Challenging PTO Decisions in District Court: Federal Circuit Affirms Exclusion of Enablement Evidence that “Should Have” Been Raised During Prosecution

Hyatt v. Doll (Fed. Cir. 2009) 07-1066.pdf

Gil Hyatt is a prolific inventor who has spent much of his time over the past thirty years challenging the bounds of USPTO practice. This August 11, 2009 opinion marks the seventeenth Federal Circuit decision focusing on Hyatt’s patent rights in addition to the 2003 Supreme Court decision Franchise Tax Bd. of California v. Hyatt.

This Case: During prosecution, the examiner rejected each of Hyatt’s 117 computer memory architecture claims based on anticipation, obviousness, enablement, double patenting, and written description. Hyatt appealed (pro se) to the BPAI who reversed the bulk of the rejections, but affirming only the written description and enablement rejections associated with 79 claims. Hyatt then took his case to Federal Court by filing a civil action in DC District Court grounded in 35 U.S.C. 145.

At the district court, Hyatt submitted a new declaration offering additional evidence of enablement and written description. However, the district court excluded that inventor-declaration from evidence based on Hyatt’s “negligence” in failing to previously submit the information to the PTO.

On appeal, the Federal Circuit affirmed the exclusion of evidence – holding that the district court may properly exclude evidence that Hyatt should have produced to the PTO. (Chief Judge Michel as author joined by Judge Dyk)

Hyatt was obligated to respond to the examiner’s written description rejection by In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996), by explaining where in the specification support for each of these limitations could be found. . . . The Board noted, “It is far easier for appellant to describe where the limitation he wrote is disclosed than for the Office to prove that the limitation is not disclosed.” . . . Hyatt, however, refused to cooperate, even though he necessarily possessed the information the examiner sought by the time he filed his application.   

On these facts, the district court’s exclusion of Hyatt’s new evidence must be affirmed. . . . [I]t is clear from the record that Hyatt willfully refused to provide evidence in his possession in response to a valid action by the examiner. Such a refusal to provide evidence which one possessed was grounds in Barrett to exclude the withheld evidence. Similarly, we hold that in light of Hyatt’s willful non-cooperation here, the district court did not abuse its discretion by excluding the Hyatt declaration.

Judge Moore penned a vigorous dissent in support of the patent applicant’s right to a full civil action including the right to submit additional evidence when challenging a PTO decision.

The majority takes away this patent applicant’s fundamental right to a “civil action to obtain [a] patent” as granted by Congress in 35 U.S.C. § 145. Today the majority decides that a patent applicant may not introduce the inventor’s declaration in a § 145 proceeding before the district court because the inventor had an “affirmative duty” or “obligation” to disclose this evidence to the PTO. His failure to fulfill his affirmative duty, by not disclosing evidence he could have disclosed to the PTO, results in such evidence being excluded from the district court § 145 proceeding. The district court made no fact findings indicating willful withholding or intentional suppression; in fact, the district court did not even conclude that Mr. Hyatt’s conduct amounted to gross negligence, but rather excluded the evidence under a negligence “could have” standard. Nor did the PTO even argue, at any stage of these proceedings, that Mr. Hyatt’s conduct in this case was willful or intentional. Nonetheless, the majority concludes that the applicant “owed,” the PTO all evidence he possesses that is responsive to a rejection and that failure to fulfill this newly created “affirmative duty” amounts to willful withholding as a matter of law. There are only two possible ways to interpret the majority’s willful withholding determination. Either the majority is engaging in appellate fact finding or it is determining that breach of its newly created affirmative duty is willful withholding as a matter of law.

. . .

Congress granted patent applicants the right to a civil action in the district court distinct from their right of appeal. It is our obligation to protect the distinction Congress codified in § 145, not to reweigh the virtues of that decision. The § 145 proceeding is a civil action and ought to be governed by the same Federal Rules of Evidence that govern other civil actions. Patent cases do not need, nor should they have, special rules of evidence.

. . .

The statute itself distinguishes the appeal that may be brought pursuant to 35 U.S.C. § 141 because a § 145 action is not an appeal; it is a “civil action.” The statute obligates the district court to adjudicate the facts in this civil action. Because the statute affords no limitations on the type of evidence that ought to be admissible in a civil action brought under § 145, the standard Federal Rules of Evidence that govern all civil actions ought to govern. The legislative histories of § 145 and its predecessor statute, section 4915 of the Revised Statutes, repeatedly and without contradiction indicate that the intent of Congress was to permit a patent applicant to bring a new suit built upon a new record. . . . Congress intended that the district court in a § 145 action have everything that a court would have in an infringement suit. Under this standard, Congress certainly intended for an inventor, such as Mr. Hyatt, to be permitted to introduce his own declaration in a § 145 action.

