a computer generating computer information in response to disk
information. At trial, Dr. Castleman explained that Greenberg's Figure 4 (and the accompanying
description) shows that the system computer 11 O' is coupled to the digital image storage fixed
disc 212 and that system computer 110' generates computer information in response to the
accessed disk information generated by the digital image storage fixed disc 212. See, e.g., ECF
No. 58 at 34-37; ECF No. 50, Ex.Eat ,r,r 378-384. Dr. Castleman testified that "coupled" in this
context did not require a direct connection between the computer and disk memory. 09-1872
Trial Tr. 30:24-31 (Nov. 16, 2017 AM Session). Neither Mr. Hyatt nor Mr. Hite offered a
different definition. The Court therefore rules in favor of PTO concerning Claim 300, and
despite finding earlier that the claim had adequate written description support, rejects that claim
for obviousness.
IV. Conclusion
In accordance with the above analysis,
1) For Mr. Hyatt's '211 application:
a. The defendant will be ordered to Issue a patent covering Claims 131, 134,
139,151,156,159,172,175,194,196,199,202,210,236,250,252,266,
268,271,274,276,282,287,290,298,306,314,316,322,.375,381,385,
390,394,399,405,410,415,420,424,428,434,439,443,449,454,459,
463,467,472,477,482,487,491,496,500,501,502,503,504,505,508,
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509, 510, 511, 512, and 513 in accordance with PTO's standard practice for
issuing granted patents; and
b. Claims 126, 132, 135, 152, 157, 160, 168, 169, 173, 174, 176, 177,.195, 197,
200,211,221,222,235,237,238,251,253,254,255,256,267,269,272,
273,275,277,283,285,288,289,291,299,307,315,317,318,323,329,
331,332,334,335,336,338,340,341,343,344,345,346,348,349,350,
351,352,353,354,355,356,357,358,3~0,361,362,363,364,365,366,
367,369,377,379,380,382,383,384,386,388,389,391,393,395,398,
401,402,403,404,406,408,409,411,413,414,416,417,418,419,421,
423,425,427,430,432,433,435,436,437,438,440,442,445,447,448,
450,452,453,455,457,458,460,461,462,464,466,468,469,470;471,
473,474,475,476,478,480,481,483,484,485,486,488,490,492,494,
495,497,498, and 499 will be denied.
a. The defendant will be ordered to issue a patent covering Claims 117, 120,
121, 138, 186, 195, 361, and 455 in accordance with PTO's standard practice
for issuing granted patents; and
b. Claims 138, 168, 174,195,279,282,285,287,290,291,294,295,298,304,
378, 379, 380,382,437,467,468, and 469 will be denied.
a. The defendant will be ordered to issue a patent covering Claims 86, 89, 98,
104, 151,214, and 367 in accordance with PTO's standard practice for issuing
granted patents; and
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b. Claims 206,209,220,221,222,223,224,227,228,229,230,231,232,235,
236,237,238,239,242,243,244,245,246,249,253,300,301,344,364,
368,372,396,397,398,399,400,406,407,408,409,410,416,417,418,
419,420,426,427,428,429, and 430 will be denied.
Each issued patent shall include the Figures that Mr. Hyatt relied upon at trial as evidence
helping to establish written description support for his claims, and also include a reference to this
Memorandum Opinion. A separate order shall issue in each case.
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)
GILBERT P. HYATT, )
)
)
V. )
)
ANDREI IANCU, )
)
Defendant. )
JUDGMENT AND ORDER
Before the Court is plaintiff Gilbert Hyatt's action brought under 35 U.S.C. § 145
concerning certain claims contained with his patent application 08/457,211 (the '211 application),
that had been disallowed by the United States Patent and Trademark Office. Two hundred twenty
claims in the '211 application remain before the Court, all of which were rejected by PTO for lack
of written description. ECF No. 227 at 1. During a five-day trial that began on December 4, 2017, 1
Mr. Hyatt presented new evidence concerning sixty-seven of those claims. See PTX-912. Upon
consideration of the evidence and arguments presented at trial, the subsequent proposed findings
of fact and conclusions of law filed by both parties and the plaintiff's reply thereto, see ECF Nos.
227, 228, and 231, and the entire record in this case, it is hereby
1
The trial in this case was originally scheduled to run December 4-8, 2017, but was suspended on December 6, 2017
due to a medical emergency. The Court had previously been assigned to sit by designation in the Western District of
Texas beginning January 2, 2018. With the parties' consent and to conserve judicial and the parties' resources, and
consistent with 28 U.S.C. § 14l(b)(l), the Chief Judge of the District Court for the District of Columbia authorized
this trial to resume as a special session in San Antonio, Texas. ECF No. 223. The special session in this case took
place on January 18-19, 2018.
1
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ORDERED that the defendant, Director of the United States Patent and Trademark Office
shall issue a patent in Mr. Hyatt's '211 application at-issue in this case, covering Claims 131, 134,
139, 151, 156, 159, 172, 175, 194, 196,199,202,210,236,250,252,266,268,271,274,276,
282,287,290,298,306,314,316,322,375,381,385,390,394,399,405,410,415,420,424,
428,434,439,443,449,454,459,463,467,472,477,482,487,491,496,500,501,502,503,
504,505, 508, 509,510,511, 512, and 513;
IT IS FURTHER ORDERED THAT the issued patent shall reference the accompanying
Opinion in this case, issued this day, to include noting the limitation on the claims found in section
III(a)(i) of the Opinion; and
IT IS FURTHER ORDERED THAT the remaining claims that are at issue (126, 132, 135,
152, 157, 160, 168, 169, 173, 174, 176, 177, 195,197,200,211,221,222,235,237,238,251,
253,254,255,256,267,269,272,273,275,277,283,285,288,289,291,299,307,315,317,
318,323,329,331,332,334,335,336,338,340,341,343,344,345,346,348,349,350,351,
352,353,354,355,356,357,358,360,361,362,363,364,365,366,367,369,377,379,380,
382,383,384,386,388,389,391,393,395,398,401,402,403,404,406,408,409,411,413,
414,416,417,418,419,421,423,425,427,430,432,433,435,436,437,438,440,442,445,
447,448,450,452,453,455,457,458,460,461,462,464,466,468,469,470,471,473,474,
475, 476, 478, 480, 481, 483, 484, 485, 486, 488, 490, 492, 494, 495, 497, 498, and 499) are
DENIED.
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IT IS FURTHER ORDERED THAT the issued patent shall include the Figures upon which
plaintiff relied at trial as evidence of written description support.
SO ORDERED.
Date: 1 /~ I /J'I ~ c- ;;1-.ldr.

