Hyatt v. USPTO, Case No. 14-1300 (E.D.Va. 2014) [HyattMotiontoDismiss]
Earlier this year, Gilbert Hyatt sued the USPTO for unreasonably delaying examination of 80 of his pending patent applications — many of which have been pending for decades. See Crouch, Three Generations of Poor Examination are Enough. That case has been transferred from Nevada to Virginia but is otherwise still pending. In its most recent motion to dismiss, the USPTO explained its delay in action — noting that Hyatt has 399 pending patent applications that include a total of over 100,000 claims that apparently all have a pre-URAA (1995) filing date. While the USPTO admits that it stayed prosecution of most of Hyatt’s cases from 2002-2012, it started examining them again in 2013. Because of the many overlapping applications held by a single entity, the USPTO has required Hyatt to “streamline” his applications. The USPTO writes in its brief:
What Mr. Hyatt’s Complaint fails to acknowledge is that the 80 pending applications at issue represent roughly one-fifth of 399 applications he has pending before the USPTO, which contain an estimated total of 115,000 claims; that the size, volume, and interconnectedness of these 399 applications have created extraordinary challenges for the USPTO in examining his applications; that, faced with these challenges, the USPTO, last year, commenced a renewed effort to bring order and finality to Mr. Hyatt’s applications by requiring Mr. Hyatt to take certain steps to help organize and streamline his applications; and that, in response to that effort, prosecution is now actively ongoing in Mr. Hyatt’s applications, with Mr. Hyatt amending many of his claims and engaging in an iterative process with the 14 patent examiners who the USPTO has dedicated to working full-time on his applications.
The basic argument in the case is that the USPTO is now working on the applications and that there is therefore no role for the courts to play in ordering the applications to be moved forward.
I agree with the USPTO that 100,000 claims is quite a few, although it is fairly small compared with the more than 7.5 million claims that I estimate were disposed-of in 2013 (either allowed or abandoned). Part of the problem is apparently the number of claims-per-patent-application. The USPTO writes: “almost every one of Mr. Hyatt’s pending applications has one of the largest claim sets that the USPTO has ever encountered in any application.” The USPTO is correct that such large claim sets are rare. From my database, I found that – out of the 200,000+ patents issued thus far in 2014, only six have more than 300 claims. (See. e.g., Patent No 8,694,657).
Under the streamlining procedures outlined above, the USPTO first grouped the applications into 12-families and in now requiring:
- That Hyatt select no more than 600 claims per patent family; and
- That Hyatt identify the earliest claimed priority date for each claim selected.
To move all of this forward, the USPTO has assigned 14 primary examiners to Hyatt’s cases. Based upon prior history – I suspect that number won’t be enough to keep up with Hyatt!
I applaud the streamlining effort by the PTO, but am troubled by what looks like blaming Hyatt. If he had too many claims when he filed, they could have raised that at the time. Did the PTO charge for claim fees back then? The more the PTO delays, the more there is harm for everyone who would be now be infringing decades-old technology.
“The more the PTO delays, the more there is harm for everyone who would be now be infringing decades-old technology.” I agree. The PTO has absolutely no excuse for this long delay, and should immediately assign a team of examiners to quickly examine these applications. If restriction/election requirements are needed, issue them.
If Mr. Hyatt has too many applications:
Corporations are now persons so if it is possible for a person to have too many applications then it is possible for a corporation to have too many applications.
When is the Patent Office going to stop examining IBM’s applications because they have too many of them?
Good point – I will have to look for that top filers list (I am sure that average claim count would be much much lower)
I doubt IBM’s applications are as interconnected and contain as many claims as Mr. Hyatt’s applications.
RH,
I noted the lower average claim count, but I think that you miss the attempted point – that that notion of “interconnected” has less to do with the “family” and more to do with the (juristic) person.
The Office distills Mr. Hyatt’s collection down to 12 families. How? And how many families would (or perhaps more to the point, could) ALL of the juristic person of IBM distill down to? How many patents and patent applications would that juristic person have per family?
I can guarantee you this: the number would absolutely dwarf the number that Mr. Hyatt has – and that, I believe, is the point of the post by No One in Particular.
