Hyatt back to the Supreme Court: Special APA Procedures for the Patent Office?

by Dennis Crouch

Hyatt v. USPTO (Supreme Court 2022)

Following a failed en banc petition, famed inventor Gilbert Hyatt hired a new Supreme Court counsel (the famed Erwin Chemerinsky) who has now filed a petition for writ of certiorari focusing on standards for dismissing Administrative Procedure Act (APA) claims.

According to the USPTO, there are a couple of hundred patent applications still pending that were filed prior to the June 1995 patent term transformation (GATT).  Of those, 99% list Gilbert Hyatt as an inventor. Hyatt is known for being tenacious. He does not give up easily.  But, his filings argue that the USPTO is largely to blame for the delays.

In particular, Hyatt provided testimony of various former PTO officials of a no-patent-for-HYATT policy — “a secret agency policy to block issuance of his applications as patents, regardless of the merits of his patent claims.” The PTO created a Hyatt Unit of examiners who repeatedly referred to Hyatt as a “submariner” and tracked Hyatt applications using software they called the “submarine detector.”  The group apparently distributed the shallow-fake image below depicting Hyatt applying Ted DiBiase’s finishing move – the Million Dollar Dream.

In 2018, Hyatt filed an Administrative Procedure Act (APA) suit seeking an order requiring “bona fide examination of his applications.” The lawsuit sought review under both Section 706(1) and 706(2).

The reviewing court shall—

(1) compel agency action unlawfully withheld or unreasonably delayed; and

(2) hold unlawful and set aside agency action, findings, and conclusions found to be (A) arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law; . . .

5 U.S.C. § 706.  The district court sided with the USPTO with a sua sponte summary judgment order — finding that the USPTO was already working diligently on the applications based upon its recent filing of “numerous office actions on plaintiff’s applications.” In the process, the district court (1) based its decision upon facts already developed in the administrative record and without following the usual summary judgment approach of drawing every reasonable inference in favor of Respondents; and (2) concluded that summary judgment was proper because Hyatt could not satisfy the extraordinary “mandamus standard” that the court concluded was required to prove a Section 706(1) or (2) case.  These two rulings form the basis of Hyatt’s newest petition for writ of certiorari.

Petitioner Gilbert Hyatt brought this action to challenge the Patent and Trademark Office’s secret rule, attested to by former agency officials and reflected in its official actions, to deny him further patents irrespective of the merit of his applications. After finding that Hyatt had plausibly alleged this rule’s  existence, the district court sua sponte entered summary judgment against him, notwithstanding clear disputes of material fact as to the agency’s actions. Expressly holding that the ordinary summary judgment standard of Federal Rule of Civil Procedure 56 does not apply in agency cases, the district court drew inferences, made credibility determinations, and decided fact disputes in favor of the agency and against Hyatt. It also held that, because there was no basis to “compel agency action unlawfully withheld or unreasonably delayed,” 5 U.S.C. § 706(1), the agency’s rule could not be “h[e]ld unlawful and set aside” as “arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law,” id. § 706(2). The Federal Circuit upheld the district court’s decision.

This Court should grant review to decide:

1. Whether the ordinary summary judgment standard of Rule 56 applies to review of agency action, as held by the First, Fifth, Ninth, and District of Columbia Circuits.

2. Whether the mandamus standard of Norton v. S. Utah Wilderness Alliance, 542 U.S. 55 (2004), applies to claims seeking to set aside agency action under 5 U.S.C. § 706(2).

[Petition]. On the second question, in Norton, the Supreme Court held that the mandamus standard applies when seeking an order under 706(1) to compel some administrative action. Hyatt argues that an ordinary legal standard should apply to 706(2) when seeking a declaration that the agency’s past actions were arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with the law.”

The setup here is somewhat parallel to Kappos v. Hyatt, 566 US 431 (2012).  In that decision, the Supreme Court held that Hyatt had a right to de novo consideration of evidence presented in a Section 145 civil action even for factual findings that had already been made as part of the prior administrative review.

102 thoughts on “Hyatt back to the Supreme Court: Special APA Procedures for the Patent Office?

  1. 9

    Hyatt MAY have had an argument until 2016 when the first post-GATT patents expired. Even though it was apparent to anyone with a brain that he was a savvy actor gaming the system and crying victim, some people still gave him the benefit of the doubt.