. . .

The majority holds that by failing to offer his testimony to the PTO, Hyatt has failed to satisfy “an affirmative and specific duty.” Maj. Op. at 2. In this way, this new affirmative duty for prosecution seems to resemble inequitable conduct, though here the applicant is penalized regardless of their intent. . . . With all due respect to the majority, I do not believe a new “affirmative duty” to disclose is warranted, nor do I believe Hyatt was “required by law” or “obligated” to provide his declaration to the PTO. While Mr. Hyatt may have failed to overcome the rejections or to convince the Board based upon his submissions to the PTO, he did not fail to fulfill an “obligation” or “affirmative duty” as the majority alleges.   

. . .

In this case, the district court found that Mr. Hyatt’s failure to proffer his

declaration to the PTO was merely negligent. . . . I find troubling the majority’s characterizations of Mr. Hyatt. See, e.g., Maj. Op. at 51 (Mr. “Hyatt purposefully kept [the Board] in the dark”); id. (his “blatant non-cooperation”); id. at 50 (Mr. “Hyatt willfully refused to provide evidence in his possession”); id. (Hyatt “refused to cooperate”); id. (“Hyatt’s willful non-cooperation”); id. at 55 (“Hyatt willfully refused”); id. at 49 (providing his declaration “should have been simple for him”); id. at 55 (that Hyatt’s failure “to perform a simple task that it was his burden to perform is inexcusable”); id. at 54 (“Hyatt’s perverse unhelpfulness”). None of this appears in the district court proceedings, the PTO proceedings, or the record— these fact findings ought to be left to the district court which is in the best position to weigh the contradictory evidence.

. . .

Contrary to the appellate finding of willful withholding, the record contains ample evidence of a lack of willful withholding. Here, the examiner rejected all of Mr. Hyatt’s 117 claims for lack of written description, failure to enable, obviousness-type double patenting (over 8 separate references), and Schneller-type double patenting (over the same 8 references). The examiner also rejected 9 claims as anticipated (Hill reference) and 7 as obvious (over a combination of three references). Technically, Mr. Hyatt was appealing 45 separate issues totaling 2546 separate rejections of his 117 claims to the Board. He wrote a 129-page appeal brief addressing all of these different rejections. And, to be clear, the Board reversed all the examiner’s rejections for obviousness, anticipation, obviousness-type double patenting, Schneller-type double patenting, and many of the written description and enablement rejections. With regard to the written description rejections in particular, the Board reversed the rejections of 38 claims and sustained the rejections of 79 claims. Mr. Hyatt prevailed on 92% of all the examiner’s rejections at the Board level. Despite Mr. Hyatt’s success, the majority declares Mr. Hyatt’s response to be “completely and wholly inadequate” and Mr. Hyatt to have been perversely unhelpful. Maj. Op. at 55, 56.

. . .

Although Mr. Hyatt may have failed to overcome all of the written description rejections based upon his submissions to the PTO, he did not fail to fulfill an “obligation” or “affirmative duty,” and he certainly was not “perversely unhelpful” as the majority alleges. . . I believe the court is wrong to hold that breach of the newly created affirmative duty, i.e., not producing evidence to the PTO, is willful withholding as a matter of law.

. . .

In hindsight, perhaps Mr. Hyatt should have submitted his declaration or that of any other expert earlier in the prosecution process. But hindsight is misleadingly acute. Declarations and expert reports are time consuming and expensive to prepare. It is hardly reasonable or even desirable to require patent applicants to put massive declarations into the record at an early stage of prosecution, weighing the cost to both the applicant and the PTO. See generally Mark A. Lemley, Rational Ignorance at the Patent Office, 95 Nw. U.L. Rev. 1495 (2003) (arguing that it would be inefficient for the PTO to overinvest in examination because so few patents are enforced). In this case, for example, the examiner rejected the claims on many different bases (double patenting on 8 different references, obviousness, anticipation, enablement, written description, etc.), totaling 2546 separate rejections. The Board overturned nearly all of them. It is easy with the benefit of hindsight to say Mr. Hyatt should have introduced more evidence on written description to the Board. But Mr. Hyatt was not facing merely a written description rejection, he was facing 2546 separate rejections on many, many different bases. The majority implausibly asserts that 2546 separate rejections is “proportional to Hyatt’s prosecution of an application containing 117 pending claims spanning 79 pages.” Maj. Op. at 56 n.35. An average of 21 rejections per claim is hardly proportional. Mr. Hyatt was forced to appeal 45 independent issues to the Board when the average is two. Dennis D. Crouch, Understanding the Role of the Board of Patent Appeals in Ex Parte Appeals, 4, available at http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1423922. Despite this challenge, Mr. Hyatt was largely successful on appeal. Further, the length of Mr. Hyatt’s application suggests that his efforts to pinpoint pages containing certain terms was helpful and in good faith. Mr. Hyatt’s response may have been especially valuable in the time before searchable electronic applications.