(Be careful of conclusions drawn from ‘prior history’)
…and for comparison’s sake, how many examiners have been involved with IBM patents for the last several decades…?
(you know, in order to base any comparison on prior history and all)
I don’t follow your point about patent family vs. applicant. A large number of related applications requires extensive coordination among them to ensure consistent prosecution. A large number of unrelated applications does not.
Richard: My former supervisor was previously assigned to the special docket pertaining to Mr. Hyatt’s case. Based on what he told me, Mr. Hyatt’s applications had a lot of 112 first paragraph (pre-AIA) issues. Apparently, Mr. Hyatt filed continuations and wrote claims based on the state of the art of the decade as time progresses; i.e., whatever is the latest and the hotest, he would tried to write claims with scopes that would cover the latest and the hotest stuff.
Shocking! Nobody could have predicted such behavior, particularly not from a guy who’d already raked the industry with an invalid patent.
What gets me about this is that the PTO dumps these applications on examiners without giving them extra points for all those claims. I’ve filed an application with 185 claims and it was miserable for the examiner and totally unfair. I felt like I was tormenting the guy and yet we paid big bucks for all those claims.
You should have filed 9 applications. When you figure the extra claim fees versus the filing fees for 8 extra applications, it’s basically a wash. And then each application would have gotten its own hours/disposal on the examiners docket.
Don’t file more than 20/3 claims. If you learn only one more thing about practicing in front of the PTO, it’s this: DON’T FILE MORE THAN 20/3 CLAIMS.
Simple.
I hear what you are saying AAA JJ, but is that not just gaming the system?
All else being equal, should we not have as many claims as necessary to capture the invention – no more and importantly no less – regardless of the extrinsic effect of claim count?
Prof. Crouch had a post a while back that captured your advice – showing the statistical anomoly (and impact) of the completely arbitrary 3/20 choice.
It would not surprise me at all if the Office had instead chosen 5/50, that the graph would have been identical, but centered on the different numbers.
Should we not instead focus less on such arbitrariness? Does not such focus breed the very aspect that the Supreme Court disdains (the art of the scriviner)?
You may submit your answer in terms of legal realism if you wish.
I don’t know if 20/3 is “completely arbitrary.” What I do know is that the PTO has never, never, never, never, never, until Mr. Hyatt’s lawsuit apparently, given “extra examining resources” (i.e. time) to any examiner in exchange for the payment of extra claim fees. When I was a primary examiner, I got 13.8 hours/disposal. Didn’t matter if the case had 1 claim, or 100 claims.
“…but is that not just gaming the system?”
I have no doubt that to the uninformed it may appear to be gaming the system. But I don’t really care what the uninformed think or say. My clients get a fixed amount of the examiner’s time for their filing fee. That filing fee allows them to present 20/3 claims for the examiner’s consideration in that fixed amount of time. Presenting more claims than that simply ensures that each extra claim that I present, and my clients pay for, gets less and less and less consideration. So I don’t file more than 20/3. It’s a disservice to my clients. It’s also a disservice to the examiner. So I don’t do it.
“All else being equal, should we not have as many claims as necessary to capture the invention – no more and importantly no less – regardless of the extrinsic effect of claim count?”
I write as many claims as I think I need to protect my client’s technology. If there’s more than 20, I file more than one case.
Until the Patent Office starts assigning each application its own unique hours/disposal, that is what I will do. Like you, I have proposed several systems for doing just that that the PTO could fairly easily adopt. But they don’t want to. They want to go on charging, collecting, and spending, that’s right spending, extra claim fees without ever delivering what was paid for. Unless more applicants speak up about the issue, the PTO is not going to kill the goose that laid the golden eggs (i.e. extra claim fees). But they’re not getting any from my clients.
Thanks – a cogent position, for sure.
“Unless more applicants speak up about the issue, the PTO is not going to kill the goose that laid the golden eggs (i.e. extra claim fees). ”
I just don’t see how it is a goose here. You do know if they stopped charging for that at all then they’d just raise fees somewhere else correct?