Royce C. Lamberth
3
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)
GILBERT P. HYATT, )
)
Plaintiff, )
V. )
)
ANDREI IANCU, )
)
Defendant. )
JUDGMENT AND ORDER
Before the Court 1s plaintiff Gilbert Hyatt's action brought under 35 U.S.C. § 145
that had been disallowed by the United States Patent and Trademark Office. A total of twenty-
eight claims in the '398 application remain subject to Mr. Hyatt's§ 145 action before this Court:
twenty-two rejected for lack of written description, and six because of anticipation. 1 A five-day
trial began February 12, 2018, 2 during which new evidence was presented on each of the twenty-
eight claims. See PTX-917. Upon consideration of the evidence and arguments presented at trial,
1
Mr. Hyatt has also asked the Court to order patents to issue on '398 application claims for which examiners'
rejections were reversed by the Board, but are not part of the present litigation. See 09-1864 ECF No. 220 at 1. The
Constitution's case or controversy requirement bars the Court from issuing an Order on claims not in dispute before
it. U.S. CONST. ART. III, §2(1).
2
The trial in 09-1864 was originally scheduled to begin on December 11, 2017. Due to a medical emergency on
December 6, the Court vacated trial dates. Further, the Court had previously been assigned to sit by designation in
the Western District of Texas beginning January 2, 2018. With the parties' consent and to conserve judicial and the
parties' resources, and consistent with 28 U.S.C. § 14 l(b)(l), the Chief Judge of the District Court for the District of
Columbia authorized this trial to proceed as a special session in San Antonio, Texas, and trial was rescheduled to
February 12, 2018. See 09-1864 ECF No. 215.
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the subsequent proposed findings of fact and conclusions of law filed by both parties and the
plaintifrs reply thereto, see ECF Nos. 220, 227, and 228, and the entire record in this case, it is
hereby
ORDERED that the defendant, Director of the United States Patent and Trademark Office
shall issue a patent in Mr. Hyatt's '398 application at-issue in this case, covering Claims 117, 120,
121, 138, 186, 195, 361, and 455;
IT IS FURTHER ORDERED THAT the remaining claims that are at issue (122, 126, 138,
168,174,195,279,282,285,287,290,291,294,295,298,299,300,301,302,304,378,379,
380,382,437,439,456,457,458,459,460,461,462,463,467,468, and 469) are DENIED.
Opinion in this case, issued this day, and include the Figures upon which plaintiff relied at trial as
evidence of written description support.
SO ORDERED.
Date: 1(;1/t« ~C-~