To say that Mr. Hyatt had an affirmative duty to introduce all evidence to the Board or that he “owed” (Maj. Op. at 56) all the evidence he possessed is to put an enormous and undesirable burden on the patentee, one that will foreclose patent protection for many small inventors. Congress foresaw exactly this problem and ameliorated it with § 145 by providing applicants a way to initiate a civil action and introduce new evidence after Board proceedings when the issues are much more succinct and consolidated. This is illustrated perfectly here, where the applicant was contending with 2546 rejections on many different bases before the Board. After the Board overturned nearly all of them, only a small number of rejections—based on written description/enablement—were maintained. Hence at the district court the applicant could proffer much more extensive evidence because the universe of issues was greatly narrowed. This is the sensible approach Congress enacted. The statute even places the cost of the proceeding on the party better positioned to know the value of the application—the applicant. The majority’s new exclusionary rule based upon its new affirmative duty upsets this balance.

Notes: I expect that Hyatt will ask for reconsideration and will then push for Supreme Court review.

43 thoughts on “Challenging PTO Decisions in District Court: Federal Circuit Affirms Exclusion of Enablement Evidence that “Should Have” Been Raised During Prosecution

  1. After reading Dennis’s note about the deletion of certain comments, I will try to be very careful with this post. I have never worked on a Gil Hyatt case. However, I did work in an art unit where others did work on Gil Hyatt cases.

    Gil Hyatt is a prolific patent applicant.
    Gil Hyatt is not a prolific inventor.

    I am not sure if the specifications for any of his many many cases are publicly available. If they are, I urge you to look at them. It will become clear to you that Mr. Hyatt had a strategy. And his strategy was not to invent things and then file for patent protection on them.

    I will say no more.

  2. Steve S: “Did anyone suggest that Judge Michel’s opinion a strong theme of equity?”

    See my Aug 12, 2009 02:31 PM comment.

  3. Did anyone suggest that Judge Michel’s opinion a strong theme of equity? Maybe this was in a comment which Dennis deleted. Unlike Judge Moore, Judge Michel has seen a lot of Gil Hyatt over the years. The majority opinion does seem to have some factual determination about the applicant’s ability and motives, but it seems well-grounded on the judge’s own considerable experience with this very unusual applicant.

    Ultimately, the central issue is largely academic. Maybe this is why (former professor) Judge Moore wrote so well on it. The debate about this decision could be made also about the CAFC opinion in the Lemelson case which created the doctrine of prosecution history laches. It applies very rarely today, and as Judge Newman noted in the Lemelson decision, will be less applicable as time moves on.

  4. “Went off the deep end”

    Mooney, you need to swim toward the shore just to get to the “deep end.”

    And don’t think you are some kind of vanguard. 99% of everyone around here thinks you are an annoying pr1ck who doesn’t know spit about patent law. And if you ever put forth anything more than this or that is “crap.” You might actually become a puppet worth listening to.

    But I doubt that will ever happen.

  5. Line numbers specific to each page. Without em, not proper. Look MM, it isn’t an exact science. If you give reasonable notice of where you feel support comes from then fine, we’ll give you the benefit of the doubt. If it is nowhere near reasonable then you probably just jumped the line into unhelpful. And that unhelpfulness is “perverse” because one would expect such help to be helpful, when in fact it turned out not to be.

    You may as well ask me where the line between un/obvious is. There is an inquiry to be made. In this case, you ask “was this helpful”?

  6. So, following up with next logical (but admittedly silly) question: what about “In the specification, e.g., page 2, line 1 through page 245, line 65″?

    There’s your line numbers. Proper?

