by Dennis Crouch
Gil Hyatt v. Hirshfeld (Fed. Cir. 2021).
Patent terms generally last for 20-years from filing. Since the prosecution process typically takes about three years, the result is roughly 17 years of effective patent term. That amount can shift somewhat depending upon various factors, including patent-term-adjustment, terminal disclaimers, patent family size, prosecution timing, and payment of maintenance fees.
The 20-year-from-filing rule started on June 8, 1995 (the GATT deadline). Applications filed prior to that date were treated under the old rule that patent terms last for 17-years from the issue date.
Like many other patent applicants, Gil Hyatt filed a large number of continuation patent applications in the days leading up to the GATT deadline. One difference from most applicants is that Hyatt’s applications were already quite old — claimed priority back to filings from the 1970s and 1980s. The big difference today is that Hyatt’s 300+ cases are STILL PENDING. Under the rules, if these issue as patents then they will be given 17-year patent terms from the issue date — even on applications claiming priority back to the 1970s. To be clear, Hyatt’s applications focus on fundamental aspects of microchip and integrated circuit technology and so could be extremely valuable as enforceable patents.
Hyatt was already a known quantity at the PTO, having battled over his integrated circuit patents in the past, and the PTO very quickly began treating Hyatt a bit different than other applicants. Part of the difference also came as Hyatt amended his applications to add claims — a total of 115,000 (averaging 300 claims per patent application). From 2003-2012, the PTO stopped examining Hyatt’s applications pending litigation in a couple of the cases that culminated in the Supreme Court’s decision in Kappos v. Hyatt, 566 U.S. 431 (2012). When it did start examining, the PTO spent extra hours examining Hyatt’s applications and eventually calculated that it would “532 years of examiner time” to process Hyatt’s applications — this is the equivalent of about 40,000 “typical” patent applications.
Things eventually moved forward with some applications. This case involves four applications that were rejected by the examiners and the PTAB. Hyatt then filed a civil action 35 U.S.C. §145 seeking a court order that the USPTO issue his patents.
The PTO raised an old, but rarely used defense–prosecution laches. See Woodbridge v. United States, 263 U.S. 50 (1923); Webster Elec. Co. v. Splitdorf Elec. Co., 264 U.S. 463 (1924).
Any practice by the inventor and applicant for a patent through which he deliberately and without excuse postpones beyond the date of the actual invention, the beginning of the term of his monopoly, and thus puts off the free public enjoyment of the useful invention, is an evasion of the statute and defeats its benevolent aim.
Woodbridge. The PTO argued that Hyatt should be estopped from obtaining these patents or presenting further arguments based upon the equitable doctrine. The district court held a five-day bench trial on laches and eventually concluded that the PTO should have done a better job. Although Hyatt was not easy to work with, substantial aspects of the blame-for-delay rest with the PTO. In particular here, the Judge entered a R.52(c) judgment against the PTO – finding that it had failed to present a prima facie case of prosecution laches. The district court also found some of the claims at issue were patentable and thus issued an order to the PTO to issue those claims.
On appeal, the Federal Circuit has revived the defense and remanded for further consideration–holding that the district court “failed to properly consider the totality of the circumstances.” Effectively, the PTO’s delay does not excuse Hyatt’s actions. This is a 40 page opinion filled with various procedural gamesmanship, but the court primarily noted several actions:
- Repeated complete rewriting of claims after receiving rejections — often 30+ years after filing, and often in identical form found in one of the other applications.
- Claiming priority to a large number of prior applications with a variety of priority dates.
- Long specifications.
The appellate court writes that Hyatt’s “patterns of prosecution conduct created
a perfect storm that overwhelmed the PTO.”
On remand, the Judge will now permit Hyatt to present his defensive evidence and then rule on the issue of prosecution laches. The court also held “in abeyance ” the appeal with respect to the other issues of anticipation and written description.
Has anyone ever alleged that Hyatt committed inequitable conduct during prosecution at some point during the last 40 years?
Insinuations galore – just look at any Paul Morgan post on the topic.
Not me, and inequitable conduct is about unenforceability, not invalidity, and does not normally ever get raised until the patent issues AND is being used to sue some company.
