Modified Opinion for Hyatt on Purposeful Submarining

Hyatt v. Hirshfeld, 9 F.4th 1372, 1374 (Fed. Cir. 2021), opinion modified and superseded on reh’g, 2020-2321, 2021 WL 4737737 (Fed. Cir. Oct. 12, 2021) [New Opinion]

Earlier this month, the Federal Circuit released a revised opinion in the most recent edition of Hyatt v. Hirshfeld.  The opinion originally released in August 2021 denied the USPTO’s petition to recoup expert witness fees under the “all the expenses” provision of 35 U.S.C. 145.  The original opinion called out Hyatt for “efforts to submarine his patent applications and receive lengthy patent terms.”  Following that decision, Hyatt petitioned for rehearing, asking for removal of that language from the opinion.  The PTO did not file a brief in opposition and the court released a modified opinion with the language removed.  The redline below shows the change:

In the briefing, Hyatt explained that the statement was incorrect, unnecessary, unsupported, and prejudicial to his position on remand.  The petition is a very good example of how to seek targeted relief from a panel for a narrow, but potentially important issue. [HyattRehearingPetition]

24 thoughts on “Modified Opinion for Hyatt on Purposeful Submarining

  1. 4

    I’m divided here because, while seemingly self-evidently true and almost common knowledge, when reading this statement stuck out to me as outside of the record and unnecessarily pejorative, and I agree there shouldn’t be a place in written opinion for that. But I have read a fair number of dissents and concurrences (and a few majority opinions) that contained similar bombast. Here’s hoping that we can stamp as much of that out as possible and hold ourselves all to a higher standard.

    1. 4.1

      The use of “us” seems to cloud the issue.

      There is no “us” in the Court’s written opinion.

      There IS (however) the steady drum beat of anti-patent rhetoric that DOES influence the Court’s bias.

      Some of us have been more active than others in fighting that rhetoric.

    2. 4.2

      “hold ourselves all to a higher standard”

      This from a proxy who represents others — from the darkness — who steal the innovations of others with impunity.

      Innovation usurper, heal thyself.

      1. 4.2.1

        This from an anonymous Internet comment! Irony really is dead. In a post about trying to refrain as a bar from being pejorative or ad hominem.

        I do have a weakness for your rhetorical flourishes, though.


          A double fallacy from Mr. Stroud, starting with “I use my real name” (or the converse of anonymous posters are somehow immediately suspect) coupled with the errant characterization of ad hominem, as the comment directed to you is not beaded merely on name but instead based on your actions directly supporting Efficient Infringers.

          You, being an attorney, should fare better against our pro se friend.

          You do not.


          The message is what matters.

          The messenger? It matters not.

          Your firm is a cancer on innovation.

  2. 3

    I am not a fan of Gil Hyatt by any means, but he was correct to ask for and get a retraction of that biased statement that has no basis in fact from the opinion.

    1. 2.1

      Big +1.

      Keep fighting the good fight, Gil.

      All us 1,000’s of inventors around the world continue to root for you.

      1. 2.1.1


        I actually think Hyatt’s patent applications can rejected under 103 but he has not been treated fairly.

  3. 1

    Wow. What a nasty thing to put into an opinion. Just illustrates how bad the judges that Obama appointed are. They have no interest in applying laws and being objective and fair. Just a group of nasty biased foul humans that have no business sitting on the bench. They should be out sweeping the streets or cleaning the bathrooms. Just a foul group of people.

      1. 1.2.1

        Ordinary, your statement captures the fact that you simply have no understanding of the issues or what a system of jurisprudence is.

        The judges role is not to write “truth” according to their feelings but to apply the law.


          OSitA evidences the type of bias that I indicate above.

          He is simply far too dull to even recognize this.


            Coming from the King Dullard of this site (i.e., you Anon), I will take that as a compliment.

            I actually agree with Jonathan of comment #4 above. However, any chance to tweak NW’s nose is a good chance.


              I see that you went to the Malcolm Mooney school of bogus rhetoric, with that mindless and false accusation of what you yourself are.

              Further, admitting that your post is nothing but tr011ing someone is just not a bright move.

              I cannot say that I am surprised.


                I give each reply the though and consideration that the underlying comment deserves. No more. No Less.

                I see that you went to the Malcolm Mooney school of bogus rhetoric, with that mindless and false accusation of what you yourself are.

                I see self awareness has all but fled from you.

                1. Your “idea” of what anything deserves is beyond suspect.

                  Your comment about my level of awareness is merely you doubling down on the banal Malcolm tactic.

                  You might want to be aware that his 15 plus years of those tactics (well before I joined the board) never worked for him.

                2. I mean, you are the one who started this by calling me dull. You can’t spin that to be anything other than out of MM’s playbook, but it will be fun to watch you try.

                3. Wow, you ARE dull.

                  The “starting” was you ‘pulling a Malcolm’ in response to my statement. Did you bother (at all) following the post number that I provided when I called you dull?

                  Hint: bias.

                  My comment has nothing at all to do with Malcolm’s playbook. Malcolm’s playbook features an acronym that has been banned by Prof Crouch (due in part to the plentitude of it applying).

                  That acronym is:

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