Federal Circuit Gives PTO “OK” to Treat Hyatt as a Special Case

Gilbert Hyatt v. Michelle Lee (Fed. Cir. 2015)

Hyatt is a highly successful patentee with more than 75 issued patents and hundreds of millions of dollars in licensing revenue. He also has over 400 patent applications pending before the USPTO that were all filed more than 20-years ago. Hyatt’s applications represent 80% of the applications still-pending that were originally filed prior to the June 1995 patent term transition. Because these old patent applications were filed under the old regime, if they ever issue they will be given a 17-year patent term extending from the issue date (barring a terminal disclaimer or prosecution laches finding). Many of these applications claim priority to much earlier filed applications – some claiming priority back in to the 1970s and most having a complex set of continuation and continuation-in-part applications.

According to the USPTO, these 400 pending applications have – on average – 300 claims each – resulting in about 120,000 pending claims – roughly the equivalent of 6,000 ordinary-sized applications.

I expect that many of Hyatt’s patent claims would cover chip and display technology that is now ubiquitous. If valid and enforceable then we’re talking billions of dollars in licensing fees. If the USPTO has anything to do about it, that result is not coming anytime soon.

Over the years, the USPTO has developed a number of special procedures for Hyatt applications. In 2013, the USPTO began issuing requirements that Hyatt limit each patent family to <600 claims absent a showing of necessity and also identify the earliest priority date for each chosen claim (along with links to the supporting disclosure).

The USPTO also indicated that it would publicize the family linkage of Hyatt’s (otherwise secret) applications. In particular, the disclosure would occur by placing the requirements in the file histories of all of Hyatt’s pending applications, some of which are public. Apparently, this requirements document includes a number of examples of how Hyatt applications overlap claim scope – relying upon specific claim texts of Hyatt’s otherwise secret applications.

In response, Hyatt filed a complaint in the E.D. Virginia asking the district court to enjoin the USPTO from disclosing information in violation of 35 U.S.C. 122(a) (“applications for patents shall be kept in confidence by the Patent and Trademark Office and no information concerning the same given without authority of the applicant or owner unless necessary to carry out the provisions of an Act of Congress or in such special circumstances as may be determined by the Director”). However, the district court dismissed the case for lack of jurisdiction and – in the alternative – held that the extraordinary nature of Hyatt’s situation created “special circumstances” that allowed for the publication.

Although the statute provides the PTO with seeming authority to determining when to disclose the confidential information (“special circumstances as determined by the director”), the Federal Circuit on appeal here found that the PTO’s power is both “narrow and reviewable.” In particular the appellate panel found that the PTO must “determine that special circumstances exist” and those special circumstances must be sufficient and particular enough to “justify the specific content to be disclosed.” However, because of the seeming discretionary nature of the statute, the Federal Circuit determined that it should review the PTO’s determination of these factors with deference and only overturn the PTO’s decision upon finding of an abuse of discretion.

In determining that the PTO had then acted within these requirements, the panel first held that the requirements were proper – given Hyatt’s unique and special status among patent applicants. The court also found that the disclosure of confidential claim scope proper.

In light of the nature of Mr. Hyatt’s applications, longstanding PTO rules justify the issuance of the Requirements. 37 C.F.R. § 1.75(b) provides that, in a patent application, “[m]ore than one claim may be presented provided they differ substantially from each other and are not unduly multiplied” The PTO issued the Requirements to ensure that Mr. Hyatt’s applications complied with § 1.75(b). Given the extraordinary number and duplicative nature of Mr. Hyatt’s various pending applications, all drawn from the same 12 specifications, it was reasonable for the PTO to be concerned that the claims did not “differ substantially from each other,” and that some claims were “unduly multiplied.” § 1.75(b). In fact, in the Requirements the PTO demonstrates that across these applications, Mr. Hyatt has in numerous cases filed identical or nearly identical claims. This sort of redundant, repetitive claiming is inconsistent with § 1.75(b).

These special circumstances, which justify issuing the Requirements, also justify the disclosure of the confidential information contained in them. . . .

We hold that the Director did not abuse her discretion when she found that the “special circumstances” exception justified the otherwise-prohibited disclosure of the Requirements

It is fairly amazing to look at the effort going-in on both sides in Hyatt’s patent applications. One that is public and available in PAIR Application No. 05/849,812 that claims priority back to 1970 through a series of 20 continuations-in-part.