I think the thrust is a ‘lack of clean hands’ in a balance of equities during prosecution here Paul.
You seem to be being a bit obtuse….
The point is if there was inequitable conduct in a great-great-great grandparent application, the inequitable conduct renders subsequent patents issued from child applications unenforceable. If that happened in any Hyatt patent, then it matters not how many child applications are still pending at the USPTO. Even if they issued, they are basically stillborn. Or at least that’s my understanding of it.
Was it actually to the tactical advantage of the PTO Solicitor here that “prosecution laches” [in the PTO] could be further developed and argued in the District Court due to Hyatt’s own selection of that District Court 35 USC 145 civil suit alternative rather than the usual direct appeal from the PTO PTAB to the Federal Circuit?
By the by,
Before REYNA, WALLACH, and HUGHES, Circuit Judges. REYNA, Circuit Judge.
(the aversion to noting the judges involved remains most odd)
Agreed.
The Court’s decision mentions that Hyatt waited to present claims for examination until between 12 and 28 years after their alleged priority dates. Since the Hyatt applications are pre-AIA, I wonder whether than could be vulnerable for rejection under the late claiming doctrine set forth in 35 USC 135(b), notwithstanding their alleged priority.
“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.”
“as, a claim of an issued patent ”
I think that that part stops you.
I suspect there are plenty of issued patents that predate the first presentation of Hyatt’s added claims by more than a year. This first presentation date is different from (and later than) the alleged priority date. The real question would be whether any of those patents have claims that are the same or substantially the same as what Hyatt is claiming (which would otherwise form the basis for an interference count but for the statutory bar established by pre-AIA 35 U.S.C. 135(b)).
I think that you are confusing yourself in regards to what actions (and what self-obtained patents might be in effect.
Do your really want to throw in “interferences?”
I suspect that given Judge Lambreth’s prior decision, it’s likely that this ends up with the same result after a full trial. But the fault here really seems to be that he granted JMOL following the USPTO’s presentation of the case, and found that the claims failed as a matter of law. He’ll get a lot more deference after a full trial and Rule 52 FOF/COL, and it could result in patents ultimately being issued.
I don’t think either party is necessarily wholly blameless here but there are a lot of red flags in Hyatt’s prosecution conduct that the Federal Circuit flagged.
I’ve read one of these applications. Frankly, I think a few competent examiners could make short work of this under 112 particularly that a person skilled in the art would have to recognize the invention somewhere in the specification.
I suspect you’re right (112 should be able to quickly handle many of these claims), and I think it’s fascinating that the office is not taking this approach. I mean, they’ve suspended the rule of “applicants get as many claims as they pay for” because these cases are so special, so why wouldn’t they suspend compact prosecution for these special cases?
That’s not a rhetorical question! I’m curious what people think the explanation is.
I suspect it’s because the implementation of 112 in the courts is too dopey to rely on, and the office is terrified of losing a 112 only appeal.
RE: “they’ve suspended the rule of “applicants get as many claims as they pay for” because these cases are so special”
That isn’t quite true. Of course, there are no statutory constraints set out expressly in 35 U.S.C. 112 on the number of claims and the fee structure implies that one can file with more than 20 claims, provided you pay for them. But there is still a regulatory provision in 37 CFR 1.75(b) stating: “More than one claim may be presented provided they differ substantially from each other and are not unduly multiplied.” This can be the basis of a rejection for an “undue multiplicity of claims”. As stated in MPEP 2173.05(n):
“Where, in view of the nature and scope of applicant’s invention, applicant presents an unreasonable number of claims which are repetitious and multiplied, the net result of which is to confuse rather than to clarify, a rejection on undue multiplicity based on 35 U.S.C. 112(b) or pre-AIA 35 U.S.C.112, second paragraph, may be appropriate. As noted by the court in In re Chandler, 319 F.2d 211, 225, 138 USPQ 138, 148 (CCPA 1963), “applicants should be allowed reasonable latitude in stating their claims in regard to number and phraseology employed. The right of applicants to freedom of choice in selecting phraseology which truly points out and defines their inventions should not be abridged. Such latitude, however, should not be extended to sanction that degree of repetition and multiplicity which beclouds definition in a maze of confusion. The rule of reason should be practiced and applied on the basis of the relevant facts and circumstances in each individual case.” See also In re Flint, 411 F.2d 1353, 1357, 162 USPQ 228, 231 (CCPA 1969). Undue multiplicity rejections based on 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, should be applied judiciously and should be rare.”