Royce C. Lamberth
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)
GILBERTP. HYATT, )
)
Plaintiff, )
V. )
)
ANDREI IANCU, .)
)
Defendant. )
JUDGMENT AND ORDER
Before the Court is plaintiff Gilbert Hyatt's action brought under 35 U.S.C. § 145
that had been disallowed by the United States Patent and Trademark Office. A total of fifty-eight
claims in the '639 application remain subject to Mr. Hyatt's§ 145 action before this Court: fifty-
two rejected for lack of written description, and six because of obviousness. See 09-1872 ECF
No. 197 at 3; 1 09-1872 ECF No. 220 at 1. A five-day trial began November 13, 2017, during
which new evidence was presented on each of the disputed claims. See, e.g., PTX-901; PTX904.
Upon consideration of the evidence and arguments presented at trial, the subsequent proposed
1
Document 197, Mr. Hyatt's pre-trial statement, lists sixty claims, but his challenges to two of those, claims 95 and
215, were withdrawn at trial. See 09-1872 ECF No. 219 at 5. Mr. Hyatt's proposed findings and conclusions list
seventy-two claims on which he wants the Court to order PTO to issue a patent. See 09-1872 ECF No. 219 at I.
This appears to include the non-disputed independent claims upon which several disputed claims are dependent, e.g.,
independent claim 103, upon which claims 220-24 depend. The Constitution's case or controversy requirement bars
the Court from issuing an Order on claims not in dispute before it. U.S. CONST. ART. III, §2(1).
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findings of fact and conclusions of law filed by both parties and the plaintiffs reply thereto, see
ECF Nos. 219,220, and 221, and the entire record in this case, it is hereby
ORDERED that the defendant, Director of the United States Patent and Trademark
Office shall issue a patent in Mr. Hyatt's '639 application at-issue in this case, covering Claims
86, 89, 98, 104,151,214, and 367;
IT IS FURTHER ORDERED THAT the remaining claims that are at issue (206, 209,
220,221,222,223,224,227,228,229,230,231,232,235,236,237,238,239,242,243,244,
245,246,249,253,300,301,344,364,368,372,396,397,398,399,400,406,407,408,409,
410,416,417,418,419,420,426,427,428,429, and 430) are DENIED
Opinion in this case, issued this day, and include the Figures upon which plaintiff relied at trial
as evidence of written description support.
SO ORDERED.
Date: 1(-,, t ft '6 ~C-~

