Kappos v. Hyatt, 132 S. Ct. 1690 (2012) (Thomas, J.; Sotomayor, concurring). For a slip opinion, click here. KapposHyatt.USSC
Hyatt deals with judicial review of PTO rejection of a patent applicant’s claim. The Court holds that an applicant can bring a “civil action” in a district court challenging a rejection that has been affirmed by the PTO Board and can, in the action, (1) freely introduce new evidence, including declarations and testimony, and (2) obtain a “de novo” decision fact issues pertaining to patentability. Importantly, when an applicant does introduce new evidence, a court in a Section 145 civil action need not give deference to the PTO’s fact finding on patentability.
Also of interest in Hyatt is the underlying story, which is discussed below. The facts of the case reveal an amazing and ominous possibility. The possibility is that the applicant Hyatt could obtain a patent, which would have a term of 17 years measured from the issue date (which would be after 2012), but with an effective filing date of 1995 (or 1984 or 1975). The patent might have broad claims drafted to cover products now (2012) being widely marketed in the computer and electronics industries. However, as will be seen, neither the Supreme Court nor the lower courts (Federal Circuit and district court) have actually ruled on the merits. Thus, it could well be that the lower courts will in due course uphold the PTO’s rejections of Hyatt’s numerous “new” claims as lacking written description support under 35 U.S.C. Section 112.
FACTS AND HOLDING.
An applicant, Gilbert P. Hyatt, filed an application in 1995. A PTO examiner and the PTO Board rejected many of the applicant’s claims for lack of written description under 35 U.S.C. Section 112. Hyatt brought a Section 145 review action against the PTO Director in the District of Columbia district court.
The PTO moved for summary judgment, arguing that the rejections were supported by substantial evidence. In opposition, the applicant Hyatt submitted his own declaration, which, as described by the Supreme Court, “identified portions of the patent specification that, in his view, supported the claims that the Board held were not patentable.” The district court refused to consider Hyatt’s declaration because he had failed to present it to the PTO. The district court reviewed the PTO record and concluded that substantial evidence supported the PTO’s factual findings. Therefore, it granted summary judgment for the PTO.
On appeal, a divided three-judge panel of the Federal Circuit affirmed. Hyatt v. Doll, 576 F.3d 1246, 1269-1270 (Fed. Cir. 2009).
The Federal Circuit reheard the appeal en banc, that is, with all the active judges participating. It overturned the panel decision and vacated the district court’s summary judgment, making two points. Hyatt v. Kappos, 625 F.3d 1320 (Fed. Cir. 2010) (en banc). First, Section 145 gave applicants freedom to introduce new evidence, subject only to general rules applicable to all civil actions, and “even if the applicant had no justification for failing to present the evidence to the PTO. Second, a district court must make “de novo” factual findings when an applicant introduces “new, conflicting evidence.”
The Supreme Court granted certiorari and held that the Federal Court was correct on both points, noting that the text of Section 145 imposes no “unique evidentiary limits in district court proceedings nor establishes a heightened standard of review for factual findings by the PTO.”
COMMENTARY: SUBSTANCE OF HYATT APPLICATION; SIGNIFICANCE OF 1995 FILING DATE.
The Supreme Court’s opinion does not describe the substance of the Hyatt application or the significance of the fact that it was filed in 1995. Nor did the Court rule on the merits of the PTO’s written description rejection. Instead, it merely affirmed the remand to the district court to consider Hyatt’s offered declaration.
As described in the Federal Circuit panel decision, Hyatt v. Doll, 576 F.3d 1246 (Fed. Cir. 2009), Hyatt filed the application at issue (U.S. Patent Application Serial No. 08/471,702), on June 6, 1995. He asserted priority back through continuation applications and continuation-in-part applications to applications filed in 1984 and 1975. He prosecuted the application “wholly on his own.”
Patents on applications filed before June 7, 1995, receive the older patent term of 17 years from the issue (grant) date, not the new term of 20 years from the filing date. Thus, assume a patent issues on Hyatt’s ‘702 application in 2013. That patent’s term would potentially extend from 2013 to 2030. Yet, the scope and validity of the claims would, in theory, be based on the state of the art before 1995, 1984 or even 1975.
The Federal Circuit panel decision describes the ‘702 application, as filed in 1995, as having “15 claims, a 238-page specification, and 40 pages of drawings.” The ‘702 application’s title was: “Improved Memory Architecture Having a Multiple Buffer Output Arrangement.” The application “incorporated by reference multiple publications (such as the `Texas Instruments, ALS/AS Logic Circuits Data Book, 1983′), … a `disclosure document ha[ving] copies of many of’ a list of referenced documents; on the list were manuals and specification sheets of products such as the “Viewpoint/3A Plus” and the `Siemens OEM Floppy Disk Drive FDD 100-8′.” 576 F.3d at 1248.