  7. 6, regarding your 12:13 post, I was asking you a question. Would you consider a response of the sort I mentioned (“In the specification, e.g., pages 2-245.”) a “proper response” to your request to show support for a claim? Assume the specification is 250 pages long.

    The point is: where does “proper” end and and “perversely unhelpful” begin?

  8. “The Court decries this as “willful,” “perverse unhelfulness,” “purposely kept in the dark,” and the like.”

    But it’s not “sleazy”. Don’t forget that, whatever you do. For the love of God, man, don’t ever forget it.

  9. “antagonizing real patent attorneys”

    Because “real” patent attorneys think like you, Blimpy. Sure they do. Every one of them.

    Seriously, I liked you better when you were Caveman. Until you went off the deep end, you were sorta funny.

  10. Hyatt v. Boone (CAFC 1998) was an interference case. It dealt with new matter introduced by claim amendment provoking interference. The amendment did not have support in the earliest priority document, so Mr. Hyatt lost the interference. 35 USC 145 had no bearing in that case, but it does have the 112 1st issue in common.

  11. “don’t make a career out of antagonizing the system”

    Instead, you can make a career out of antagonizing real patent attorneys over here at PatentlyO like Mooney/BigGuy/Buford T. Justice/et al.

    Which is sooo much better.

  12. “Moore is right.” 6 has spoken…

    Now I know for sure that Moore is off track.

    The fact is that the CAFC affirmed the district courts exclusion of additional evidence. More has a burr because she claims that there was no evidence of negligence (why is that relevant – this ain’t a torts case). Plain and simple (and even, arguably, as a matter of law under affirmative statutory duties, which the CAFC can always rule on de novo) Gilbert should have brought the evidence when it was timely during prosecution. There is ample precedent for excluding matter that is not timely brought.

    Moore seems to be confused.

  13. The striking thing? How much Hyatt’s submission to the Board looks like Office Actions from several examiners – a high-level “match up a few random words here and there, but ignore the entire phrase,” give a laundry list of 10 or more paragraphs in the reference that might correspond but do not use the same words and have no interrelationship to each other…

    The Court decries this as “willful,” “perverse unhelfulness,” “purposely kept in the dark,” and the like. Do the same characterizations apply to examiners?

    When I have petitioned examiner refusal to comply with 37 C.F.R. § 1.104 requirements for disclosure, for premature finality arising out of deliberately obstructive examination, or for entry of affidavit on appeal to overcome the examiner’s view first expressed in a post-final advisory action, get mad at ME for asking the PTO to enforce its own rules, not at the examiner who engages in this kind of deliberate obstruction and refusal to follow those rules, merely to drive RCE’s and counts.

    So Mr. Toupin, Mr. Chen, Mr. Hirshfeld (acting Dep Commr for Exam Policy), Mr. Doll – is sauce for the goose also sauce for the gander? Or is this another PTO double standard?

  14. “does this mean that applicants must now respond to every rejection with all guns blazing?”

    No, I think it means don’t be a Hyatt and make a career out of antagonizing the system and you will never face this scenario.

  15. Not sure what to make of this. Most practitioners, when faced with a WD rejection, will simply point out the places in the spec where there’s support, so the likelihood of this fact pattern repeating is small. But the decision enables the DCDC to cut off review by saying that the applicant “could have” raised a particular argument below and didn’t, and that’s scary – does this mean that applicants must now respond to every rejection with all guns blazing? I’m no fan of Moore, but I think she’s spot on with this one.

  16. In any case, the issue in this case is the exclusion of the new evidence before the DC, now it isn’t even about whether or not he had support in his spec or not. And it apparently never will be about that ever again until he gets to submit some new evidence.

  17. “So if the Examiner says “Where in the original application as filed can support be found” I can reply “In the specification, e.g., pages 2-245.” That’s a proper response? Even when it isn’t there?”

    Try “In the spec, pg. 2, lines 1-4″. Perhaps you didn’t notice “line numbers” in my statement?

    “Even when it isn’t there?”

    When it isn’t there then I simply repeat the rejection, and say I looked on page 2, lines 1-4, and maybe put a little analysis in. I still don’t hold you non-responsive.

    I agree that there should be more done to ensure proper responses, in fact I’ve been calling for it for years, but this case is not the proper way to do that.

  18. “MM, I disagree, the response is at least proper when you’ve submitted the minimum I state. That doesn’t mean that you will overcome the rejection.”