Additionally, 37 CFR 1.146 states “if such application contains claims directed to more than a reasonable number of species, the examiner may require restriction of the claims to not more than a reasonable number of species before taking further action in the application.” The other species could be the subject of divisional applications (although this would necessitate a post-GATT filing at this point, which wouldn’t do Hyatt much good).
“Unduly” multiplied and more than a “reasonable” number aren’t actually defined in the rule, but having many hundreds of claimed species would probably count as more than a reasonable number.
“but having many hundreds of claimed species would probably count as more than a reasonable number.”
Minor quibble: number alone would not (could not) be the driver, as there would need be repetition of the claims – that is, a species would be claimed a number of times in a manner not distinct.
While I have not seen these particular claims, and can offer no comment on these claims, I do recall some Pharma cases in which the possible number of species that could be claimed without repetition was in the billions.
That may be true for many of the huge number of later-added Hyatt claims. Such rejections are apparently in these very subject applications, as Dennis indicated by: “The court also held “in abeyance” the appeal with respect to the other issues of anticipation and written description.” But note that it was only quite recently that the PTO stopped discouraging examiners from giving 112 rejections, and District Courts do not often invalidate claims on that basis.
Prior proper 112 rejections (to the degree necessary to establish a prima facie case) were simply too difficult for the large majority of examiners.
Of late though, such niceties have gone the way of Restriction practice (or petitions), and 112 has morphed into an alternative (or combination) eligibility rejection path.
Actually, I missed the fact that Hyatt had already persuaded the DC judge on some of the 112 issues. That rather undermines the idea that the PTO “could make short work of this under 112.” They took their time and still lost on 112 at the initial trial.
I missed that too.
I’d have to read what the DC said.
But just looking at the claims and specification, I would think they would get a 112 with either enablement or written description.
I read a good portion of the (quite lengthy) the Federal Circuit’s decision.. I’m sympathetic to neither party here. And this has been a very longstanding opinion of mine.
The USPTO has been dragging its heels for years/decades on these applications.
While Hyatt (and/or his attorneys) has/have been instrumental in pointing out past abuses by the USPTO, he/they are clearly trying to game the system to the nth degree.
When I’m prosecuting before the USPTO, I just ask that they be reasonable. In turn, I’ll do my best to be reasonable. I don’t see that happening here — particularly by Hyatt. In the past, he likely had to deal with an unreasonable USPTO, but it seems that the USPTO is trying to make some effort in moving things along.
If I was to make a prediction (and under the assumption that these claims are exceptionally broad), I would say that once any of the multitude of still pending applications are issued as a patent and once they are litigated, a district court is going to invalidate them for SOME reason and the Federal Circuit will affirm. The Federal Circuit isn’t afraid to kill a patent for loosely statutory reasons, so they (or even the Supreme Court) will craft some rule (hopefully) only applicable to Hyatt’s patents in order to invalidate them.
I just don’t see the Federal Circuit allowing Hyatt’s issued patents to exist freely in the wild. It (i.e., the crafting of extra-statutory, judicially-made rules to kill Hyatt’s patents) isn’t something that I want to see happen, but that is what I predict will happen.
A good analysis Wandering. I think, though, that the PTO could deal with issues much better. It would not be that hard to examine these application properly.
The thing is that the initial application is very broad and very cleverly written. But from I’ve seen I could either reject every claim under 112 or 102.
>he/they are clearly trying to game the system to the nth degree.
Gaming doesn’t necessarily map up to the facts necessary for “latches.” If anything, Hyatt seems to have been doing the polar opposite of delaying.
Maybe something similarly obscure, like a prolix rejection, would fit better.
Gaming doesn’t necessarily map up to the facts necessary for “latches.”