92 thoughts on “Federal Circuit Gives PTO “OK” to Treat Hyatt as a Special Case

  1. 11

    Paul, [A]n examiner also needs considerable further time to find out which prior application specification of a byzantine chain of priority application claims [especially CIPs]* actually contains the requisite full 112 support for each current claim in each current application claiming its priority.

    1. There is no requirement to examine anything but the broadest claim as an initial matter. The other claims will be better addressed when the broadest claim is found patentable or is amended to contain patentable subject matter.

    2. Support for subject matter in a continuation or divisional is assumed. For a CIP, provisional or foreign priority case, it is not assumed. The claim for priority is just that. If the applicant wants to rely on it, he has the burden.

    3. Having to demonstrate priority for one claim, and to check it, is a far simpler matter than doing this for 10,000 claims, multiplied by 500 or so claimed priorities.

    The reason the Office is having problems with Hyatt is that they are trying to apply compact prosecution methods that may work with few claims, but clearly do not work 10,000.

    One might also argue that the purpose for filing 10000 claims is to take advantage of the PTO method of examination for delay purposes.

    1. 11.1

      1 is a bit bizarre and misses the point that ALL claims eventually must be analyzed – each must be given their due.

      Once again, Ned mistakes “broad” as being ALL-INCLUSIVE of all other claims, even other independent claims.

      Ned – if you want to pursue (odd) claim strategies like one independent and all others dependent (or everything in Jepson-style format), have at it – but DON’T try to force your predilections off as some type of law, IMHO-Ned law or otherwise.

      The Office is NOT trying any type of prosecution – compact or otherwise. That’s why he had to sue them to get them moving.

      To blame the applicant for the purely Office controlled manner of examination is about completely arse-backwards. That’s a non-starter right off the bat (and is quite reminiscent of the “mentality” of the failed Tafas gambit.

      1. 11.1.1

        Ned, there is another issue here that I don’t want to get into in detail, but my observation over the years that there are even some patent attorneys that do not really understand the serious limitations of CIPs [continuation in part applications], and thus presumably even more examiners that may find it confusing. That was even the subject of an AIPLA presentation several years ago.
        Also, examiners are NOT supposed to assume the parent or grandparent priority claim of a CIP is valid for every claim in the CIP. They are supposed to assume the opposite, and cite prior art old enough to be effective against the CIP’s own filing date. The CIP applicant must show full support for all elements of the new or amended claims in the parent or grandparent application.

        1. 11.1.1.1

          Paul, I hear you on CIP’s, and even on the distinction between continuations and divisionals. For some reason not only patent attorneys but examiners are not totally up to speed on the differences between these and the differences in how they should be examined.

          For example, with a CIP or with a claim to a provisional or to a foreign priority document, there is no presumption of priority. That must be proved by the applicant if it is necessary to overcome a piece of prior art. Thus the examiner must examine initially as if there was no priority claim at all.

          Notice how this conflicts with the desire by the patent office of management that the first action be complete. If the applicant relies on his priority date, that will necessitate a second search.

          1. 11.1.1.1.1

            Not exactly right, Ned – one little added line takes care of the situation as you paint it: “incorporated within as written here

            Please tell me this is a standard line in your applications.

            That is, was a standard line, as you appear not to have written applications for some time.

            Further, EITHER WAY, there is no such “conflict” with a first action desired to be complete. You keep on wanting to hunt with a dog that won’t hunt. I “get” that you have a larger curse-ade with wanting to get rid of the “first action complete,” but you just haven’t thought through your position, nor your supporting pieces, very well.

    2. 11.2

      Ned, I think you are assuming that these are simple applications with claim 1 as the broadest, and all others merely adding further limitations. First, claim 1 is quite often not the broadest claim. Secondly, various claims may be broader as to one claim feature and narrower as to others. Thirdly, and very important here, different claims in an application based on a string of CIP prior applications, as here, normally have various different priority dates, and thus different applicable prior art. Fourthly, because of all the parallel related applications and patents in this case, all the present application claims need to be considered for either 101 double patenting rejections or judicial obviousness type double patenting terminal disclaimer requirements [which may well terminate some of these very long pending applications]. Last but not least, there IS a requirement for examination of all claims, and yes a rejection for excessive numbers in claims in an application numbers is possible, and this Fed. Cir. decision seems to support that.