Royce C. Lamberth
Attachment 6
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GILBERT P. HYATT,
Plaintiff, Civil Action No. 05-2310 (RCL)

Civil Action No. 09-1864 (RCL)
v. Civil Action No. 09-1872 (RCL)
JOSEPH MATAL,
Defendant.
£ProposJ':o:.der
Upon consideration of the Mr. Hyatt's unopposed motion to amend the Judgments
(ECF 236 in No. 05-2310; ECF 233 in No. 09-1864; ECF 226 in No. 09-1872), as well as the
Memorandum Opinion (ECF 235 in No. 05-2310; ECF 232 in No. 09-1864; ECF 225 in No.
09-1872) to reflect that all information previously ordered to be part of each issued patent
should be ordered to be part of the prosecution history for each issued patent, and in the
interest of justice, the Court finds that the motion is well-taken. It is hereby
ORDERED that Motion is GRANTED; and it is further
ORDERED that the first sentence of the last paragraph of page 43 of the
Memorandum Opinion (ECF 235 in No. 05-2310; ECF 232 in No. 09-1864; ECF 225 in No.
09-1872) is amended nunc pro tune as follows: "The prosecution history for eEach issued
patent shall include the Figures that Mr. Hyatt relied upon at trial as evidence helping to
establish written description support for his claims, and also include a reference to this
Memorandum Opinion."; and it is further
ORDERED that the second clause on page 2 of the Judgment (ECF 236 in No. 05-
2310) is amended nuncpro tuncas follows: "IT IS FURTHER ORDERED THAT the
prosecution history for the issued patent shall include reference the accompanying Opinion
is this case, issued this day, to include noting the limitation on the claims found in section
III(a)(i) of the Opinion; and"; and it is further
1
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1864) is amended nunc pro tune as follows: "IT IS FURTHER ORDERED THAT the
in this case, issued this day, and include the Figures upon which Plaintiff relied at trial as
evidence of written description support."; and it is further
1872) is amended nunc pro tune as follows: "IT IS FURTHER ORDERED THAT the
in this case, issued this day, and include the Figures upon which Plaintiff relied at trial as
evidence of written description support."
SO ORDERED.
Dated: ·Jbl~Z,f:2018
~. ~
Roye.Lamberth
2
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GILBERT P. HYATT,
Plaintiff,
V. Civil Action No. 09-1864 (RCL)
JOSEPH MATAL,
Defendant.
~er
Upon consideration of the Mr. Hyatt's unopposed motion to correct the Judgment
(ECF 233) and Memorandum Opinion (ECF 232) pursuant to Fed. R. Civ. P. 60(a), and in
the interest of justice, the Court finds that the Judgment (ECF 233) and Memorandum
Opinion ECF 232) contain clerical mistakes with respect to claims 138 and 195. It is hereby
ORDERED that Motion is GRANTED; and it is further
ORDERED that page 2 of Judgment (ECF 233) is amended nunc pro tune as follows:
claims 138 and 195 are hereby deleted from the list of "the remaining claims that are at
issue ... are DENIED."; and it is further
ORDERED that page 42 of the Memorandum Opinion (ECF 232) is amended nunc
pro tune as follows: in Section IV (2) b., with respect to Mr. Hyatt's '398 application, claims
138 and 195 are hereby deleted from the list claims that "will be denied."
SO ORDERED.
Dated: Av'f"-f/- '1. 6;' 2018
~ c-~
~ Lamberth
1
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GILBERT P. HYATT,
Plaintiff,
ANDREI IANCU, Director of the Civil Action No. 09-1872 (RCL)
U.S. Patent and Trademark Office,
Defendant.
Motion to Stay Portions of Judgments Pending Appeal
Defendant Andrei Iancu, Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office (“USPTO”) respectfully moves the
Court under Federal Rule of Civil Procedure 62 for a stay of the portions of the Court’s judgments
requiring the USPTO to issue patents, pending appeal. The Court issued its amended judgments