“Like you, I have proposed several systems for doing just that that the PTO could fairly easily adopt. But they don’t want to. ”
You say “fairly easy” but I’m not so sure about that. Even glancing at every incoming application increases the amount of management required per application from substantially zero to a finite amount.
“I just don’t see how it is a goose here.”
You don’t see how charging, collecting, and spending extra claims fees for 20+ years without ever once providing applicants and examiners what was paid for is a golden goose for the PTO?
You been there too long.
“You say ‘fairly easy’ but I’m not so sure about that. Even glancing at every incoming application increases the amount of management required per application from substantially zero to a finite amount.”
The PTO has all the data it needs. An algorithm could be written fairly easily, yes, fairly easily, to calculate a unique expectancy for every application. Nobody needs to even “glance” at the app.
“When you figure the extra claim fees versus the filing fees for 8 extra applications, it’s basically a wash. And then each application would have gotten its own hours/disposal on the examiners docket.”
And you get 8 extra searches. Possibly bringing in new eyes on your search.
Excellent point. Of course, it exponentially increases your IDS burden but if you are truly interested in getting the most relevant prior art, it’s worth it.
As Taxpayers, some of us are losers, (we pay FAR more into the system than the “services” we get out of it…e.g. Bill Gates) while others of us are winners (people who produce far less than what they are given by the nanny state).
Anyone care to guess whether Hyatt is a Taxpaying loser or winner? In sum total (dollars) what expenditure are taxpayers likely paying for his sole benefit (assuming it is only a game and his sole benefit is entertainment)?
The counter to that argument is that taxes are taken on a percentage, and that “playing the game” (for argument’s sake even allowing the notion that the play is somehow unethical, illegal or otherwise morally wrong) STILL rewards that “bad” game playing with unjust enrichment no matter how much taxes are paid into the system regardless of what others you want to compare to.
I guess the real losers are the rest of the Taxpayers… unless there is some “bonna fide”: anti-gravity or faster-than-light travel invention in there….
In essence, it comes down to whether or not Mr. Hyatt meets the legal requirements for obtaining patents (even jumbo patents that meet the law must be granted).
Perhaps there is a bona fide reason for the real delay (yes, there has been a real delay by the Office, and their “but we are moving now, some decades later should be good enough so don’t bother us” line of thinking is reprehensible.
But the government may have a point in its argument concerning whether that issue is one that is justiciable. My quick opinion is that it should be, as the federal agency should be held accountable and made to explain why the its delay can be deemed “reasonable.”
As others have posted, the shear size alone argument does not seem to pass muster, and indeed something more seems afoot.
Government’s brief at 10-11 talked about Hyatt v. Kappos would affect all of Hyatt’s cases and therefore, all actions are suspended pending its disposition.
Thanks Richard – saw that.
I don’t think the evidence submission issue affects examination at all, do you?
The Section 145 proceeding does not – and cannot – change the record for which the Office proceeds under.
I hope that you reasoned through the smokescreen.
“In sum total (dollars) what expenditure are taxpayers likely paying for his sole benefit (assuming it is only a game and his sole benefit is entertainment)?”
Not sure I take your meaning. Other than this court case (which yes, consumes public monies), how are taxpayers charged with paying for Hyatt’s entertainment?
I would add too that the court case – unless found to be frivolous – cannot be automatically assumed to be a waste of taxpayers’ monies.
Easily at first blush, Mr. Hyatt appears to have a colorable, if not legitimate cause for using those taxpayers’ funds.
You don’t have to like the guy, or even like how he is spending his money to recognize that a federal agency must play by its own rules, and cannot use any means to reach a (perhaps even desirable) end.
The ends simply do not ever justify “whatever” means.
Ever.
As Taxpayers, some of us are losers, (we pay FAR more into the system than the “services” we get out of it…e.g. Bill Gates)
Try to believe it, folks.
The PTO is not funded by taxes.
Issue obviousness-type double patenting rejections over 5,619,445 or similar others, let him file TDs, then grant the apps – DOA.
Mellow,
Does not the fact that these are pre-1995 applications (with a different law dictating when they expire) preclude your “DOA” status?