    So if the Examiner says “Where in the original application as filed can support be found” I can reply “In the specification, e.g., pages 2-245.” That’s a proper response? Even when it isn’t there?

    It would seem to me at some point there are other rules that govern applicant behavior that would kick in here. All this strikes me as a gigantic waste of a court’s time. Now the Supreme’s are supposed to weigh in? Because Mr. Deep Pockets has nothing better to do?

    Sad.

  19. Where did either the District Court or Judge Moore find and point out the alleged 112 spec support for all those claim elements? If not, what is all the fuss about here?
    How does one ever proove an absence of something other than by saying that one has looked and can’t find any, as the examiner did? Why is that not sufficient for a prima facie case which then shifts the burden to the applicant to substantively respond?

  20. “The sole purpose for choosing that path is to introduce new evidence in an action de novo.”

    Not really, maybe the court would agree with your arguments where the Board did not.

    MM, I disagree, the response is at least proper when you’ve submitted the minimum I state. That doesn’t mean that you will overcome the rejection. In order to overcome the rejection the response must be proper, and it must be convincing. Until you meet the minimum which I recite, which is merely a paraphrase of the CAFC’s words, it would probably be technically feasible to hold the person nonresponsive since the response was not a proper response. And continue to do so until they submit a proper response or the app goes abandoned. However, we’re not usually such big a holes as to do that.

  21. “In haec, I believe the CAFC was trying to say, (and this went over Moore’s head I believe) that if one wants to properly respond (without amendment or other bs switcharoo) then the response must, at a minimum, include column and line numbers or some such thing like a direct quotation. ”

    No, that’s not the minimum. The “minimum” is that the cited column and line numbers have to actually bear a reasonable relation to what is being requested. The majority’s point is that the so-called Response was *bogus*. Rather than create a loophole that you can drive a truck through, which is what Moore and her admirers here seem to be advocating, the majority took a much more reasonable approach to the situation.

    And let’s face it: they are too kind. I would recommend much more severe sanctions for the sort of behavior they identified in their decision. The terms “frivolous” and “contempt” jump immediately to mind.

  22. I was very lukewarm about Kimberley Moore’s appointment to the bench, but I agree with her dissent. It cuts right to the heart of why a rule 145 action before the district court exists. The sole purpose for choosing that path is to introduce new evidence in an action de novo. If you can’t do that, what good is it? The majority seem to have flown in the face of congressional intent.

  23. In haec, I believe the CAFC was trying to say, (and this went over Moore’s head I believe) that if one wants to properly respond (without amendment or other bs switcharoo) then the response must, at a minimum, include column and line numbers or some such thing like a direct quotation. And them saying this doesn’t rule out presenting additional information like evidence of how the terms in the spec should be construed. You can’t simply generically point it out like this guy pretty much did with his “table”. And I totally agree with them laying the smack down. And it would be totally appropriate if he’d just have appealed straight to them from the board.

    Still, I agree that the situation should be ripe for remedy at the DC. That is, practically literally, the whole point of 145. You don’t like how things are going at the PTO, so you turn to the courts. Fine.

  24. “There is, under Alton, only one acceptable response to a written description rejection: showing the examiner where by column and line number in the specification he may find written description support for each disputed claim limitation.”

    This simply can’t be correct. In addition to showing description, by column and line number, one may also argue, or show by evidence, affidavit, declaration, etc., why one skilled in the art would recognize that the description conveys possession of the claim term. That is, extrinsic evidence and analysis does routinely play a role in overcoming WD rejections. To exclude such evidence, absent willful supression or bad faith, before a district court is absurd.

  25. “Thus the boards conclusion that Alton establishes an affirmative duty was simply wrong.”

    I thought that was the CAFC’s conclusion. But maybe both entities concluded that. In any event, I find it rather chuckle worthy that you point this out. It is as if you are alleging, that perhaps the CAFC mischaracterized what a previous case had held, and now their mischaracterization is supposedly “the law”. That reminds me of a conversation I’ve been having with Noise here of late.

    And your point about what their most persuasive argument is in this case is probably the most helpful thing in this thread. Perhaps you’re right, perhaps that is a convincing argument. Never the less disagree with what that argument results in, and I don’t think that what it leads to really could be what the law 145 was intended for. But, if they are mistaken then congress will no doubt step up and change the law to clarify right fast. Right? Right? Lol. Yeah right.

