Hyatt v. USPTO, Case No. 14-1300 (E.D.Va. 2014) [HyattMotiontoDismiss]
Earlier this year, Gilbert Hyatt sued the USPTO for unreasonably delaying examination of 80 of his pending patent applications — many of which have been pending for decades. See Crouch, Three Generations of Poor Examination are Enough. That case has been transferred from Nevada to Virginia but is otherwise still pending. In its most recent motion to dismiss, the USPTO explained its delay in action — noting that Hyatt has 399 pending patent applications that include a total of over 100,000 claims that apparently all have a pre-URAA (1995) filing date. While the USPTO admits that it stayed prosecution of most of Hyatt’s cases from 2002-2012, it started examining them again in 2013. Because of the many overlapping applications held by a single entity, the USPTO has required Hyatt to “streamline” his applications. The USPTO writes in its brief:
What Mr. Hyatt’s Complaint fails to acknowledge is that the 80 pending applications at issue represent roughly one-fifth of 399 applications he has pending before the USPTO, which contain an estimated total of 115,000 claims; that the size, volume, and interconnectedness of these 399 applications have created extraordinary challenges for the USPTO in examining his applications; that, faced with these challenges, the USPTO, last year, commenced a renewed effort to bring order and finality to Mr. Hyatt’s applications by requiring Mr. Hyatt to take certain steps to help organize and streamline his applications; and that, in response to that effort, prosecution is now actively ongoing in Mr. Hyatt’s applications, with Mr. Hyatt amending many of his claims and engaging in an iterative process with the 14 patent examiners who the USPTO has dedicated to working full-time on his applications.
The basic argument in the case is that the USPTO is now working on the applications and that there is therefore no role for the courts to play in ordering the applications to be moved forward.
I agree with the USPTO that 100,000 claims is quite a few, although it is fairly small compared with the more than 7.5 million claims that I estimate were disposed-of in 2013 (either allowed or abandoned). Part of the problem is apparently the number of claims-per-patent-application. The USPTO writes: “almost every one of Mr. Hyatt’s pending applications has one of the largest claim sets that the USPTO has ever encountered in any application.” The USPTO is correct that such large claim sets are rare. From my database, I found that – out of the 200,000+ patents issued thus far in 2014, only six have more than 300 claims. (See. e.g., Patent No 8,694,657).
Under the streamlining procedures outlined above, the USPTO first grouped the applications into 12-families and in now requiring:
- That Hyatt select no more than 600 claims per patent family; and
- That Hyatt identify the earliest claimed priority date for each claim selected.
To move all of this forward, the USPTO has assigned 14 primary examiners to Hyatt’s cases. Based upon prior history – I suspect that number won’t be enough to keep up with Hyatt!