    But enough is enough with this guy. There are legitimate submarine patents out there that were kept secret due to L+R issues. This guy is making them all look bad and is opening the door to the government making laches arguments against delays that are entirely their fault.

    1. 9.1

      If he filed a month or a year later, all his patents would be expired already. What is he complaining about? This dude is the definition of a privileged, advantaged person demanding special treatment.

      1. 9.1.1

        What kool-aid have you been drinking?

        Another example of someone letting their personal feelings color what otherwise should be an objective view of the law.

        Somehow it is a “privilege” that the Office simply stonewall? There simply is NO request (let alone “demand”) for special treatment.

        Sure, he may well have “gamed the system” – but ANY such gaming is entirely legal (if the Government wanted different rules, the Government is entirely capable of making those different rules).

        1. 9.1.1.1

          Billy, it’s you who is drunk on the Hyatt kool-aid and you’ve been high for about ten years at least.

          1. 9.1.1.1.1

            Except not — but hey, nothing like your projections, eh Malcolm?

  2. 8

    I doubt just reading through the comments whether any of the commenters have read a Hyatt patent application. I doubt it.

    Basically what he did was write a very clever disclosure that included all the common uses of computers that people at the time–in my opinion–had anticipated.

    Things like storing in memory music and so forth. So there were no other patent applications to reference because digital music was too large and processors were too slow. But anyone that was in EE/CS at the time knew that digital music was coming but it would have to wait until Moore’s law brought us larger memories and faster processors.

    But there were articles in magazines written about this and speculation from other sources about what will be. So Hyatt’s applications are tricky to reject as they are a combination of 112 issues and 103 issues. And Hyatt shouldn’t be underestimated in that he did figure out how to write a disclosure that included a lot of technologies that hadn’t developed yet but would obviously develop.

    Anyway….I still maintain that the PTO is just incompetent in not putting together a few intelligent people to come up with ways of rejecting all these claims in a fair fashion.

    If you read the claims and the disclosure, you will understand. It is a puzzle to understand how to reject these claims but a clever person could come up with solid rejections.

    1. 8.1

      Instead–in my opinion–what we got was an imperial PTO where some top level bureaucrat decided these claims couldn’t be granted so they put them into a special status of no granting. What they should have done is put them in the status as tricky to reject and put some top people on examining the claims and use the law to reject (or not) and let the chips lie where they may.

      Typical when governments can hide what they are doing they become tyrants.

      1. 8.1.1

        +1

      2. 8.1.2

        “What they should have done is put them in the status as tricky to reject and put some top people on examining the claims and use the law to reject”

        They eventually did. That’s where we’re currently at. This lawsuit is Hyatt’s attempt at salvaging his applications.

        1. 8.1.2.1

          Those “questions presented” do not look like an attempt to salvage an actual lost application. They look more like an attempt to force the PTO actually to give appealable final decisions.

          1. 8.1.2.1.1

            I didn’t mean to suggest that this lawsuit is to save an application with a final agency decision. If you’re interesting in looking at – or just recognizing – some of those cases, you can review Dennis’s June 2021 post about Hyatt v. Hirshfeld.

            Hyatt is seeing the PTO slowly but surely examine his applications, and the result are not to his liking. He has selected a handful (3) cases which apparently have not yet received such examination, and is asking the courts to force the PTO to grant him patents based on a theory that the PTO has a policy against granting him patents.

            This is a Hail Mary play to save some applications from examination, not an effort to get prosecution rolling. Because it is rolling.

            1. 8.1.2.1.1.1

              No – you cannot have “these three have not received action” AND “the suit on these three are examples of action happening.”

              You seem intent on not using logic, but instead mere emotion.

              It’s not a good look.

            2. 8.1.2.1.1.2

              Actually, as a correction for myself, 2 of the 3 applications in this case were expired. As in, they were filed post-GATT and could not have any term. So this lawsuit was in part really a salvage job.

    2. 8.2

      And again I think you should read a Hyatt patent application and claims.

      The number of claims is also not some excuse as applicants pay for extra claims so the time of the examiners is going to be paid for.