      1. 11.2.1

        Paul has excellent points, for which I would re-order thus:

        a) there IS a requirement for examination of all claims (Ned’s attempt at multiple rounds as “quicker” is simply unsupportable),

        b) various claims may be broader as to one claim feature and narrower as to others,

        c) At least per b), claim 1 is quite often not the broadest claim (there often is NO overarching “broad” claim that encompasses all other claims),

        d) different claims in an application based on a string of CIP prior applications, as here, normally have various different priority dates, and thus different applicable prior art,

        e) a rejection for excessive numbers in claims in an application numbers is possible (prolixity), and

        f) because of all the parallel related applications and patents in this case, all the present application claims need to be considered for either 101 double patenting rejections or judicial obviousness type double patenting terminal disclaimer requirements [which may well terminate some of these very long pending applications].

      2. 11.2.2

        Paul, let’s assume an application that has two independent claims and a number of dependent claims from each. The first independent claim claims A + B + C + D’. The second independent claim claims A + B + C + D”.

        Now let’s assume claim one is examined and the novelty just turns out to be exactly A + B + C + D’.

        Notice now that second independent claim is not claiming the same invention as the first independent claim. Thus, the examiner could properly issue a restriction requirement with respect to this second independent claim.

        This is a way for the patent office to cut down on examining 10,000 claims. Examine the first independent claim and then require that the novel subject matter be amended into the to the other independent claims (assuming it is not there already), or that they be restricted out of the application.

        1. 11.2.2.1

          Ned, those theoretical simple to analyze claims like “claims A + B + C + D’ versus A + B + C + D” ” make for good law school exams, but a great many real claims are not that simple, and often not such combinations.

          Furthermore, USPTO “restriction practice” is already confused and abused enough. To belatedly give restriction requirements to “Methuselah” pendancy applications could delay their substantive examinations even further, and provide even further delays from the resultant petitions against the restrictions.

          1. 11.2.2.1.1

            Paul, if Hyatt is forced to file a divisional application, the new 20 year from filing rule applies. What this means is that a restriction requirement effectively ends the prosecution of all but the claims that contain the novel subject matter of the examined claim.

            1. 11.2.2.1.1.1

              Not so Ned.

              IIRC, for any item for which the old rule applies, the choice of old rule versus new rule was up to the applicant.

              1. 11.2.2.1.1.1.1

                anon, 20-year- from-filing term applies to every application filed after June 8, 1995.

            2. 11.2.2.1.1.2

              Only for the claims in divisionals actually filed after the restrictions. But of course he would instead, as I said, file petitions against the restriction requirements. Even if has to make conditional claim elections, that will still leave lots of claims.

              1. 11.2.2.1.1.2.1

                Paul,

                Are you making the same mistake as Ned, thinking that any required applications stemming from a request for restriction would have a filing date as of the date of restriction (or afterwards)…?

                That just is not so. See MPEP 802 and 35 USC 121.

                1. anon, now I know you cannot be a patent attorney. You have no clue as to what Paul just said. You cannot have practiced patent law as a profession.

                2. Ned,

                  Are you going to even bother reading the supplied references before embarrassing yourself even further?

        2. 11.2.2.2

          Not only that, but the restriction requirements would entail an admission by the Office that the “inventions” so restriscted – and who know how many claims and separate inventions that would be.

          You really want to unleash that Hydra…?

          Further – this will NOT cut down ANY examination. Ned continues to show how disconnected he his from prosecution.

  2. 10

    I’m not a constitutional expert.

    Hypothetically, if a government were to act, instead to secure patent rights of individuals, but to deny patent rights (even if only for specific “politically charged” types of inventions), whether due to malice, caprice, or negligence, would those individuals have any recourse in a free and just society?

    For example, if the patent office became the “unpatent office” for specific inventions, perfectly patentable but for which it saw as too powerful or ubiquitous in the economy, too important to health care, etc. and due to the particularly Statist politics of its officers, they decided purposefully to deny the rights of the individual in the name of the “collective public good”… is there any body, authority, or court to whom the individual could request action or petition to secure his/her rights in the face of such an abuse of power?

    If great economic loss was suffered due to the abuse of power, could the individual sue the government or its officers for damages?

    1. 10.1

      That is precisely what parts of the APA statute are for, and it has quite often been used for suits against the PTO.

      [Even by folks upset that the PTO will not issue them patents on perpetual motion machines.]

    2. 10.2

      such an abuse of power

      Some ultra wealthy guy doesn’t get a patent?

      This is what keep you up at night?

      I suppose you’re already lying awake worrying that Obama is going to come for your gun collection.

      1. 10.2.1

        Nothing like the propaganda of pur ad hominem: demonize the person that you want to shaft and then try to pretend that the law should be “special” instead of objectively applied.

        Maybe you should look into why the classic Lady of Justice was blindfolded.