I didn’t say it did. Rather, it is more of the vast number of duplicate applications and duplicate claims.
>I didn’t say it did
Fair enough.
Another surprising aspect is that the USPTO has the authority to reject based on laches, the old equitable doctrine. How is the USPTO prejudiced by delay, reasonable or not? What statutory authority are they relying on?
But, in fairness to the USPTO, the Federal Circuit doesn’t seem to care.
Re: “Hyatt seems to have been doing the polar opposite of delaying.”
Seriously? Just as one more additional example, in addition to those noted in the Fed. Cir. decision itself: Hyatt had clear grounds years ago for filing an APA suit against the PTO to end the excessive PTO delays, as that statute provides for, but he delayed so many years that the APA statute of limitations had run and he could only file a mandamus action instead – the very much suit noted at 1.2.1 below.
Second, the court concluded that Mr. Hyatt’s “claim shifting”—or amending claims so significantly “as to effectively create a new claim”—did not warrant a finding of prosecution laches. Id. at 137–38. The district court again faulted the PTO for “accept[ing] the amendments and continu[ing] examination” in such cases. Id. at 137.
Reminder to always read up on your MPEP examiner kids.
Random,
I do not think that you are portraying the proper takeaway from that citation.
The key word of “again” references an earlier portion of the decision at which point merely “read[ing] up on your MPEP” would be the deemed failure of the Office.
Basically, the court lambasted the Office for NOT doing more on its end – including allowing itself to be slovenly ‘bound’ to its MPEP to the point of being moribund.
I did find it interesting the court’s insertion of an applicant ‘being helpful’ in accelerating prosecution. Timing for applicants is not so dictated by the law.
If there were grounds for holding any response as non-responsive, why didn’t the PTO do so? How is it “prosecution laches” to file a reply that is within the rules?
Having said that, Hyatt is a total j#rk. Guy has created more bad precedent than any other applicant in history.
Having said that, Hyatt is a total j#rk. Guy has created more bad precedent than any other applicant in history.
Agree on the first point (but not excusing the USPTO’s past behavior). As to the second point, I think there are a handful of (current) Federal Circuit judges that would give him a run for his money.
Which judges are you thinking of that created bad precedent as an applicant?
Rather than accepting the “claim shifting” amendments and continuing examination, the PTO should have applied its own rule in 37 CFR 1.145 (Subsequent presentation of claims for different invention):
“If, after an office action on an application, the applicant presents claims directed to an invention distinct from and independent of the invention previously claimed, the applicant will be required to restrict the claims to the invention previously claimed if the amendment is entered, subject to reconsideration and review as provided in §§ 1.143 and 1.144.”
Apparently it didn’t do so at the proper time and cannot complain about it now.
Two other Federal Circuit cases on prosecution laches:
Symbol Technologies v. Lemelson.
Cancer Research Technology v. Barr
Clause 8 podcast interview with Gil Hyatt if anyone is interested in learning more about his story: link to ipwatchdog.com
Thanks Eli!
Thanks Eli. Listened to it before; time to listen again.
From what I’ve heard about Hyatt’s claiming practice and his filing of numerous continuations and continuations-in-part, I’ve always thought that most of the claims would be vulnerable to rejection on prior art grounds if the PTO would deny the benefit under 35 U.S.C. 120 on grounds that the parent/grandparent/great-grandparent/etc. application(s) fail to disclose the now claimed subject matter “in the manner provided by the first paragraph of section 112 of this title” [now 112(a)]. It would involve the extra work of looking through the chain of prior applications to determine the actual effective filing date of each claim based on what is or is not adequately disclosed, and then applying the appropriate intervening prior art against each claim. Perhaps they’ve been doing this already; but if they’ve simply been avoiding conducting any examinations at all, then perhaps not.
Mark, you must be thinking of Lemelson patents. Any continuations Hyatt would file after the 1996 patent term law change based on his old applications would make them instantly expire because their parent filing priority date would go back more than 20 years.
Could the Patent Office be secretly hoping / waiting for the passing of one of the world’s greatest inventors?
Live forever, Gil.
Live forever.