      Plus, the number of claims is no excuse as it is within the law and regulations. So deal with it PTO.

      1. 8.2.1

        “The number of claims is also not some excuse as applicants pay for extra claims so the time of the examiners is going to be paid for.”

        “Paid for” but mysteriously never “given”.

        1. 8.2.1.1

          Fhdhhdhgggf

          “Paid for” but mysteriously never “given”.

          Yet again 6 — I have been clear about the internal goings-on at the Office.

          By this time, to claim mysterious is simply disingenuous.

      2. 8.2.2

        “The number of claims is also not some excuse as applicants pay for extra claims so the time of the examiners is going to be paid for.”

        The number of claims in Hyatt’s case is really no excuse because his cases are being examined by examiners with special, extremely generous time requirements. Every other applicant is presently subsidizing the costs of Hyatt’s examination. Very generous of you guys to not be annoyed by this.

        1. 8.2.2.1

          Every other applicant is presently subsidizing the costs of Hyatt’s examination.

          Yeah, that’s B$ – unless you want to do some “total lump sum” type of ‘logic,’ and for that, “WE” (the very Royal we) are “subsidizing” the costs of a LOT WORSE examiner behavior.

          But you be you Ben.

        2. 8.2.2.2

          Very generous of you guys to not be annoyed by this.

          How do you infer that we are not annoyed? Do we sound placid and content? I think that most of patent attorneys around these parts have been fairly clear in our belief that these cases should be done and dusted by now, and no longer should they be a drain on PTO resources. We are tired of subsidizing Hyatt. It is past time that the PTO should have brought an end to this farce.

          I am not even all that especially pro-Hyatt. I can easily believe that he is not entitled to any of these claims (although I can just as easily believe the contrary, given that I have no opportunity to review most of them). By this point, it would be perfectly plausible for the PTO to reject the whole lot on prosecution laches grounds. One way or another, however, this whole reject-then-reopen business is a sorry excuse for due process.

          1. 8.2.2.2.1

            “Do we sound placid and content?”

            Yes, actually. I was responding to a post which seemed very content with Hyatt’s 115,000 claims over 399 applications. On top of that, the patent bar doesn’t appear to care much about the disconnect between fees and examination time, and I’ve never heard (to my recollection) an attorney complain about how examination is subsidized by maintenence fees.

            “It is past time that the PTO should have brought an end to this farce.”

            This is a sound position, but it is a profoundly unconstructive attitude. You’re akin to the climate change activist who rages about the Kyoto protocol while refusing to address where we are and what can be done today.

            1. 8.2.2.2.1.1

              profoundly unconstructive attitude. You’re akin to the climate change activist who rages about the Kyoto protocol while refusing to address where we are and what can be done today.

              WOW – and you sound like a Liberal Lemming who simply cannot be bothered to actually think for yourself – umbrage only when directed to.

              No doubt, you will not change, and most likely, you don’t know how to change.

            2. 8.2.2.2.1.2

              Another Count hit…

              Your comment is awaiting moderation.

              May 16, 2022 at 3:13 pm

              profoundly unconstructive attitude. You’re akin to the climate change activist who rages about the Kyoto protocol while refusing to address where we are and what can be done today.

              WOW – and you sound like a Liberal Lemming who simply cannot be bothered to actually think for yourself – umbrage only when directed to.

              No doubt, you will not change, and most likely, you don’t know how to change.

            3. 8.2.2.2.1.3

              This is a… profoundly unconstructive attitude.

              It only appears unconstructive because you are convinced that surely the PTO is now processing these applications in good faith to the best of their ability. I am not convinced. The attitude becomes far less “unconstructive” if you begin from the presupposition that the PTO is still stalling, just as they had been in 2014 when Hyatt began his APA suit.

            4. 8.2.2.2.1.4

              I’ve never heard (to my recollection) an attorney complain about how examination is subsidized by maintenence fees.

              Neither have I. Is there a reason why you think that we should complain? I am not perceiving one.

              Almost by definition, the folks who get patents are the ones deriving the most benefit from the patent system. The ones who need the last 4 years of a patent’s term so badly that they are willing to pay the 12-year annuities are really the ones deriving the most benefit from the patent system. It is not all that crazy, to my mind, that those who derive the most benefit from the patent system should bear disproportionately the costs of running the system.