        Hint: your misbegotten manner of wanting your views put into force is directly opposite the concept.

  3. 9

    Re Prosecution Laches: There are no strict limitations for determining whether continued refilling of patent applications is a legitimate utilization of statutory provisions or an abuse of those provisions. The matter is to be decided as a matter of equity, subject to the discretion of the district court. Symbol Techs II, 422 F.3d 1378 (Fed. Circ. 2005)

    1. 9.1

      See MPEP 2190: “An examiner should obtain approval from the TC Director before making a rejection on the grounds of prosecution history laches.

      (with the caveat of course that the MPEP does NOT carry the force of law)

      1. 9.1.1

        I have trouble imaging that the PTO has actual authorization to do this considering it is a judicial equitable doctrine that has only been applied to issued patents. In addition, prosecution laches requires a showing of prejudice to the accused infringer and to the public generally. How can the PTO possibly be in a position to make such determinations, particularly ones that are so fact sensitive.

        1. 9.1.1.1

          “reflectivecone” How can the PTO possibly be in a position to make such determinations, particularly ones that are so fact sensitive.

          Gee, maybe sometimes the facts pretty much speak for themselves and you’d have to have your head buried in the sand not to see what’s going on.

          Sometimes patent applicants behave very, very badly. Why is that seemingly impossible for some commenters to acknowledge?

          1. 9.1.1.1.1

            It is NOT the acknowledgement of “sometimes patent applicants behave very, very badly” that is a key legal point.

            The key legal point is the objective application of the law regardless of your “fee-fees” as to whether or not someone “behaves badly” in your views.

            Ends and means, Malcolm – the means very much matter.

  4. 8

    Be great if someone looked through the prosecution history and summarized it. I looked a bit. It seems like the game with the claims was to claim a big generic computer with lots of detail in the initial specification, and then write claims to very specific consumer items like toys that generate speech. It also seemed to me that there were several lost appeals to the board.

    So, I guess you can just argue, amend, appeal, file continuation, repeat and quick as a flash 40 years go by.

    But, frankly, I think the problem here is incompetence on the part of the PTO. The PTO could put really good examiners on cases like this and they would go away.

    1. 8.1

      As to Ned’s comment below of only examining one claim:

      Some of the problem with this case too is the PTO’s continued refusal to give examiners more time when there are more claims. Why does the PTO do this? If the applicant pays more for say 100 claims, then the examiner should get more hours for the prosecution. This failure on the part of the PTO is a big reason this case has caused so many problems.

    2. 8.2

      As a side note, should we really have a director (Lee) who has never done prosecution and who could not look at the file wrapper and get any understanding of what has happened in this case? She is in charge of 8,000 people that do prosecution.

      Thanks Obama.

    3. 8.3

      It seems to me that the pto made some bad choices a while ago and now he’s only bad choices left.
      I understand that these cases with giant claim sets and incomprehensible priority are an issue, but isnt the answer just to have an examiner(s) examine these cases with unlimited* time?

      If the examiners arent concerned with this case sinking their production for the biweek (likely quarter with the size of theem) theyll get done and allowed or rejected.
      Continuing to push these under the rug is what got us here had the office been willing to do them before this wouldnt have happened. This really seems like the office once again being penny wise and pound folish. More time 20 years ago would have cost money but they would be done.

      So in summation: blame the count system and lack of flexibility from management where clearly required.

    4. 8.4

      Night Writer,

      That would be a formidable task. The transaction history takes four pages. The PDF file is 294 MB with 7323 pages. Some documents related to Hyatt, but not application number 05/849,812, have been inserted. A summary of highlights would take several pages at least. I started but gave up, since this is probably too much to fit into a comment on Patently-O. If there is a popular demand, I could make the effort, but by the time I am done, the blog will have moved on.

      In general though, your second paragraph is correct.

  5. 7

    Filed November 9, 1977.

    Petition to MAKE SPECIAL filed 5/22/1978, based on 5 year pendency, then, of SN 325933….

    Looks like this case isn’t very special, eh ?

  6. 6

    I guess, the problem is examiners do not check the priority of pending claims at all. In EPO, if applicants amend claims not literually disclosed in the original application(word by word), the amended claims will be rejected for extending beyond the scope of original filing.

  7. 5

    I think the office is hamstrung by its compact prosecution policy that requires it to examine all claims and for all issues.

    In any one of these 10k claim cases, just pick claim 1 and prosecute it. If they ever allow claim 1, all the other claims might be allowable as being narrower.

    The office is creating its own mess.