on August 29, 2018. The judgments ordered—in relevant part—that the USPTO “shall issue a
patent” in Mr. Hyatt’s three applications containing certain claims. The USPTO is filing a notice
of appeal concurrently with this motion,1 and in light of the irreparable harm that the USPTO will
suffer in the absence of a stay, the USPTO respectfully requests a decision by this Court on or
before September 19, 2018, so that the USPTO may have sufficient time to seek a stay from the
1
The Solicitor General has not yet authorized an appeal in these cases. If the Solicitor General
were to decline to take appeals in any of these cases, the USPTO would promptly seek to dismiss
those appeals, and the stay would be dissolved as to those applications.
Also, the filing of a notice of appeal does not divest this Court of jurisdiction to decide a motion
for a stay; indeed, Rule 62(c) specifically provides that the Court may stay an order “[w]hile an
appeal is pending.” See Wright & Miller, Federal Practice and Procedure § 2904 (3d ed. 2002).
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Federal Circuit if the Court denies this motion. Counsel for the USPTO has conferred with counsel
for Mr. Hyatt, and Mr. Hyatt opposes this motion.
BACKGROUND
The Court held trials in each of these three cases brought by Mr. Hyatt pursuant to
35 U.S.C. § 145. In each case, the Court issued a decision and order on August 1, 2018, affirming
the USPTO’s determinations that certain claims of Mr. Hyatt’s patent applications were
unpatentable and reversing the USPTO’s patentability determinations on other claims. In each
case, the Court ordered that the USPTO “shall issue a patent in Mr. Hyatt’s [] application at-issue
in this case,” covering the claims for which the Court reversed the USPTO’s patentability
determinations. Case No. 1:05-cv-2310-RCL, ECF No. 236; Case No. 1:09-cv-1864-RCL, ECF
No. 233; Case No. 1:09-cv-1872-RCL, ECF No. 226. Mr. Hyatt moved to amend the judgments
in each case and moved to correct a typographical error in the judgment in one case, and the Court
granted those motions, entering a new judgment in each of these cases on August 29, 2018. Case
No. 1:05-cv-2310-RCL, ECF No. 239; Case No. 1:09-cv-1864-RCL, ECF Nos. 237, 238; Case
No. 1:09-cv-1872-RCL, ECF No. 229. The language stating that the USPTO “shall issue a patent”
in each order has not changed.
ARGUMENT
Requiring the USPTO to issue patents while an appeal is pending in each case will cause
irreparable harm because, once the USPTO issues a patent, it is unclear how the USPTO could
undo that issuance, should any of the Court’s decisions—either to approve or disapprove particular
claims—be reversed. In light of that procedural problem, a stay pending appeal of the Court’s
orders is appropriate.
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In deciding a motion to stay pending appeal, courts consider four factors: “(1) whether the
stay applicant has made a strong showing that it is likely to succeed on the merits; (2) whether the
applicant will be irreparably injured absent a stay; (3) whether issuance of the stay will
substantially injure the other parties interested in the proceeding; and (4) where the public interest
lies.” Nken v. Holder, 556 U.S. 418, 434 (2009); see also Rose v. Logan, No. 13-cv-3592-RDB,
2014 WL 3616380, at *1-2 (D. Md. July 21, 2014) (collecting cases). “To justify a stay pending
appeal, a movant need not always establish a high probability of success on the merits, as a
particularly strong showing of irreparable injury or some other combination of factors may warrant
a stay.” Mylan Labs., Inc. v. Leavitt, 495 F. Supp. 2d 43, 47 (D.D.C. 2007) (citing Cuomo v. U.S.