              1. 8.2.2.2.1.4.1

                Bottom line, Greg, is you do come across like a Hyatt cheerleader which is really something that should be left to the glibertarian and MAGAt slime chunks who you regularly high five here.

                1. Nice one bucketing — given that Greg is usually “high-fiving” the polite examiners and other anti-patentists.

                  But why let facts get in the way of your rants, eh Malcolm?

    3. 8.3

      “And Hyatt shouldn’t be underestimated in that he did figure out how to write a disclosure that included a lot of technologies that hadn’t developed yet but would obviously develop.”

      In such an instance, in your legal opinion, should claims to such be held obvious or not?

      Just as an fyi, this is the same kind of sht we deal with quite a bit in what people are trying to claim in their apps.

      “I still maintain that the PTO is just incompetent in not putting together a few intelligent people to come up with ways of rejecting all these claims in a fair fashion.”

      Probably harder said than done if you’re wanting to use a bunch of magazines etc. as solid prior art.

      “If you read the claims and the disclosure, you will understand. It is a puzzle to understand how to reject these claims but a clever person could come up with solid rejections.”

      I do understand what you’re saying but I decline to believe that the entire Hyatt examining division is just so “unclever” so as to not have done it by now, if it was just a matter of cleverness.

      1. 8.3.1

        and Count Filter has been reached…

        Your comment is awaiting moderation.

        May 16, 2022 at 8:48 am

        I decline to believe that the entire Hyatt examining division is just so “unclever” so as to not have done it by now, if it was just a matter of cleverness.

        You seem to be making Hyatt’s case FOR him.

        1. 8.3.1.1

          “You seem to be making Hyatt’s case FOR him.”

          To be clear, I’m not against Hyatt. I think he should have finals for everything by now. Either take each app up to the board/CAFC or not.

    4. 8.4

      I’m not saying that what Night says is accurate, but assuming it was accurate – gee, that kind of shows the problem with providing no technical teaching and using broad, functional language to discuss what will come rather than what is actually invented.

      1. 8.4.1

        rather than what is actually invented.

        Another examiner total B$ statement.

        IF – as you want to assert — that he did not “actually invent,” your job IS to lay out the details of why.

        Likewise, IF he DID “actually invent,” your job IS to allow – not “feel” that his claims are “too broad.”

        Stop whining – do your F N job.

      2. 8.4.2

        [T]hat kind of shows the problem with providing no technical teaching and using broad, functional language to discuss what will come rather than what is actually invented.

        Does it show that? Why, then, are we looking at applications pending from 1970–1995 without final dispositions? I am entirely willing to believe that these claims could be flawed, but if so, surely it should be possible for them to reach a final disposition by now.

    5. 8.5

      Yes, NW, I did read a Hyatt patent many years ago. The one I was told he had made lots of money on by Japanese companies selling [and marking] products containing microprocessors taking licenses on that patent. You are correct about how he wrote specs and claims in general. One distinct claim in the midst of others in that particular Hyatt patent was a broad claim to putting multiple transistors on the same chip. I have no idea how much licensing money Hyatt made from that. However, he later lost that claim in a patent interference with a Texas Instruments 35 USC 157 SIR PTO defensive publication. [SIRs no longer exist.] Ben had posted a NYT article on this blog about how Hyatt lost that claim to single chip microcontroller in 1996.

      1. 8.5.1

        Thanks for the reminder of that case Paul.

  3. 7

    When I grow up I wanna be Gil Hyatt.

    1. 7.1

      If I told you onc, I told you a thousand times, dates mean something to me.

    2. 7.2

      “When I grow up, I want to be a bald tantrum-throwing schmuck who never invented anything.”

      Fixed your typos.

      1. 7.2.1

        “who never invented anything”

        That’s not factual bro, he got quite a few patents already, and he was obviously a top tier EE dude back in the day day of computer development. It’s not hard for such a dude to invent stuff, can literally invent some stuff every single day.

        1. 7.2.1.1

          That’s not factual bro,

          Malcolm just does not care.

          He never has – he never will.

          Facts only get in the way of his feelings.