  26. The majority really appears to be going out of their way to stop de novo review shown by PRESUPPOSING exclusion is proper (p1-46) and the mis-characterization of Hyatt’s actions using incendiary language (that really ramps up after p 49) which the dissent properly dismisses immediately (p.60).

    The first half of the majority is the spontaneous generation portion where the majority literally goes to hyperbolic limits to create something out of nothing. I have no doubt when SCOTUS grants cert all this will be ironed out without presupposing any result.
    But far more interesting is the find-an-apparent-prima-facia-technicality-and-bet-the-farm-on-it section. All the majority’s arguments (especially the pejorative words like willful, negligent, “blatant non-cooperation”) rely on whether the examiner made a prima facia showing lack of adequate description. Even, if HE DID NOT, it would fall far short of “blatant non-cooperation” and would be difficult to discern bereft of an analysis on intent (Moore states it eloquently, p.75).
    Sadly, the harsh words, all appear to come only from the majority, are no where in the record of the district court, which is really a poor indication of courts ability to stay away from “fact-finding” or I guess I should say “name-finding” (p. 75, but less harsh).

    Then there the burden-flip the majority tries for sport:
    *would have been easier Hyatt show limitations (thats not what prosecution is about, its the examiner’s burden)
    *burden of digging through 238 pages onerous, and they didn’t even use the exact language (its examiner’s burden, exact language would be unwise drafting for the POSIA reader)
    *”despite his expertise” (irrelevant if the burden is with the examiner)

    Granted Hyatt probably prosecuted inaptly in many ways. Moore appears closer to the truth.

  27. The majority opinion was poorly presented. Fair and balanced reporting doesn’t require pretending otherwise.

    “The dissent also appears to misapprehend the import of Alton.” “He simply refused to respond as required by Alton”

    Actually, Moore nailed the majority to the wall on this point.

    Alton involves with a case where an applicant *successfully* overcame a 112 rejection. You can conclude from Alton that giving column and line numbers is a winning strategy, but you cannot conclude from Alton that a lesser response would be willfully inadequate. If instead Alton involved an unsuccessful traversal, the case could legitimately set a lower limit for an acceptable response.

    Thus the boards conclusion that Alton establishes an affirmative duty was simply wrong.

    The majoritys’ most persuasive argument (in my opinion) was Congress was obligated to explicitly state that a § 145 action was de novo, but did not do so. I don’t know if this is actually true, but Moore’s opinion didn’t seem to address this point. If the majority is correct, Moore’s presentation of the legislative history is unhelpful.

  28. As a preface, I have to say that I have worked on may of Mr. Hyatt’s cases in the past, but no longer do & haven’t for a few years. And this was not one that I worked on. And before I began working on his cases many years ago, I had no idea who he was & had no preconceptions as to his work. Oh, and I HAVE read the whole decision.

    That background stated, I am severely disappointed with Dennis’ portrayal of the decision dissent, as well as Mr. Hyatt’s reputation and history of practice at the office.

    While I obviously can not discuss specifics of unpublished or patented cases, which his cases are, the characterization portrayed by the majority is reasonably accurate and Dennis’ portrayal as Hyatt “a prolific inventor who has spent much of his time over the past thirty years challenging the bounds of USPTO practice” somewhere between absurd and outright laughable. (G0d, I am agreeing with Mooney! :)

    Dennis further portrays the decision with minimal quotation (2 short paragraphs) or explanation and then proceeds to extensively quote the and then provides some 8 lengthy paragraphs from the dissent.

    One point of significance that was not quoted from the decision was that the majority decided that NONE of Hyatt’s responses were sufficient and they )the Board) decided all the issues _based on their one analysis_. They clearly point this out in response to the dissent and that the issues that they overturned the examiner on was not because of Hyatt’s responses in his briefs or elsewhere (“the Board’s reversals were based solely on its own independent analysis of the claims and written description.”). (Whether the court was correct in doing so or not is a separate issue & I do not know on that. I’ll leave it up to you lawyers.)

