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Action and Inaction: Either way, Hyatt loses at the Federal Circuit

by Dennis Crouch

Inaction is generally defined as “the lack of action.”  The two terms are antonyms.  Still, courts regularly find that–at times–inaction constitutes action.  Most of us learned in criminal law about crimes of omission where the actus reus is the “failure to perform a legal duty even when one has the capacity to do so.”  The Federal Circuit performed this analysis in its recent decision in Gilbert Hyatt v. USPTO, 21-2324, — F.4th — (Fed. Cir. Sept 8, 2022).

Hyatt’s microprocessor patent applications have been pending since the 1990s and claim priority back much earlier filings.  All this was prior to the 1995 implementation of the Uruguay Round Agreements Act that started measuring patent term from the filing date. Under the old rules that govern Hyatt’s applications, a patent is given force for 17 years following issuance.  For the most part, these applications are also unpublished and the file histories are kept secret.

Hyatt’s appeal here relates to his pending U.S. Patent Application No. 08/435,938.  Back in 2013 the application included about 200 pending claims. However, the USPTO forced Hyatt to select eight of those claims for examination as part of the PTO’s Hyatt-Management-Efforts.  The examiner then rejected all eight of those claims.  Hyatt then significantly amended the pending claims.  According to the Federal Circuit, the amendments replaced all of the words of one of the claims except for the “A” starting the claim and the word “comprising.”  The examiner then responded with a restriction requirement.

For most patent applicants, restriction requirements are just slightly annoying and add some cost to the clients. But, for the most part the restriction/divisional don’t substantially reduce the rights. And, in fact at times they can be beneficial because they avoid obviousness-type double patenting problems.

For Hyatt, the restriction requirement was very problematic.  If he filed a divisional application to the remaining claims, he would lose his pre-GATT status.  The result for the divisional application would be zero-days of patent term.  Hyatt filed a civil action that the PTO’s restriction requirement violated the Administrative Procedure Act (APA).  In particular, Hyatt pointed to 37 C.F.R. § 1.129 as prohibiting the restriction practice. The district court sided with the USPTO as has the Federal Circuit on appeal.

Section 129(b) generally prohibits the USPTO from issuing a restriction requirement in applications that has a priority claim from at least three years before the the June 1995 cut-off.  Hyatt’s case meets that three year timeline.  The provision also includes the following exception: A restriction requirement is allowed if: “(ii) The examiner has not made a requirement for restriction in the present or parent application prior to April 8, 1995, due to actions by the applicant.”   The fight here is on the question of whether the PTO’s failure to issue a restriction requirement prior to April 1995 was “due to actions by the applicant.”

Due to Action by the Applicant: The USPTO’s explains that it didn’t issue a restriction requirement pre-1995 because, back then the application’s claims were all directed to the same invention.  Hyatt’s amendments 20-years later necessitated the restriction. In this scenario, the USPTO explained that Hyatt’s pre-1995 action was that he “failed to disclose claims to a separate invention”  pre-1995.

On appeal, the Federal Circuit agreed that Hyatt’s pre-1995 actions could be characterized as the action of “withholding” the future claims, and it is easy imagine the causation chain–the PTO’s failure to issue a restriction pre-1995 was due to Hyatt’s withholding of the future claims.  Since around 2001, the MPEP explanation of how the rule works included an example that appears to exactly match Hyatt’s situation:

Examples of what constitute “actions by the applicant under 37 CFR 1.129(b) are: … (C) applicant disclosed a plurality of independent and distinct inventions in the present or parent application, but delayed presenting claims to more than one of the disclosed independent and distinct inventions in the present or parent application such that no restriction requirement could be made prior to April 8, 1995.

MPEP 803.03 (8th Ed, 2001).  Here, Hyatt disclosed several different inventions “delayed presenting claims” until much later.  The court notes, as it always does, that the MPEP does not carry force of law. Still, the manual does at least put everyone on notice.

Affirmed — the restriction requirement stays.

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Prior Articles:
Duplicative-Litigation Doctrine Stalls Avoidance of Discovery Penalty
Personal Jurisdiction: Is it Still Federal Circuit Law?
Musical Chairs and Corporate Love Triangles
Patent Law and the False Claims Act.
Whither the Reverse Doctrine of Equivalents

Happy to talk through interesting cases -- Dennis Crouch

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