  4. 6

    This is a decades long institutional problem at the PTO. Directors come. Directors go. The problem remains.
    Gil Hyatt pushed the system to the limit but that doesn’t mean the PTO was entitled to abuse their authority and make an example of him.

    1. 6.1

      Lemelson or Hyatt cleverly found and took advantage of a PTO management then incapable [before being sued] of effectively flexibly deploying the much greater needed examiner-hour resources needed to properly examine applications adding large numbers of new claims. Not surprisingly, examiners did not want to work on them for clearly inadequate credit, and apparently many didn’t, presumably even before that refusal to examine became, for some time period, apparently even management blessed at some level re Hyatt.
      Also, there was a PTO failure of docket control and priority of examination [not properly based on Original application filing dates] of serial continuations and divisionals, which allowed incredibly delayed prosecution and patent term periods. This directly led to Congress fixing that PTO failure with the statutory change in patent term calculation. But Lemelson and Hyatt had numerous applications filed or re-filed before that change in patent term calculation went into effect.

  5. 5

    ? If this cert petition is from the mandamus suit Hyatt v. Iancu, No 1:20-cv-00990 (E.D. Va.), appealed by the PTO in Hyatt v. Hirshfeld (CAFC, June 1, 2020), remanded, I thought there was an issue of having exceeded the statute of limitations for an actual APA suit?
    That undiscussed question aside, this cert petition appears to raise interesting legal issues, including an always-helpful alleged spilt between circuits on a non-patent issue, and might even be appealing to the new Sup. Ct. conservative majority as an opportunity for some self-inflicted-government-agency-conduct-bashing? I hope the PTO Solicitors Office is going to adequately respond.

    1. 5.1

      Note that the above two PTO problems are additive in their adverse effects on others.
      Also, does a U.S. applicant really have a legal right to keep adding an unlimited number of claims to the same application? E.g., I’m curious if the PTO has ever tried asserting that hundreds of claims, many independent, are inconsistent with the 35 USC 112 requirement of “..one or more claims Particularly pointing out and Distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.” ?

      1. 5.1.1

        >Also, does a U.S. applicant really have a legal right to keep adding an unlimited number of claims to the same application?

        I’m sure the USPTO cashed the check for those claims long, long ago.

        1. 5.1.1.1

          No doubt, but paying to add extra application claims has never required the PTO to allow them.

          1. 5.1.1.1.1

            Nice strawman — as no one ever said anything like that Paul (that merely paying fees for claims means automatic allowance of the claims).

            Do you even realize how you come across?

          2. 5.1.1.1.2

            IIRC, Dudas pushed out some short-lived (i.e., illegal) restriction on the amount of claims per patent family. I remember commenting at the time that the rule would reduce fee revenue, which to put it mildly, seemed very un-USPTO-like.

            In retrospect, I wonder if it was specifically motivated to screw Hyatt.

            1. 5.1.1.1.2.1

              Claims and Continuations power grab by the Office was defeated by the likes of Tafas and Dave Boundy.

      2. 5.1.2

        Of course, one can add as many claims as they deem appropriate. Most of the disclosures which I’ve come across, or written, have fewer than 20 claims. But I think I wrote 114 in one case though, and a few over the years having 30 – 70 claims. Its all up to the Lexicographer / Inventor. Consider to look at Inventors as teachers, and treat them with respect due to any person who voluntarily elects to share the fruits of their mind with the rest of the world. In any of my pending cases, I’m free at any moment to file an amendment adding claims. Its even in the rules !! The MPEP isn’t law, but it instructs Practitioners to use the word (NEW), when adding new claims. Does it help to know, that the PTO expects the word (NEW) to be present when new claims are added ? Isn’t this like, 4th grader patent stuff ?

  6. 4

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  7. 3

    It is quite possible the PTO had a policy of just not granting any patents for Hyatt.

    I’ve had one application where I ran into that policy at the PTO where the application was transferred to a junior patent examiner and he accidently told me the policy. He said no matter what I did they would never allow the application. I said why. He said that it was coming from upper management. He said no matter what I did there would always be another reference.

    You get what they can do? The PTO can just keep rejecting the application with new references or let you win the appeal and just slow walk at every move.

    I prosecuted that application the whole time I was at a law firm before I moved to another law firm.