    1. 5.1

      You have made a very large assumption there Ned.

      Since you are shooting totally in the dark (and likely wrong anyway given that most patents are not entirely dependent from a single claim (and thus necessarily narrower), the only thing you do here is highlight how off Ned-IMHO views are.

      Bottom line here is that no matter how difficult and convoluted the sets of applications are, it has been literally decades of non-attention and non-work from the Office that remains inexcusable and indefensible.

      Hyatt may be no saint, but he is not the government and the government does not get to act like a scofflaw.

      1. 5.1.1

        Not really, anon. Claim 1 is supposed to be the broadest. If it he number of claims makes that determination infeasible, one might ask the applicant to identify the broadest claim and state, on the record, that if this claims is allowed, all other claims will be allowed.

        If the claim is amended, then allowed, then the amendment must be introduced into all other independent claims to obtain allowance.

        The PTO can make prosecution a whole lot simpler and less expensive all around.

        1. 5.1.1.1

          Broadest does NOT mean that it necessarily encompasses ALL other claims, dependent and (especially) independent claims.

          You are simply wrong here.

          There is no shortcut to giving each claim its due.

          1. 5.1.1.1.1

            anon, the office’ job it to assure that the claims that issue are patentable over the art and are otherwise compliant with the law.

            Now if the office, with the agreement of the application, picks the broadest claim, prosecutes it, then allows the other 10000 if that one claim is patentable, stating they are allowed without further examination for form, or otherwise, on the basis that the other claims are narrower.

            Now, if it turns out that the other claims are not narrower, or do not claim the same invention, then they should be held to be unenforceable due to a “misrepresentation” or failure to speak when one had an opportunity to do so.

            The whole thing seems simple enough.

            Why do you object?

            1. 5.1.1.1.1.1

              Office with agreement of applicant not following the law….

              Are you Fn kidding?

              If you as the client’s advocate are going to agree to the notion of claim 1 actually being encompassing of all other claims, then write all other claims as dependents.

              Criminy Ned, when was the last time you actually prosecuted?

                1. “Reasonable” is not your call to make, now is it?

                  And yes, I did notice your attempted slight of hand with the “if applicant agrees” – for which I justly responded, “then make all other claims dependent from claim 1.

                  I notice that you have not recognized this point – nor that fact that I am correct in calling out your B$ yet again.

    2. 5.2

      “The office is creating its own mess.”

      The office has been creating its own mess for at least 20 years with this “policy”.

  8. 4

    Nobody sees a statutory deficiency in granting patents based on state of the art 40 years previously?

    If the patent system is run by humans, and humans are imperfect, the office will sometimes fail to grant a patent in a timely manner. That cannot mean that the patent must issue at some far future date with the full panoply of patent rights- it amounts to stepping on future person’s rights.

    Instead, when a prosecution has been fatally delayed, the inventor should get a handsome, but not absurd, sum of money from the office as some kind of terminal value compensation.

    Government amplified bets on the far future, to be paid by far future players, simply can’t be correct.

    1. 4.1

      Nobody sees a statutory deficiency in granting patents based on state of the art 40 years previously?

      What, you mean there’s something wrong by claiming something secretly, giving the public no notice of it or benefit from it, then intentionally delaying until you allow entire industries to develop (again, absent any teaching from you), build to maturity, and summarily holding them at ransom like a Bond villain, seeing how many people you can wrangle a fee from until someone will go toe-to-toe in court?

      1. 4.1.1

        Random being random and reflexively anti-patent…

        You are aware (or should be) that the EXTREME delay here is not the doing of Hyatt, right?

        Very quick to cast stones there pal, when it is you (granted, merely the Royal You), that needs to shoulder the blame here.

        1. 4.1.1.1

          the EXTREME delay here is not the doing of Hyatt, right?

          Because filing 20 continuation in part applications is what everybody does.

          1. 4.1.1.1.1

            Absolutely immaterial to sitting and doing NOTHING for twenty years.

            Don’t be an arse. Clearly, delays created by Wyatt are not the focal point. Either the claims have support or they do not.

            1. 4.1.1.1.1.1

              Absolutely immaterial

              You’re wishful thinking is quaint.

              Don’t be an arse.

              Seems to me that the “arse” here is the greedy moneybags who filed seven thousand patent claims off 12 specifications.

              1. 4.1.1.1.1.1.1

                What you view as “greedy moneybags” is even more absolutely immaterial.

                Maybe you want to peg your “views” to things legal instead of your precious feelings.

                1. What you view as “greedy moneybags” is even more absolutely immaterial.

                  Oh, I suspect my view is shared by many others.