    See, for example:

    “Third, we agree with the district court that the Board’s reversal of thirty-eight of the examiner’s written description rejections does not establish Hyatt acted reasonably with regard to the seventy-nine rejections not reversed. See Hyatt II, 2005 WL 5569663, at *6. As the district court correctly observed, the Board’s reversals were based solely on its own independent analysis of the claims and written description. Id. The Board expressly stated that it did not, and could not, rely on anything provided by Hyatt, specifically noting that Table-1 did not provide any helpful information. J.A. 11594, 11600-01. We agree with the assessments of the Board and the district court; neither Table-1 nor its accompanying notes indicate where written description support can be found for any of the claim limitations at issue. The fact that the substituent words of a claim limitation are individually used in the specification does not explain how the specification discloses the claim limitation itself, and Table-1 does not even purport to address all of the claim limitations the examiner identified as lacking written description support. Thus, neither the Board’s laudable efforts to thoroughly analyze the specification even in the absence of assistance from Hyatt, nor the limited information that Hyatt did provide to the Board, indicates that Hyatt provided the PTO with the information it needed to properly assess the patentability of his claims. In fact, if anything, the Board’s consideration of Table-1 demonstrates that Hyatt had the opportunity to properly provide helpful information to the Board but, for reasons we need not identify, did not.”

    This needed to be at least quoted in this post. This effectively shoots down the dissent’s main point that “92%” of the rejections were overcome by Hyatt’s responses.

    Another key quote Dennis left out from the decision:

    “The dissent incorrectly describes our decision as promulgating a “sweeping exclusionary rule.” See Dissent at 2. We have not adopted a “sweeping” or “per se rule.” See id. at 2, 15. We express no opinion as to admissibility of evidence in the multitude of variegated factual scenarios that may arise in the future which the dissent claims are decided today. The dissent also characterizes the majority opinion as standing for something that it does not: that evidence must be excluded simply because it could have been presented to the PTO. See Dissent at 10. Instead, we have merely reached the unremarkable conclusion that it is unreasonable to believe Congress intended to allow a patent applicant in a § 145 action to introduce new evidence with no regard whatsoever as to his conduct before the PTO, and that, specifically, Congress did not intend that evidence owed,34 requested and willfully withheld from the PTO must nevertheless be admitted in a § 145 action.

    The dissent also appears to misapprehend the import of Alton. There is, under Alton, only one acceptable response to a written description rejection: showing the examiner where by column and line number in the specification he may find written description support for each disputed claim limitation.35 Here, not only was Hyatt’s response to the written description rejections completely and wholly inadequate, it was willfully so. He simply refused to respond as required by Alton to the requests of the examiner for citations to the specification, and he clearly did so deliberately, thus impeding the examination the PTO is legally required to conduct.”

    Another minor point. While Hyatt is characterized as a “pro se” and that is technically correct, he has had his reg. # for a very long time as pointed out in the decision (I believe that his # is in the mid-20,000 range).

    Now, while I personally like the decision, I am not arguing the legal correctness or lack thereof of the decision. I am addressing the portrayal of that decision here.

    Dennis, I expect a more “fair and balanced” presentation of the facts from you. Hopefully, you can make things more balanced later.

    thanks,

    LL

  29. “Let’s hope she gets nominated for a circuit judgeship or appellate court based on that skill. That would seem to be the only way the CAFC can get rid of her.”

    Hmmm. And I thought that “CAFC” stood for Court of APPEALS for the Federal CIRCUIT.

  30. Moore is right. Even as much as I would like for Michel et al. to tear uncooperative apps a new one for their outrageous behavior, this is not the way.

  31. “J. Moore reviewed the statute, the legislative history, Zurko, and the APA (as well as the Fed. R. Evidence). This is a classic example of how to draft an authoritative legal opinion re: statutory interpretation.”

    Let’s hope she gets nominated for a circuit judgeship or appellate court based on that skill. That would seem to be the only way the CAFC can get rid of her.

  32. “Between the 2, I’m not sure who has the better of the argument.”

    In which case, maybe just take into account the overall behavior of the applicant during prosecution of this case and “do the right thing.” Which is exactly what happened.

  33. CD, courts look at predecessor statutes and prior practice all of the time when interpreting statutes.

    35 USC 103 was meant to codify the common law of obviousness, so to figure out what Congress was after, it makes sense to see what the pre-1952 precedents said.

    Similarly, section 145 was a new iteration in decades of Congress tinkering with the procedures for a patent applicant to seek relief in the district courts, so it makes sense to look at prior statutes and practice to trace the trajectory and give “a civil action” some context. I don’t see anything wrong with the majority’s approach.

    Between the 2, I’m not sure who has the better of the argument.

    The majority opinion looks more like Judge Dyk’s work than C.J. Michel’s. Given the timing, I wonder if the judges’ votes have changed since the argument.

    This does indeed seem like a decent candidate for cert or en banc. The CAFC forthrightly acknowledges that this is essentially an issue of first impression. Hyatt had excellent counsel who would be able to write the issues up well for further review, but unfortunately Mr. Bass seems to have passed away earlier this year.