    1. 3.1

      I also just wonder about why the PTO can’t reject the claims under 103. I’ve read several of Hyatt’s patent application and I am sure that I could reject them under 103 and defend appeals all the way up to the Scotus.

      Don’t get it. Is the PTO really that incompetent? Some of those patent judges are pretty clever. Why not bring a few of them into the game and have them write rejections?

      1. 3.1.1

        I don’t know, since he’s got some priority dates that go way back. Their better option is written description rejections, which I presume they have made. And, if my memory serves me, he has oodles of claims in his appls.

      2. 3.1.2

        I don’t know, since he’s got some priority dates that go way back. Their better option is written description rejections, which I presume they have made. And, if my memory serves me, he has oodles of claims in his appls.

        1. 3.1.2.1

          Yes, thousands of added claims.

          1. 3.1.2.1.1

            Yes it no — number of claims is a red herring if all appropriate fees for number of claims have been paid?

            1. 3.1.2.1.1.1

              Egads autocorrect…

              Yes it no ==> yes or no

            2. 3.1.2.1.1.2

              Because the PTO set up it’s rules completely expecting emotionally infantile super wealthy applicants to file thousands of claims out of spite.

              Right.

              1. 3.1.2.1.1.2.1

                It simply does not matter why claims are filed — and associated fees are paid.

                Did you have a point here, Malcolm?

                I mean, other than sharing your feelings (because frankly your feelings mean nothing)?

                1. “It simply does not matter why claims are filed”

                  It matters if a substantial portion of huge set of claims are unsupported doo doo because there are really only two reasons why that would happen (assuming an adult human being is filing them).

                  And one of the reasons is a justification for sanctions.

                2. No Malcolm, what you posit is utter nonsense.

                  I “get” that you feel otherwise, but your feelings simply have no basis in law.

                  Well, let’s say not the basis that you want to imperiously declare.

                  Fraud on the Office is — in fact — a basis.

                  But you simply want to ‘declare it so’ based on nothing more than “you don’t like.”

                  That is just not how the charge of fraud is treated — and for good reason.

        2. 3.1.2.2

          Re: “I don’t know, since he’s got some priority dates that go way back.”

          Correction: He has made claims for priority dates that go way back.

          Any claim for that benefit of an earlier filing date must still meet the requirement that it be (pre-AIA): “for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States…” Just because one makes a priority or benefit claim doesn’t mean you’re automatically entitled to it.

          He’d also be subject to (pre-AIA) 35 U.S.C. 135(b)(1): “A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an issued patent may not be made in any application unless such a claim is made prior to one year from the date on which the patent was granted.”

          1. 3.1.2.2.1

            +1

      3. 3.1.3

        I think that likely all the hypotheses that you are floating above are correct in part. Given how many claims he is pursuing, I expect that some of them can be properly rejected. On the other hand, the timeline at this point suggests deliberate delay, not just properly rejectable claims.

        An APA suit is the right resolution here. Force the PTO to move at least some of the applications to final disposition, rinse, and repeat until the whole pile is cleared.

        1. 3.1.3.1

          “Force the PTO to move at least some of the applications to final disposition”

          Where’d you get the idea that they aren’t doing this? Hyatt’s lawsuit here isn’t about the PTO sitting on his applications. It’s about a supposed rule to deny him patents, currently manifesting in the form of rejections.

          1. 3.1.3.1.1

            Sorry Ben – but history is replete with the stalling of final dispositions for Hyatt.

            Pull your head out.

          2. 3.1.3.1.2

            Where’d you get the idea that the[ PTO are not moving Hyatt’s cases to final disposition]?

            Res ipsa loquitur. When you have applications filed in the 1970s still pending in 2022, that bespeaks willful stalling.

            Mind you, Hyatt could have filed his APA claims decades ago, so that willful delay goes two ways. I would be fine with the idea of rejecting all his claims for prosecution laches. One way or the other, however, the PTO needs to give rejections that are ready for CAFC review already.

            1. 3.1.3.1.2.1

              “When you have applications filed in the 1970s still pending in 2022, that bespeaks willful stalling.”

              Sure. But does that actually tell you anything about recent behavior?

              I think that you can see that if a process takes 3 years, the lack of completion during the last 2 years provides no evidence of whether the process was actively being worked during those 2 years.