Nuclear Regulatory Comm’n, 772 F.2d 972, 974 (D.C. Cir. 1985) (per curium); United States v.
Philip Morris Inc., 314 F.3d 612, 617 (D.C. Cir. 2003)). Ordinarily the movant must first seek
such a stay in the district court before proceeding to the court of appeals. See Fed. R. App. Prod.
8(a)(1), (2).
A. Irreparable Injury
The USPTO believes a stay is warranted based on the significant irreparable harm that will
occur if it is forced to issue a patent before an appeal can be heard. The Federal Circuit has not
previously recognized a mechanism for the USPTO Director to claw back a patent erroneously
issued in analogous circumstances. To require the Director to issue the patent immediately and
without an opportunity for appellate review of this Court’s judgment would therefore cast the
Director, the public, and Mr. Hyatt into uncharted waters.
That is part of the reason why, as the Federal Circuit has explained, a court in a § 145 action
does not have the authority to direct the USPTO to issue a patent. Gould v. Quigg, 822 F.2d 1074,
1079 (Fed. Cir. 1987) (“Turning now to the issue of whether the district court has authority to
direct the issuance of a patent, we conclude it does not.”); see also In re Gould, 673 F.2d 1385,
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1386 (CCPA 1982). A court’s role in a § 145 action is limited to “resolv[ing] questions of
patentability to the extent issues are raised at trial.” Gould v. Quigg, 822 F.2d at 1079; cf.
BlackLight Power, Inc. v. Rogan, 295 F.3d 1269, 1273 (Fed. Cir. 2002) (holding that because the
“object and policy of the patent law require issuance of valid patents,” before issuing a patent, the
USPTO has authority to take even “extraordinary action to withdraw a patent from issue when a
responsible PTO official reasonably believes that the subject matter may be unpatentable and that
the application may have been allowed in error”).
Furthermore, the USPTO Director’s statutory obligations require him to issue a patent only
“if it appears that the applicant is entitled to a patent under the law.” 35 U.S.C. §§ 131, 151(a).
Here, the Director believes that Mr. Hyatt’s applications are not entitled to a patent and has the
right to have the Court’s decisions on that score reviewed by the Federal Circuit. But, if he has to
nevertheless issue the patent before obtaining that review, he will be violating his statutory
obligations.
While the Director has the authority to order an ex parte reexamination—a separate
proceeding from patent examination—to revoke an issued patent, that proceeding is available only
for claim rejections based on prior art, namely obviousness and anticipation. 35 U.S.C. § 303(a).
Because the bulk of the arguments against patentability in these three cases are based not on prior
art but on the written description requirement and prosecution laches (see Case No. 1:05-cv-2310-
RCL, ECF Nos. 233, 235), that option is not available against most of the claims in these cases.
Instead, the USPTO would have to ask the Federal Circuit, if it were to agree with the USPTO’s
positions, to grant the unusual remedy of ordering cancellation of the claims. And even then, the
USPTO’s mechanism for undoing issuance and canceling those claims would be unclear.
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For those reasons, the USPTO will be irreparably harmed by an order requiring it to issue
a patent before it has exhausted its appeal rights.
B. Likelihood of Success on the Merits
The same principle shows in part why the USPTO is likely to succeed on the merits of an
appeal. The Court’s orders require the USPTO to issue a patent. But, in the context of district
court actions under 35 U.S.C. § 145, the Federal Circuit explained, “Turning now to the issue of