And in very real part related to post 1995 Patent Term Adjustment law, the extension of patent term for non-applicant delay have an analogous justification for NOT allowing a government stall to render patent term inert?
anon, do you get PTA in an application that will adjust your expiration date past the expiration date of the disclaimed-over patent? (I believe the answer is “no”.)
Does that make it right? Dunno.
But despite my initial (flippant) comment, to the extent any of his pending apps honestly can be rejected as obvious attempts at double-patenting in view of another of his patents that expired this year (as the one mentioned above) or in prior years, I do believe they should have no term.
(Whether they can or cannot honestly be rejected in this fashion, I have no opinion.)
See my comment 1.4 below.
If you were responding to this portion of my comment, “(Whether they can or cannot honestly be rejected in this fashion, I have no opinion.)”, does directing me to 1.4 mean that it doesn’t matter if they CAN be honestly rejected in such fashion, because the PTO does it all the time in slip-shod fashion?
If so, yeah, I guess they do sometimes. But many of the OTDP rejections I see are well considered and well explained, too.
“But many of the OTDP rejections I see are well considered and well explained, too.”
My experience is the exact opposite. Most of what I get as OTDP rejections are nothing more than “the claims are rejected cuz they just broader.”
I recognize that you may be making a valid point that double-patenting may limit some of the term of “held-up” patents, but I am countering the notion that such is an effective measure for more than just the purpose of that measure and that somehow the bulk of the issue here is so easily resolved with the t001 you offer.
I don’t think you can skirt the issue of Office malfeasance so easily, nor should you (the Royal You) want to.
“I don’t think you can skirt the issue of Office malfeasance so easily”
I agree it seems they’ve botched the job. From the looks of things, purposefully so.
Accountability for that should be rendered.
I posit that the government has a legitimate right to argue that this court is just not the right vehicle to reach that accounting.
Just as Mr. Hyatt has a legitimate argument that this court is the right court to force an administrative agency to abide by the notion of “reasonableness.”
Of course, the court may find for Mr. Hyatt and not give him what he asks for.
What is your view (for argument’s sake, let’s say that the agency is found to have acted unreasonably) of te proper “correction” that the court could order?
Richard : My former supervisor was previously assigned to the special docket pertaining to Mr. Hyatt’s case. Based on what he told me, Mr. Hyatt’s applications had a lot of 112 first paragraph (pre-AIA) issues. Apparently, Mr. Hyatt filed continuations and wrote claims based on the state of the art of the decade as time progresses; i.e., whatever is the latest and the hotest, he would tried to write claims with scopes that would cover the latest and the hotest stuff.
Shocking! Nobody could have predicted that.
My former supervisor was previously assigned to the special docket pertaining to Mr. Hyatt’s case. Based on what he told me, Mr. Hyatt’s applications had a lot of 112 first paragraph (pre-AIA) issues. Apparently, Mr. Hyatt filed continuations and wrote claims based on the state of the art of the decade as time progresses; i.e., whatever is the latest and the hotest, he would tried to write claims with scopes that would cover the latest and the hotest stuff.
It would be ok except that Mr. Hyatt’s original specification that he filed way back in the 60s often do not sufficiently support what he is claiming. The PTO is having problems not just because the sheer volume of the claims Mr. Hyatt have but also the question of whether his original specifications sufficiently supports whatever he is claiming.
Richard, thanks for the detail. Once had to deal with a series over a dozen “divisionals”** filed and granted with similar claims problems. Many of the patents of this family had claims where few of the terms other than the words “and”, “is”, “the” were even presented in the spec.
**Not one of these “divisionals” contained a claim relating to the claims in the original parent’s restriction requirement.
In any event, in going through their file histories it always baffled me why the examiner wouldn’t have raised 112.
Yeah figured that was the tomchicanery going on.
“We are the most Ginormous gummint in history. We got paid, from the taxpayers, the single most largest revenue in the history of the Earth. But Mr. Hyatt, one single guy, he be swampin’ us. Please send us charity money or sumpin’ on account of us not bein’ able to handle po’ lil’ Mr. Hyatt.”