  34. If one also looks at case law on the similar, parallel, 35 USC 146 for D.C. review of Board interference decisions, I think you will find that “de novo” review [which words are NOT in either STATUTE], and the case law thereon does not support any or all kinds of new evidence being introduced. But I have not looked lately at Winner International Royalty Corp. v. Ching-Rong Wang 98-1553 – (Jan. 27, 2000 Fed. Cir.), or Fregeau v. Mossinghoff, 776 F2d 1034, 227 USPQ 848 (Fed. Cir. 1985)[which seems to be the earliest CAFC case on "de novo" review by the D.C., and also has a discussion of 35 USC 145 vs. 146]
    It would also seem strange if the Sup. Ct. In re Zurco requirement of APA deference to Board decisions by the CAFC did not also apply to intermediate D.C. decisions?

  35. I am very impressed with Judge Moore’s dissent. The issue here is what is the proper standard for excluding new evidence in a 145 civil action – negligent “could have been submitted” or something more, such as “grossly negligent” or willful.

    The majority did a poor job addressing this issue because they looked at a “hodgepodge” of cases that were not directly on point. (Really, cases from the 1880s!)

    J. Moore reviewed the statute, the legislative history, Zurko, and the APA (as well as the Fed. R. Evidence). This is a classic example of how to draft an authoritative legal opinion re: statutory interpretation.

    I’m not sure who is right here, but Judge Moore wins the award for better legal analysis.

  36. “I have never filed one, but my understanding was that in a 145 district court action, you could bring in all the new evidence you want to. It’s de novo, not de novo kinda’.”

    My understanding is that the BPAI still gets some deference (but I don’t think substantial evidence standard? Certainly at least arbitrary & capricious) from the District Court. There was some interesting commentary following Dickinson v. Zurko on it.

  37. “Seems to me, the majority made an independent factual finding that Hyatt could have submitted the evidence during prosecution but didn’t.”

    Uh, Blimpy…Moore’s point is that the CAFC does not have jurisdiction to be making “independent factual findings”.

    I guess you have just gotten so used to the CAFC ignoring jury verdicts and going on about their merry way in infringement cases that you (and, obviously, Michel) have lost track of this important principle.

    I have never filed one, but my understanding was that in a 145 district court action, you could bring in all the new evidence you want to. It’s de novo, not de novo kinda’. In other words, the district court represents an alternative way to assess an application, not an appeal or additional review.

    Anyone with experience, please correct me if I’m wrong.

  38. Interesting…

    From the opinion:

    “The appeal was argued on April 7, 2008.”

    The three judges of the panel took more than 16 months to issue the decision! I wonder if any of them changed there position.

    This one has the chance of cert being granted because it involves (1) the federal rules of evidence, (2) statutory construction, and (3) administrative law. Lots of juicy issues for the high court.

    Gotta now listen to the oral arguments….

  39. First, any normal experienced practitioner would indeed have responded to such a 112 rejection by pointing to specific examples of claim element support in the specification or drawings, if there were any, not just blowing it off, in a response to the examiner, or at least in the appeal brief.
    Secondly, if this applicant was not Mr. Gilbert Hyatt {whom the Board and CAFC already knows has numerous “submarine” patents and applications with numerous late-claims second only to the late Mr. Lemelson by claiming pendency from very old filing dates], a normal applicant could have filed an RCE or another continuation to properly respond to the subject 112 objections on the record before the losing Board appeal. [That is, I assume that Hyatt could not use an RCE or another continuation for this case without automatically causing an old application of his to turn into a pre-expired or very short term patent. It would fall under the current patent term laws, which run from the earliest claimed application date plus all PTO delays, and not from the issue date. [That law was for the very purpose of no longer rewarding grossly-applicant-delayed applications with submarine patents.]

  40. Wait, so Moore first chastizes the majority because there were no facts on record from the district court associated with willfulness, then emphasizes that a 145 action is not an appeal. Seems to me, the majority made an independent factual finding that Hyatt could have submitted the evidence during prosecution but didn’t. In equity forfeiture of the ability to submit evidence based on witholding it, is a proper standard and is codified into the patent laws in many places. Heck, if they can invalidate a patent based on witholding or suppressing a relevant patent, why not penalize an applicant for witholding evidence of enablement that is not timely brought?

    Moore seems like a loose cannon in this important regard.

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