whether the district court has authority to direct the issuance of a patent, we conclude it does not.”
Gould v. Quigg, 822 F.2d at 1079. Thus, if the Solicitor General authorizes appeals, the USPTO
intends to argue before the Federal Circuit that this Court’s orders requiring it to issue a patent
violate the Federal Circuit’s substantial body of law on the subject. To the extent that the USPTO
appeals other merits issues, the USPTO is also likely to succeed on the merits of an appeal with
respect to those for the reasons given in the USPTO’s proposed findings of fact and conclusions
of law. See Case No. 05-cv-2310-RCL, ECF No. 228 (filed Mar. 2, 2018); Case No. 09-cv-1864-
RCL, ECF No. 227 (filed Mar. 23, 2018); Case No. 09-cv-1872, ECF No. 220 (filed Mar. 5, 2018).
C. Public Interest
The public interest also significantly favors a stay. If the USPTO has to issue a patent now,
Mr. Hyatt can immediately send demand letters and bring infringement actions, before the USPTO
has an opportunity to exercise its right to an appeal. The USPTO believes any such patent to be
invalid, and “[t]he public interest is not served by the enforcement of allegedly invalid patents or
the extension of monopoly pricing by means of invalid patents.” Abbott Labs. v. Sandoz, Inc., 500
F. Supp. 2d 846, 855 (N.D. Ill. 2007); see Par Pharms., Inc. v. TWI Pharms., Inc., No. CIV. CCB-
11-2466, 2014 WL 3956024, at *5 (D. Md. Aug. 12, 2014) (staying judgment pending appeal).
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D. Injury to Mr. Hyatt
The issuance of a stay will not substantially injure Mr. Hyatt. We recognize that Mr.
Hyatt’s applications have been pending a long time. On the other hand, Mr. Hyatt had two avenues
for review in federal court of the USPTO’s rejections of his claims. He could have taken a district
court action under 35 U.S.C. § 145—which he did—or he could have taken an appeal directly to
the Federal Circuit under 35 U.S.C. § 141. Mr. Hyatt understood that, while a district court action
under section 145 provided him the opportunity to present evidence in court that he chose not to
present to the agency, it came with the drawback that the proceeding takes a longer time. And Mr.
Hyatt understands that a decision from a district court proceeding provides a possible further delay
in the form of an appeal. See, e.g., Hyatt v. USPTO, Case No. 2:14-cv-311-LDG, ECF No. 29 at
4 (D. Nev. Sept. 30, 2014) (“The USPTO notes that, if this matter is transferred to the Eastern
District of Virginia, the decision will ultimately be appealed to the Federal Circuit. As Hyatt has
brought this suit seeking to hasten the agency action, a transfer directly to the Federal Circuit
presents the avenue of least delay. . . . However, the Court will grant Hyatt’s request because, as
plaintiff in this litigation, he could elect to file his suit in any appropriate forum, including the
Eastern District of Virginia, even if that might result in greater delay in obtaining the relief Hyatt
ostensibly seeks.”). Furthermore, any patents from these applications will receive a seventeen-
year term of exclusivity, regardless of when they issue.
Thus, although the USPTO recognizes that a stay means Mr. Hyatt will not have a patent
for as long as the Federal Circuit takes to decide an appeal, the significance of the other factors as
well as Mr. Hyatt’s own choice to take a substantially longer route of review work in favor of
granting a stay.
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CONCLUSION
For these reasons, the USPTO respectfully requests that the Court stay the portions of its
judgments that require the USPTO to issue three patents until the Federal Circuit issues a decision
on the USPTO’s appeal of those orders or the USPTO dismisses those appeals.