Typo. That should have been 9, not 19.
Gotcha – my mistake below (at 19.1) for not reading further before commenting.
So, if Hyatt gets his patents for those filed post-1995, what does the math say he’ll get in patent time? 20 years – 14 years later + 5 year extension max = 19 years?
Jake2, did you mean to write 9 years?
This from AAA at 8121111 in this thread:
“The EPO does a fairly good job at “compact prosecution” although they don’t call it that. The examiner searches and identifies D1 (the reference considered the closest relevant prior art) and sticks with it pretty much every time. There’s none of the shenanigans US examiners engage in like citing irrelevant art that is only relevant under the typical examiner BUI and then issue final OA in hopes of generating an RCE. The USPTO could help itself out a lot if they would adopt the EPO’s examination model.”
In reply, I say, forget that notion. It is unattainable. Why?
The EPO’s examination model is built on the foundations of civil law, the EPC and the EPC’s Implementing Regulations, all out of reach of the USPTO.
The EPO search is framed around the EPO “Problem and Solution Approach” to obviousness. It goes to the substance of the contribution to the technical field that is presented in the appln as filed (as opposed to the wording of the claim).
Any prosecution amendment away from the subject matter originally claimed will fall foul of one or more of the following prohibitions:
No switch to subject matter that has not already been searched
No amendment to a feature combination which is not directly and unambiguously derivable from the appln originally filed.
No amendment that renders the claim in any way unclear.
Consent of the Examining Division required for ANY amendment beyond the first round of post-FAOM amendment. (ED: You would do well to behave yourself. Mess with us, son, and we sure can mess with you).
No conception of what “due process” means.
6 thinks that at the EPO the Examiner on the merits is a different person from the search Examiner. That might have been the case 20 years ago, but not now. These days, the FAOM is appended to the EPO Search Report, by the Examiner who composed the search report. The composite doc is called the EESR, and it really does ease the prosecution.
>>No switch to subject matter that has not already been searched
Yeah, but it is all supposed to be searched. This is probably the weakest part of the EPO prosecution. The examiners are down right lazy about this.
As you say, Night, it is all supposed to be searched. But what do you mean by “it”?
If by “it” you mean the dependent claims, I’m with you. More than that: the EPO Guidelines instruct EPO Examiners to search even beyond that. They are upposed to search for what the Applicant will narrow down to, when all the claims as filed are shown by the search references to lack novelty.
If by “it” you mean some throwaway sentence buried in the specification that says that you can replace the “D” with “F”, in your independent claim directed to ABCDE, then I’m not with you. ABCEF is a 100%different invention, and at the EPO, for just one search fee, you get just one invention searched.
It is great then, that you see this as the weakest part of EPO prosecution. Good to know.
It all goes to show that, in First to File Country, claim drafting is the acme of the patent attorney’s skill set. Outside the USA, you get just the one shot, at drafting a case to protect the client’s invention effectively. Few possess the aptitude to do this: their special skill should be recognised as the apex of sophistication, at least equal to the skills of litigators.
Our Supreme Court has a different word (a different view) of “the patent attorney’s skill set.”
6 –
Why haven’t you commented here about the absurdity of the point system, which issues the same number of points for a FOA, whether there are 5 claims or 500?
Sorry Les, I thought it went without saying since I’ve said it a gazillion times.
Here it is for the gazillion and oneth time:
I hereby comment about the absurdity of the point system, which issues the same number of points for a FOA, whether there are 5 claims or 500, and whether there are 10 pages or 100 pages and whether it is for a new kind of old part that is easily searched or whether it is for a complete redesign of an entirely new product with many many sub-features.
Which may explain why it sat there unexamined—no one wanted it on their docket.
PTO management should have seen that they were timely examined.
The count system is a “no management required” system to begin with brosef.
You guys really do not get the point of the count system. It is to wholly (or nearly entirely) replace the act of “management”. That is literally the reason for its existence.
You guys really do not get the point of the count system. It is to wholly (or nearly entirely) replace the act of “management”. That is literally the reason for its existence.
That is painfully clear from where I sit.