              “One way or the other, however, the PTO needs to give rejections that are ready for CAFC review already.”

              Let’s take a look at the district court opinion…

              Following limited discovery in the form of an evidentiary hearing, the Court in this case
              twice ordered the PTO to provide lists of actions taken on plaintiffs patent applications during
              specific time periods. These lists show that between June 3, 2019 and January 17, 2020, the PTO issued 82 final rejections, 17 examiner’s answers, 7 nonfinal rejections, and 132 petition
              decisions. In connection with these lists of actions, the PTO also described the overall status of plaintiffs application portfolio. The PTO concluded as of January 17, 2020 that plaintiff had abandoned 188 of the 408 patent applications pending before the PTO in 2013. Of the 188 applications the PTO considers abandoned, plaintiff has filed post-abandonment petitions in approximately half of those applications. Four of plaintiffs patent applications are involved in
              plaintiffs ongoing appeal to the Federal Circuit.
              “.

              Do you think those 188 abandonments were all prior to a final rejection? Do you think sending 17 cases to PTAB in 6 months is not evidence of active prosecution?

              The recent PTO is actively working these cases. Not even Hyatt suggests otherwise.

              1. 3.1.3.1.2.1.1

                Deemed abandoned (and that ‘deeming’ contested) is very very different than an applicant’s actual abandoning.

                But you be you Ben, and continue to attempt to defend the Office behavior.

                There is no possible way your ‘credibility’ could go lower, eh?

              2. 3.1.3.1.2.1.2

                [S]ending 17 cases to PTAB in 6 months is… evidence of active prosecution[.]

                Good. Let’s wrap it up. I was sympathetic to the PTO’s workload arguments 5 years ago, but at some point that excuse wears thin, and we are now past that point. If—as you contend—the PTO is finally getting on the stick, I am glad to hear it.

      4. 3.1.4

        Don’t get it. Is the PTO really that incompetent?

        But don’t you know Night Writer, being an examiner is “the hard,” and even though applicants are expressly limited to what is filed (the sum total of which examiners are tasked to examine from the very beginning), examiners are “worn down” — leastwise as championed by that non-bureaucrat (/s) 6.

    2. 3.2

      Gee, maybe the (oopsie) admission by the Patent Office when SAWS was exposed – and then retired primarily Because it was exposed might be pertinent here…

      After all — per the Office — SAWS was only one of many such (shadow) “quality” programs — violating 37 CFR 1.2.

    3. 3.3

      “transferred to a junior patent examiner and he accidently told me the policy”

      A Taco Bell cashier once told me that there is dog meat in their taco filling.

      1. 3.3.1

        … and SAWS is not the violation of 37 CFR 1.2 that you are looking for 👋

      2. 3.3.2

        Cute as always Ben, but not fair as always as well.

        The application had been pending for something like 10+ years and had many, many rounds of prosecution. So, what the junior examiner told me was born out by the behavior of the PTO. It was round after round of nonsense rejections.

        What people don’t seem to get is how unfair this is to the applicant who is wasting 10’s of thousands of dollars.

        1. 3.3.2.1

          And I’ve been a patent attorney for a long time and had never seen anything like this and haven’t seen anything like this since.

          Just round after round of nonsense where basically the same rejection is made with different art.

          It was like Hyatt too in the sense that it had a very early priority date and would have been a fundamental patent with pretty much every chip infringing the claims.

        2. 3.3.2.2

          But if I found a dog’s nail in my taco, it wouldn’t mean that Taco Bell as a company regularly puts dog meat in tacos. Much, much more likely is that this solitary cashier is contaminating the food.

          Honestly, I can easily imagine a junior suffering under an intransigent primary inferring that there is a no-allowance policy, when there is no such policy. And that is a much simpler explanation than some TC director identifying your application as one that can never be allowed and directing each examiner who handles that application to reject it forever.

          In any case, did you ever appeal?

          1. 3.3.2.2.1

            Funny Ben — have you ever (also) admitted to the existence of SAWS?

            1. 3.3.2.2.1.1

              I know anon. Ridiculous comments from Ben given the admission by the PTO of SAWS.