                  But you’ve been defending the worst patentee behavior for years now so it’s unreasonable to expect a change at this late date. If you can’t tell the difference between good actors and self-absorbed charlatans, I guess a whole lot of observable facts might seem “immaterial.” Just keep digging, bro’.

                2. And if you mean that defending “the worst behavior” happens to be to know and defend the law, then I will take your “feelings” attempt at a putdown as a compliment.

                  Thanks.

                3. if you mean that defending “the worst behavior” happens to be to know and defend the law, then I will take your “feelings” attempt at a putdown as a compliment.

                  Yay for exploiters of shirty laws!

                  The most toxic antisocial cretins in world history unite to salute you.

        2. 4.1.1.2

          You are aware (or should be) that the EXTREME delay here is not the doing of Hyatt, right?

          You know how stupid you sound when you blather on about things you know I have more access to than you, don’t you? This is like you telling me what SAWS is. I’m the one who knows what’s going on. You are not.

          Let me see if I can help you with what is public though:

          Over the years, the USPTO has developed a number of special procedures for Hyatt applications. In 2013, the USPTO began issuing requirements that Hyatt limit each patent family to <600 claims absent a showing of necessity and also identify the earliest priority date for each chosen claim (along with links to the supporting disclosure).

          Now you might want to go back on this site to check the date on Hyatt’s lawsuit demanding that the PTO engage in prosecution…or, if we’re being totally accurate about what that lawsuit wanted – standard prosecution, as it sought to compel standard office actions subject to standard requirements be issued. Then you should recognize that you only got half of the story on why the pendency has been so long, such that you (and here I use the royal you) can’t make any intelligent statement of fault. But that is you (and here it’s the personal you) in a nutshell isn’t it – you can’t make any intelligent statement.

          1. 4.1.1.2.1

            Btw, you might want to consider that I have no skin in this particular game. I have no problem saying when the office is wrong, and I’m not one of the few examining his applications. There are plenty of times when I think the office acts poorly. This is not one of those times.

            1. 4.1.1.2.1.1

              Except that it is – regardless of what Hyatt may have done.

              You may have more “access,” but you seem to lack the critical ability to understand what is and is not permissible by an executive agency. That makes your responses here all the more sad.

              Not the first time your lack of understanding prevents you from having a cogent position – won’t be the last.

        3. 4.1.1.3

          You are aware (or should be) that the EXTREME delay here is not the doing of Hyatt, right?

          You know how silly you sound when you blather on about things you know I have more access to than you, don’t you? This is like you telling me what SAWS is. I’m the one who knows what’s going on. You are not.

          Let me see if I can help you with what is public though:

          Over the years, the USPTO has developed a number of special procedures for Hyatt applications. In 2013, the USPTO began issuing requirements that Hyatt limit each patent family to <600 claims absent a showing of necessity and also identify the earliest priority date for each chosen claim (along with links to the supporting disclosure).

          Now you might want to go back on this site to check the date on Hyatt’s lawsuit demanding that the PTO engage in prosecution…or, if we’re being totally accurate about what that lawsuit wanted – standard prosecution, as it sought to compel standard office actions subject to standard requirements be issued.

          1. 4.1.1.3.1

            Oh you filter you, don’t go letting my original one through if I’m going to be nice enough to make a second version.

    2. 4.2

      Martin, if the market for the invention has come and gone while the Office dithers, and the inventor has not himself delayed when the ball was in his court, perhaps the government might owe the applicant something. Hadley v. Baxendale, 9 Ex. 341, 156 Eng.Rep. 145 (1854).

    3. 4.4

      Hyatt was already rewarded many, many, millions of dollars from an invalid patent. If there’s a richer martyr on the face of the earth, he’s probably running for President as a Republican.

      1. 4.4.1

        Absolutely meaningless and unnecessary political comment from the all time arse.

        I neither know nor care about the political views of Mr. Hyatt, not your endless C R P comments on the mindless insertion of “Republican.”

        If you care to stay pertinent to Patent Law with your inanities, that is one thing, but your “special” pass on politics needs to be put in the can.

      2. 4.4.2

        Being unfairly rewarded by gaming complex rule systems is just a fact of life.

        The problem here is the philosophy of continuation practice-in this case, run amok. The world does not stop and wait for the patent office. At some point, after technologies have spread and ecosystems have evolved, the original inventor’s contribution has been long amortized and replaced by others. To retroactively apply market valuation to attempt to restore that reward is an impossibility- automatic injustice for the modern “infringers”.