I think that painting Hyatt as a saint is neither warranted – NOR pertinent.
In fact, the “party as a sinner” has a better Sir Thomas More effect.
“NOR pertinent.”
Try as I might my friend, I can find nothing in my comment saying — or even intimating — that Gil’s a saint.
Indeed, no human is, will be, or ever was.
It was your adulation as “world’s greatest inventor” that drew the parallel.
Well, yes, he is one of the world’s greatest.
But hey — Edison was also one of the greatest . . . yet was certainly no saint.
Gil played by the rules.
The Patent Office didn’t.
Then they had the patent law changed because of Gil’s success in beating them.
He is still beating them.
And the Patent Office still doesn’t play by the rules.
What is the new name they gave to SAWS?
I hear what you are saying, NOiP, but offer only a minor quibble:
“What is the new name they gave to SAWS?”
There is no new name.
That being said, when the Office finally fessed up and admitted what it (and MANY examiners) had been denying, they did so in a ham-fisted manner in which they admitted that SAWS was but one of MANY such (shadow) programs.
ALL of these – of course – violate 37 CFR 1.2.
And yes, that is yet more of the Office not playing by the rules.
And the Office is STILL not playing by the rules – even in the manner in which they are attempting current rule changes.
>Live forever, Gil.
It probably doesn’t matter. IIRC, Lemelson’s estate was the big winner in that saga, not Mr. Lemelson.
“When it did start examining, the PTO spent extra hours examining Hyatt’s applications and eventually calculated that it would “532 years of examiner time” to process Hyatt’s applications — this is the equivalent of about 40,000 “typical” patent applications.”
In what document can I find this calculation? It sounds like complete nonsense.
(532 years)/(40,000 applications) = 0.0133 years/application = 116.5 hours/application.
A junior examiner in a high-examination-time area gets something like 43 hours per application, and the “typical” examiner is not getting 43 hours. So suggesting 116 hours/application is “typical” appeared to be truly outrageous.
Good point Ben.
Your 116.5 hours/application is based on an examiner working 24/7/365 which is not the metric the Office likely used. Even a generous 2000 hours/year yields a more realistic 26.6 hours/application.
“Your 116.5 hours/application is based on an examiner working 24/7/365 which is not the metric the Office likely used. Even a generous 2000 hours/year yields a more realistic 26.6 hours/application.”
Ah! That’s it! I was thinking in terms of man-hours, and missed that the conversion to man-years included a performance factor. Thank you very much!
In my defense, they did say “years of examiner time” rather than “examiner-years.” The former should probably be understood to be synonymous with examination time, which does not account for off-the-clock time.
Though I still messed up slipping into “examiner-years” in my own comments.
I agree with Ben here — there should not be a 24/7/365 type of ‘calculation.’
But according to this PatentlyO article (link to patentlyo.com), 80+% of typical patents issuing now have 20 claims or fewer. Hyatt’s applications have 300 claims on average. So if a junior examiner gets 43 hours to examine a 20-claim application, is 116 hours for a 300-claim application that unreasonable?
Also a good point.
Any thought/s Abstract on why claim count is decreasing; particularly once you’re below the excess -claims fee limit?
Decreasing to 20, absolutely, because few clients are willing to pay the additional claim fees (even if they really should).
Beyond that? I can only guess that since the dataset there was on issued patents, it’s from applications originally filed with 20 claims; Examiner comes back with allowable subject matter in dependent claims; and Applicant just cancels them and moves them into the independent claims but doesn’t add replacement new claims (out of laziness or to save budget). That would help explain why there’s not such a huge number at exactly 20.
Thanks Abstract. Seems logical. And I’m with you on “being sure to get to at least the 20.” Why not get all that you paid for?
And so many specs out there that easily supported more than 20 worthwhile claims.
Pro Say,
To your comment of:
“so many specs out there that easily supported more than 20 worthwhile claims”
I have seen several different tactical approaches.
One is a flat out ‘one-shot’ approach in which the count of claims is completely disregarded and the number of claims merely reflects the depth and nuance of the innovation — be it five claims or hundreds of claims.
What I would call the standard tactical approach though is the ‘no more, no less’ 3/20 regardless of depth of specification.