              (And yes Ben it was appealed and the rejections just continued on and on…)

              1. 3.3.2.2.1.1.1

                The funny thing is, Ben exemplifies why Hyatt is entirely justified (another “funny guy” is Paul, as his posts insinuate that Hyatt is somehow being dishonest (or “too” tricky) in leveraging the law.

                Whatever the merits — it STILL should be the merits that drive whether grant is achieved or not.

                1. >>Whatever the merits — it STILL should be the merits that drive whether grant is achieved or not.

                  Well that is the left. The ends justify the means.

                2. One needs a translation from the Woke.

                  This is just one more example, another motte and bailey.

        3. 3.3.2.3

          “What people don’t seem to get is how unfair this is to the applicant who is wasting 10’s of thousands of dollars.”

          This argument is true, but it would have more weight if people were only using the patent system, ever, to get protection for their device/method etc. rather than trying to use them as lotto tickets. The later being literally what half the apps I take care of appear to be at filing. You first have to literally break these people of their lottery mindset, and finally they get down to wanting to protect their device/method etc. If that was the other way around then we could see force behind that argument you’re making.

          1. 3.3.2.3.1

            No 6 — you may not impute intent. That is simply out of bounds.

            1. 3.3.2.3.1.1

              “impute intent”

              No need to “impute intent”. I literally heard the intent, on the phone last week. And many times before that. Further, it isn’t exactly hard to see what people are doing with the claims. Doesn’t take a rocket genius.

              1. 3.3.2.3.1.1.1

                Please Pardon Potential rePeat…

                Your comment is awaiting moderation.

                May 16, 2022 at 8:51 am

                What you “heard” is what people have expressed as their feelings.

                Such has no bearing — at all — on examining the claims on the merits.

                Remember that word? Merits? Goes with ‘meritocracy’….

    4. 3.4

      I had a pre-GATT application that I could not get out of a neverending Board appeal cycle. We would appeal and either get bounced back by the Examiner who, after years of prosecution, would simply add new references, or we would get to the appeal and be bounced back to the examiner by the Board with new rejections and/or references. We could not get a final decision appealable to the Federal Circuit. It was so frustrating. Our only choice was mandamus, which the applicant contemplated, but dropped after the Hyatt failure.

  8. 2

    Go, Gil, go.

    Many 1,000’s of your fellow independent inventors around the world are now — and always have been — rooting for you.

    Your David-vs-Goliath fight is honorable; your cause just.

    Patent Office leadership is hoping you d.i.e. so they won’t have to issue the patents they know you’re entitled to . . . believing your heirs will just give up once you’re gone.

    Don’t let them get away with it.

  9. 1

    Get it right! Ted Sr’s signature move was the cobra clutch. You did a quick good gel search and found the signature move of his son!

    Too bad you could not fit in George the Animal Steele into this article.

      1. 1.1.1

        That is Ted Sr. Sorry, I was relying on my memory from waaaaay back, clearly all fogged up now.

        But you do need to find a pic of green-tongued George Steele eating a turnbuckle.

      2. 1.1.2

        Mr. Hyatt’s face is on the wrong body, as he is the one that the move is being put upon.

        Or maybe this is meant to be 1984’d.

        1. 1.1.2.1

          Another term like Motte and Bailey which was used PERIMETER

        2. 1.1.2.2

          “Mr. Hyatt’s face is on the wrong body, as he is the one that the move is being put upon.”

          I thought that as well at first but I think D’s pic means to say that Hyatt has the PTO in the hold.

          1. 1.1.2.2.1

            I do not see that as anything but one’s projected wishful thinking, and is just not reachable given both the actual content and the context of the long running narrative that is editorially championed.

          2. 1.1.2.2.2

            To be clear, that is not Prof. Crouch’s “pic.” It was authored by some anonymous PTO employee, not by Prof. C.

          3. 1.1.2.2.3

            I agree that the image unambiguously poses Hyatt as the aggressor.

            I’d be interested in seeing the story behind the image, but I’m not surprised that neither Hyatt nor the PTO would want to go into that detail.

            1. 1.1.2.2.3.1

              but I’m not surprised that neither Hyatt nor the PTO would want to go into that detail.

              You continue to be the tone-deaf examiner that you are, Ben.

              “neither Hyatt”….? Really? Who do you think PUT this image into the court records?

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