        Continuations should be capped at 10 years or something, at which point if the delay was the office’s fault, the applicant gets some kind of substantial, but not insane, payment.

        1. 4.4.2.1

          Martin: The problem here is the philosophy of continuation practice-in this case, run amok.

          The bigger problem is the absolute k 00kiness of pre-TRIPS US patent law and the miserable failure of Congress to address the possibility of ongoing behavior like this when the new laws were written. To make matters worse, the CAFC put wind in Hyatt’s sails shortly after those new laws were codified by opening the gates to the patenting of abstract junk (i.e., Rich et al.’s now-decimated decision in State Street Bank).

          Golly, I wonder if the some of the same folks who find Hyatt such a symp athetic character were around in 1995 objecting to the changes in the law. How shocking that would be.

  9. 3

    An interesting question [now that the PTO is apparently finally prosecuting these Hyatt submarine patent applications after his NV D.C. suit against the PTO] is this: Are these applications being given “prosecution laches” rejections, per the Fed. Cir. approval of “prosecution laches” in two Lemelson decisions? If not, why not?
    Furthermore, in 2012 the Fed. Cir. reiterated that in “In re Bogese, 303 F.3d 1362 (Fed. Cir. 2002),” … “We upheld the PTO’s authority to sanction undue delay under the Administrative Procedure Act, 5 U.S.C. § 706,..”

      1. 3.1.1

        Yet another reflexively anti-patent person showing their colors.

        Is there anything there Paul about the Office being sanctioned…?

      2. 3.1.2

        Correct me if I’m wrong but Hyatt’s fortune was built mostly on his licensing/enforcement of an invalid semiconductor patent that the government handed out.

        Who “owes” who?

    1. 3.2

      “Are these applications being given “prosecution laches” rejections,”

      I know right? I’d be ready to bring laches up after 4-6 rounds o prosecution.

      1. 3.2.1

        What do you think “laches” means, 6?

        I “get” that people don’t like Hyatt – but must we be exposed to the mindless lawlessness on this supposedly America’s leading source of patent law…?

            1. 3.2.1.1.1.1

              Great 6 – if I had asked if you knew how to present a link, you would be all peaches.

              That’s not what I asked.

              You want to try again?

        1. 3.2.1.2

          What do you think “laches” means, 6?

          A failure to demonstrate a genuine interest in moving prosecution forward, perhaps accompanied by behavior strongly indicative of a desire to create conflict and confusion.

          As everyone understands, Hyatt had the means to do something about his “PTO problem” many, many years ago. He either hired the wrong lawyers or he was unable to come to terms with the fact that his methods were, well, unsound, or both.

          We’ve heard from the notorious shriekers on this blog and elsewhere, but I’m not aware of a single credible analyst who believes that Hyatt is going to end up with enforceable industry dominating patent claims when this is over (assuming it’s finally “over” in our lifetimes, which is a debatable proposition). I’m happy to be made aware of such analysis if anyone has the links.

      2. 3.2.2

        Prosecution laches is not a rejection the PTO can make. It’s an equitable doctrine only the courts can utilize.

    2. 3.3

      Correct me if I’m wrong, but isn’t prosecution laches an equitable doctrine that only the courts can evaluate?

      1. 3.3.1

        A good question, which is why I also cited In re Bogese for a same-effect rejection on a different basis. [I was also assuming these submarine applications WILL end up in court at the Fed. Cir.] As I recall, inequitable conduct has been applied against a party by the PTO in a few interference determinations. The PTO officially thinks that laches can be applied to an application:
        “MPEP 2190 Prosecution Laches [R-08.2012]
        The Federal Circuit affirmed a rejection of claims in a patent application on the ground that applicant had forfeited his right to a patent under the doctrine of prosecution history laches for unreasonable and undue delay in prosecution. In re Bogese, 303 F.3d 1362, 1369, 64 USPQ2d 1448, 1453 (Fed. Cir. 2002) (Applicant “filed twelve continuation applications over an eight-year period and did not substantively advance prosecution when required and given an opportunity to do so by the PTO.”). While there are no firm guidelines for determining when laches is triggered, it applies only in egregious cases of unreasonable and unexplained delay in prosecution. For example, where there are “multiple examples of repetitive filings that demonstrate a pattern of unjustified delayed prosecution,” laches may be triggered. Symbol Tech. Inc. v. Lemelson Med., Educ., & Research Found., 422 F.3d 1378, 1385, 76 USPQ2d 1354, 1360 (Fed. Cir. 2005)(Court discussed difference between legitimate reasons for refiling patent applications and refilings for the business purpose of delaying the issuance of previously allowed claims.). An examiner should obtain approval from the TC Director before making a rejection on the grounds of prosecution history laches.”