For thin specifications (or narrow innovations), this tends to induce somewhat ‘bloated’ dependent claims that do not add much meaningful nuance.
For those cases that you appear to appreciate, the “extra” may serve multiple purposes, from ‘insurance’ or fallback for uncontemplated prior art, to ‘keep the family alive’ continuation material.
There is of course a spectrum of circumstances to which claim tactics apply.
Thanks anon.
“So if a junior examiner gets 43 hours to examine a 20-claim application, is 116 hours for a 300-claim application that unreasonable?”
I cannot see what you are trying to get at here.
The examination time needed to handle Hyatt’s applications was characterized in terms of “typical patent applications.” We’re given: 532 Examiner-Years = (40,000 applications)*(X Examiner-Years/application)”
If you were comparing the 532 years to non-typical applications such as “applications with 300+ claims”, you would presumably get a different number of applications than 40,000.
It actually wouldn’t be that different in practice. The PTO has rules for determining extra time for examiners due to large claim sets. An examiner who would get 43 hours for a 20 claim application, would get 44 hours for a 50 claim application, 44 hours for a 100 claim application, and 44 hours for a 300+ claim application.
So, given that the PTO would not be giving anyone 116 hours to examine even a “typical 300+ claim” application, it remains unreasonable to suggest that 532 examiner-years corresponds to 40,000 applications.
Ben, they were calculating *how long it would take* to properly examine those applications – i.e. 532 Examiner-Years.
You’re instead calculating *how long you’re given* to examine those applications: 44 hours.
That latter number has no relationship to how long the task takes and is solely up to the discretion of the office.
But if you disagree, then please allow me to assign you the task of wearing the Swiss Alps down to sea level by manually brushing them with a feather. It should take you 44 hours.
Take versus given is an excellent distinction.
I got to this conclusion a little before you in 2.2.1.
But I still think the terminology they used is poor. As you note they, they are describing “examiner-years” when they reference “years of examiner time.”
“I got to this conclusion a little before you in 2.2.1.”
No Ben – you did not get to the conclusion that Abstract iDan indicates – not yet.
It actually wouldn’t be that different in practice. The PTO has rules for determining extra time for examiners due to large claim sets. An examiner who would get 43 hours for a 20 claim application, would get 44 hours for a 50 claim application, 44 hours for a 100 claim application, and 44 hours for a 300+ claim application.
This isn’t technically true. The examiner would get one AUTOMATIC extra hour assigned by the system as soon as it goes above 25claims or 4independent claims. But the examiner can be awarded as many hours as is appropriate by their supervisor. The examiner could get 44hrs for a 300+ claim application or they could get 440 hours for a 300+ claim application. I personally would just ask a multiple of what I get for 20. So if I truly received an unrestrictable 300 claim application, I’d be sure I was getting about 225hrs for the first action (I get about 15hrs for a regular first action) before I even started (which is appropriate, you ought to spend about 6 weeks on 300 claims). Moreso with Hyatt’s application. Let them prove what the priority date is and that there’s a clear error rejection to be made. It’d tie up the QAS people for the entire year just to prove an error on allowing.
Notwithstanding my post above, number of claims is NOT always a good proxy for degree of examination difficulty.
Oh, come on, it surely takes an hour to come up with a rejection of a claim like, “The system of claim 1, wherein the network is the Internet.”
/s
As an aside, I once got a rejection that had a stupid dependent claim adding that a computer system included “a computer monitor,” and the Examiner added an entirely new reference for a 103 rejection. Like, really, dude? That would’ve been one of the few times I wouldn’t argue with an Official Notice that computer monitors are well known.
“Like, really, dude? That would’ve been one of the few times I wouldn’t argue with an Official Notice that computer monitors are well known.”
But another attorney may have argued that point. Simpler to just embrace the absurdity of the system and add the reference.
>So if a junior examiner gets 43 hours to examine a 20-claim application, is 116 hours for a 300-claim application that unreasonable?
My understanding is that the junior examiner gets the same 43 hours to examine the 300 claim application. That is, the USPTO doesn’t do any additional work to justify the extra claim fees.