JESSIE K. LIU
United States Attorney
D.C. Bar #472845
DANIEL VAN HORN

Chief, Civil Division
D.C. Bar #924092
By: /s/ Molly R. Silfen

JASON T. COHEN
Assistant United States Attorney
MOLLY R. SILFEN
Special Assistant United States Attorney
ME Bar #004465
555 Fourth St., N.W.
Washington, D.C. 20530
Phone: (202) 252-2523
Fax: (202) 252-2599
Email: jason.cohen@usdoj.gov
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GILBERT P. HYATT,
Plaintiff,
ANDREI IANCU, Director of the Civil Action No. 09-1872 (RCL)
U.S. Patent and Trademark Office,
Defendant.
[Proposed] Order
Upon consideration of the USPTO’s Motion to Stay Portions of Judgments Pending
Appeal, and all of the arguments related thereto, for good cause shown, and the entire record
herein, it is hereby ORDERED that the motion is GRANTED.
It is further ORDERED that the portion of order stating that the USPTO “shall issue a
patent” in each of the applications at issue in these cases is stayed, pending the appeal of each of
the cases, until after the issuance of the mandates by the Federal Circuit.
It is SO ORDERED this day of , 2018.
Royce C. Lamberth

Gil Hyatt USPTO Motion To Stay

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Case: 18-2390 Document: 9 Page: 1 Filed: 09/25/2018

2018-2390, -2391, -2392

Time-Sensitive Motion for Stay Pending Appeal

routinely avoids issuing a patent when the underlying application is subject to

ongoing litigation—here, an appeal to this Court. However, the district court

into effect, notwithstanding any appeal, in the absence of a stay.

As discussed below, requiring the USPTO to issue patents while an appeal is

that issuance, should any of the district court’s decisions—either to approve or

disapprove particular claims—be reversed. In light of that procedural problem, a

stay pending appeal is appropriate.1

Publication Suit”); Hyatt Requirement Suit, 146 F. Supp. 3d at 775. Of those

approximately 400 pre-GATT patent applications, the USPTO identified “only 12

distinct specifications.” Hyatt Publication Suit, 797 F.3d at 1377.

Mr. Hyatt’s approximately 400 applications claimed priority to applications

district courts in separate suits have described as “extraordinary.” Hyatt Publication

USPTO. As originally filed, each of Mr. Hyatt’s approximately 400 applications

his web of interconnected applications contained a total of approximately 115,000

This number is unprecedented for any single applicant. Hyatt Requirement

Mr. Hyatt’s “remarkable number of claims”). Furthermore, many of Mr. Hyatt’s

under section 141. 2

3. On August 1, 2018, the district court issued opinions and judgments in

in these particular applications. E.g., id. at 31.

USPTO’s patentability determinations on other claims. Merits Op. 41-43. Most of

court reversed the USPTO’s patentability determinations. Case No. 1:05-cv-2310-

each order did not change.

4. The USPTO filed a notice of appeal in each case on September 12,

limited to “resolv[ing] questions of patentability to the extent issues are raised at

trial.” Gould v. Quigg, 822 F.2d at 1079.

allowed in error.” Id.

That authority is broad because the agency’s authority to withdraw a patent

providing for significant process, a decision by a panel of three administrative patent

agency—rather than a court—has the responsibility to determine whether and when

In re Fisher, 448 F.2d 1406, 1407 (CCPA 1971))).

law and Congress’s statutory commands on the subject.

issued in analogous circumstances. To require the Director to issue the patent

Furthermore, the USPTO Director’s statutory obligations require him to issue

While the Director has the authority to order an ex parte reexamination—a

separate proceeding from patent examination—to revoke an issued patent, that

obviousness and anticipation. 35 U.S.C. § 303(a). Because the bulk of the

In the district court, Mr. Hyatt pointed to a patentee’s ability to voluntarily

surrender an issued patent in a reissue proceeding under 35 U.S.C. § 251 as a way

patentee’s ability to voluntarily disclaim an issued patent claim under 35 U.S.C.

has a chance to review those patentability questions.

has exhausted its appeal rights will cause irreparable harm.

judgment pending appeal).

D. Injury to Mr. Hyatt

seek a stay pending appeal to avoid immediate issuance of any patent.

exclusivity, regardless of when they issue. Laches Op. 11-12.

route of review work in favor of granting a stay.

USPTO dismisses those appeals.

Dated: September 25, 2018 Respectfully submitted,

/s/ Molly R. Silfen

USPTO Office of the Solicitor

Attorneys for the Director of the USPTO

contains 3,255 words as measured by the word-processing software used to prepare

Dated: September 25, 2018 Respectfully submitted,

/s/ Molly R. Silfen

CM/ECF filing system, which constitutes service, pursuant to Fed. R. App. P.

25(c)(2) and Fed. Cir. R. 25(e)(1).

/s/ Molly R. Silfen

Index of Attachments to Time-Sensitive

Judgment and Order,

Judgment and Order,