        1. 3.3.1.1

          I have trouble imaging that the PTO has actual authorization to do this considering it is a judicial equitable doctrine that has only been applied to issued patents. In addition, prosecution laches requires a showing of prejudice to the accused infringer and to the public generally. How can the PTO possibly be in a position to make such determinations?

          Inequitable conduct seems at least a little different in that the basis for inequitable conduct is an affirmative duty of disclosure to the PTO. There is no such basis connected to the PTO with prosecution laches. Although inequitable conduct, especially since Therasense, requires equitable considerations, those equitable considerations are connected to the applicant/patentee not an accused infringer, like in prosecution laches. So again, the PTO would never be in a position to consider an accused infringer’s situation.

    3. 3.4

      [now that the PTO is apparently finally prosecuting these Hyatt submarine patent applications after his NV D.C. suit against the PTO]

      That would be the entirely backward conclusion of the situation.

      1. 3.4.1

        There is more than enough well deserved blame to go around on both sides here.
        I would indeed be surprised if Hyatt’s NV suit* and all the adverse PTO publicity it generated had not stimulated faster and better PTO prosecution of his applications. Correct me if I am wrong, but my recollection is that the PTO admitted to long time periods of completely non-responsive inaction on some of his applications.

        *Gilbert Hyatt v. USPTO (D. Nevada 2014)

  10. 2

    Are these numbers real? “75 issued patents and hundreds of millions of dollars in licensing revenue” is well over a million dollars per patent. Consider: 200 million/75 = 2.7 million per patent. This seems like a lot.

    And if you had hundreds of millions of dollars in licensing revenue, why are you still pursuing patents?

    1. 2.1

      And if you had hundreds of millions of dollars in licensing revenue, why are you still pursuing patents?

      Everybody needs a hobby.

    2. 2.2

      Because if he gets a patent on basic technology without prosecution laches (big if for the prosecution laches – depends on how a court would view the filing of a huge list of claims versus USPTO’s actions) – his patent wouldn’t be invalidated under 101, 102 or 103. Everyone in the modern economy would infringe and at even a super small royalty rate would generate hundreds of millions, possibly billions, in licensing revenue or damages.

      Not a bad hobby. Obviously, greedy. But, since when does that stop capitalist or anyone who has found a legal path to make money?

      Imagine the pain of being that patent attorney that has to work through the CON/CIP to make sure it is proper, support for each claim when challenged, keeping track of differences in claim language. Hyatte must employ a full section of some firm (en entire firm?).

      1. 2.2.1

        But, since when does that stop capitalist or anyone who has found a legal path to make money?

        Notice the silence as to the guy shorting Celgene…?

    3. 2.3

      Yes, those numbers may be real. If I recall correctly, one claim in one Hyatt patent [claiming the invention of the microprocessor] obtained royalty payments from a number of Japanese electronics manufacturers for many imported products, a large cumulative total, and then later on that claim was eliminated in an interference with Texas Instruments which proved that it had invented it first. [Someone else may have more details.]
      BTW, this is about only recent Hyatt submarine patents. Here are some of his previous patents listing their original filing date, issue date, and years of total pendancy in the PTO on the right:
      4,310,878*** 1982 1969 13
      4,332,819*** 1982 1974 8
      4,364,110*** 1982 1970 12
      4,371,953*** 1983 1970 13
      4,396,976*** 1983 1969 14
      4,445,189*** 1984 1970 14
      4,445,776*** 1984 1969 15
      4,471,385*** 1984 1970 14
      4,491,930*** 1985 1970 15
      4,523,290***1985 1974 11
      4,531,182*** 1985 1969 16
      4,551,816*** 1985 1970? 15
      4,553,213*** 1985 1970? 15
      4,553,221*** 1985 1970? 15
      4,614,415*** 1986 1970? 16
      4,672,457*** 1987 1970? 17
      4,686,655*** 1987 1970? 17
      4,739,396*** 1988 1970? 18
      4,744,042*** 1988 1974 14
      4,829,419*** 1989 1969 20
      4,870,559*** 1989 1969 20
      4,910,706*** 1990 1972? 18
      4,942,516*** 1990 1969 21
      4,944,036***1990 1971 19
      4,954,951*** 1990 1970 20

      ***Gilbert Hyatt patents just up to 1990

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