So the situation is hopeless and PTO management has its hands tied.
No, we’re entirely aware of the situation and saying that if these cases were really so onerous, they should have been brought to the attention of “management” for special treatment.
” they should have been brought to the attention of “management” for special treatment.”
What if that is what happened?
Are you really that dense? These cases were CLEARLY known to management. Their choice was to do nothing. Hence, the lawsuit.
“Their choice was to do nothing. ”
And what if that was the “special treatment” you so desperately advocate them providing?
Then they should be personally liable for a lawsuit for denying him his constitutional rights.
Don’t forget to upper case the “c” in “constitutional” and the “r” in “rights”. It’ll help them sound more like a real thing 🙂
6 – I need some advice.
I have received a Notice to file corrected papers that says an application I filed was not filed with a properly executed declaration. But it was. Or at least as far as I can tell, it was.
So, I called the number at the bottom of the form about 3 weeks ago. After 5 minutes of recorded menu information it said the hold time was approximately 158 minutes and offered me a chance to leave a message. I did.
After no reply for several days, I called again. Same deal.
After some days of no response I contacted the Ombudsman. He seemed to try to help and sent an email to someone.
After a week of no response, I called him again. He gave me the name of the someone else.
I called that someone and got her answering machine which says if this is about a letter you received from the patent office, call the same number I called three weeks ago. Only if it is not about a letter should I leave a message. I left a message anyway. I’m pretty sure she wont call me back. I also tried the number her answering machine gave me (the same one I already called). This time, the wait time was indicated to be only 44 minutes. I left a third message.
If no one calls me back, what should I do?
Well as much as I’d like to help you out Les this sort of thing is not my day to day. But here goes.
Ok, so they originally didn’t give you any explanation as to why the declaration was not properly executed and it was executed in more or less customary fashion correct? I’m going to assume this is correct or else you’d have told us. And if they told you then obviously correct the problem.
It sounds like you’re getting bounced around the LIE/”underbelly of the notices” world. You’re usually dealing with people that know what the problem is but not how to tell you what the problem is. I’ve been there man. I’m surprised the ombudsman couldn’t do more for you outsiders. You may want to ring him back and just let him know what’s going on.
If it shows as being on the docket of someone already then obviously contact whomever it has gotten to the docket of.
But I take it that you just now filed the thing more or less so it hasn’t been docketed. In that case, and since this is so on-going, you may want to just beg a moment off of the nicest spe that you know in the office when you’re talking about something else and inquire about what to do in this situation.
If you cannot find something out using either of those things let me know and I’ll look into who you’re supposed to talk to for you.
I don’t know about deadlines for things like this, IF there is one that is coming up you may want to file another copy of the dec (double checking it and having a colleague double check it) along with a response stating why you believe it is proper and requesting specifically that if it is still deemed not properly executed that the office provide you with the specific reason as to why not.
Also you may want to check this thing out, or the new AIA statute itself, for new reqs on oaths/decs. See section II
link to uspto.gov
If you’re missing something then obviously put it in and re-file.
It says this form is good to use if you’re using an ADS: PTO/AIA/01
Anyhow other people can chime in here, I know for a fact there are some higher-up office people reading this thread at this moment.
All of your assumptions are correct. As far as I know we complied with the new declaration rules. It begins with the special sentence: The above-identified application was made or authorized by me.
There is a deadline. But I don’t think it applies to the declaration issue… just the complaint about the small font in the figures.
The issue is they want $140 as a penalty for not filing a properly executed oath or dec with the application….. but there is sits in PAIR….. so… I don’t think the refiling will work unless we want to pay $140 for no reason.
I suppose compared to what the Office did to Hyatt, this is small potatoes…. but still.
Well you may have to pay the fee just to have the thing moved forward, and perhaps it is refundable later. Or maybe you don’t, that I don’t know, but the answer to that is probably in the MPEP.
I would think just put something in there about it in your response if you file one.
If all else fails I would think the app would eventually get to an examiner with a spe that should be able to sort the thing out manually. But I cannot promise that.
Just let me know if you can’t get it worked out here in a bit and I’ll see what I can do.