The panel gave as a “not atypical” example of Hyatt’s new claims, the following (107):
`107. A process of operating a memory system comprising the acts of:
generating input image information;
storing a two dimensional array of blocks of pixel image information by a two dimensional pixel block memory, the two dimensional array of blocks of pixel image information arranged in a two dimensional array of rows and columns of blocks of pixel image information, wherein the blocks of pixel image information have boundaries there between;
generating write addresses and generating read addresses;
writing the two dimensional array of blocks of pixel image information into the two dimensional pixel block memory in response to the input image information and in response to the write addresses;
generating a first clock signal having a first clock rate;
accessing blocks of pixel image information in response to the read addresses, wherein the accessing of blocks of pixel image information from the two dimensional pixel block memory is at a first information rate in response to the first clock signal;
generating block boundary smoothing information to smooth the pixel image information at boundaries between blocks of pixel image information;
storing weight information by a weight memory;
generating accessed weight information by accessing the weight information stored by the weight memory;
generating smoothed weighted image information by weighting the pixel image information contained in the accessed blocks of pixel image information in response to the accessed weight information and in response to the block boundary smoothing information;
generating a second clock signal having a second clock rate that is different than the first clock rate of the first clock signal; and
generating output smoothed weighted image information in response to the smoothed weighted image information, wherein the generation of the output smoothed weighted image information is at a different information rate than the first information rate in response to the second clock signal.’
576 F.3d at 1248-49.
As noted above, neither the Supreme Court nor the en banc Federal Circuit decisions address the merits of the PTO’s rejection of Hyatt’s “new claims.” The panel decision’s brief discussion gives a flavor for how the applicant Hyatt attempted to justify support for his new claims.
“Hyatt presented to the PTO Board a “Table 1,” which listed, for each word in a multi-word limitation that the examiner had found lacking, where the individual words in the limitation could be found in the specification.
Thus, for example, the examiner found that the following limitation had no support: “processor responsive to an accessed block of video pixel image information.” The Table-1 indicated that ” `block’ was used over 80 times on at least pages 25-83 and 128-164 of the specification; `information’ was used over 100 times `throughout’ the specification; `video’ was used exactly eight times on at least pages 77, 166, and 168-71; etc.”
The Board found the Table-1 not helpful, noting “merely pointing to isolated words scattered throughout the specification does not describe the invention claimed as a combination of elements, functions, and interconnections, anymore than a dictionary provides written description support for a book where words are used in combination to provide a certain meaning.” The Federal Circuit panel agreed, noting that the applicant did not “explain how any of these individual occurrences of these substituent words discloses a `processor responsive to an accessed block of video pixel image information.’ ” 576 F.3d at 1278-79.
The Supreme Court did not discuss a number of questions that may yet be addressed in the case. For example, was the declaration that Hyatt offered in fact “new evidence” as opposed to a mere unsupported expert or other opinion about a legal conclusion? Did the declaration, even given consideration, create a genuine fact issue precluding summary judgment in regard to the written description support issues?
For previous appellate decisions concerning Hyatt applications, see the following, which the panel decision listed in a footnote: “Hyatt v. Dudas, 551 F.3d 1307 (Fed. Cir. 2008); Hyatt v. Dudas, 267 F. App’x 944 (Fed. Cir. 2008); Hyatt v. Dudas, 492 F.3d 1365 (Fed. Cir. 2007); In re Hyatt, 243 F.3d 554 (Table) (Fed. Cir. 2000); In re Hyatt, 211 F.3d 1367 (Fed. Cir. 2000); Hyatt v. Boone, 146 F.3d 1348 (Fed. Cir. 1998); In re Hyatt, 108 F.3d 1393 (Table) (Fed. Cir. 1997); In re Hyatt, 106 F.3d 424 (Table) (Fed. Cir. 1996); In re Hyatt, 925 F.2d 1478 (Table) (Fed. Cir. 1991); In re Hyatt, 852 F.2d 1292 (Table) (Fed. Cir. 1988); In re Hyatt, 770 F.2d 182 (Table) (Fed. Cir. 1985); In re Hyatt, 770 F.2d 181 (Table) (Fed. Cir. 1985); In re Hyatt, 770 F.2d 178 (Table) (Fed. Cir. 1985); In re Hyatt, 714 F.2d 160 (Table) (Fed. Cir. 1983); In re Hyatt, 708 F.2d 712 (Fed. Cir. 1983); In re Hyatt, 714 F.2d 160 (Table) (Fed. Cir. 1983).” 576 F3d at 1248 n2.