Case: 21-2324 Document: 37 Page: 1 Filed: 09/08/2022
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`GILBERT P. HYATT,
`Plaintiff-Appellant
`
`v.
`
`UNITED STATES PATENT AND TRADEMARK
`OFFICE, KATHERINE K. VIDAL, UNDER
`SECRETARY OF COMMERCE FOR
`INTELLECTUAL PROPERTY AND DIRECTOR OF
`THE UNITED STATES PATENT AND TRADEMARK
`OFFICE,
`Defendants-Appellees
`______________________
`
`2021-2324
`______________________
`
`Appeal from the United States District Court for the
`Eastern District of Virginia in No. 1:20-cv-00487-CMH-
`IDD, Senior Judge Claude M. Hilton.
`______________________
`
`Decided: September 8, 2022
`______________________
`
`ANDREW M. GROSSMAN, Baker & Hostetler LLP, Wash-
`ington, DC, argued for plaintiff-appellant. Also repre-
`sented by MARK W. DELAQUIL.
`
` PETER JOHN SAWERT, Office of the Solicitor, United
`States Patent and Trademark Office, Alexandria, VA, ar-
`gued for defendants-appellees. Also represented by
`
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`2
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`HYATT v. PTO
`
`THOMAS W. KRAUSE, ROBERT MCBRIDE, AMY J. NELSON,
`FARHEENA YASMEEN RASHEED; JESSICA D. ABER, Office of
`the United States Attorney for the Eastern District of Vir-
`ginia, United States Department of Justice, Alexandria,
`VA.
`
`______________________
`
`
`
`Before MOORE, Chief Judge, PROST and HUGHES, Circuit
`Judges.
`
`PROST, Circuit Judge.
`Following decades of patent-related litigation, patent
`applicant Gilbert P. Hyatt submitted significant claim
`amendments
`for
`his U.S. Patent Application
`No. 08/435,938 (“the ’938 application”) in August 2015. A
`Patent and Trademark Office (“PTO”) examiner then is-
`sued a restriction requirement for seven of eight claims
`that Mr. Hyatt had selected for examination. Mr. Hyatt
`filed a complaint in the Eastern District of Virginia alleg-
`ing, among other things, that the restriction requirement
`was improper, such that the PTO violated 5 U.S.C. § 706.
`The district court disagreed; it determined that 37 C.F.R.
`§ 1.129 (“Rule 129”) permitted the restriction requirement
`for Mr. Hyatt’s ’938 application. The district court accord-
`ingly granted the PTO’s motion for summary judgment and
`denied Mr. Hyatt’s competing motion. Mr. Hyatt appeals.
`We affirm.
`
`BACKGROUND
`I
`Congress passed the Uruguay Round Agreements Act
`(“URAA”) in part to amend the term of U.S. patent protec-
`tion: now, as of June 8, 1995, patent terms are 20 years
`from the effective filing date instead of 17 years from the
`grant date. Pub. L. No. 103-465, 108 Stat. 4809, 4984
`(1994) (codified at 35 U.S.C. § 154(a)(2)). The prior patent
`term, tied to the grant date, “incentivized certain patentees
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`HYATT v. PTO
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`3
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`to delay prosecuting their patents by abandoning applica-
`tions and filing continuing applications in their place.” Hy-
`att v. Hirshfeld, 998 F.3d 1347, 1351 (Fed. Cir. 2021). The
`URAA changed the incentives to promote timely disclosure
`of innovations by instead tying the patent term to the ef-
`fective filing date. See id. at 1352.
`But the change in law left a gap for so-called transi-
`tional applications—those filed but not yet granted before
`the URAA took effect. This “triggered a patent application
`gold rush in the spring of 1995” by applicants who wanted
`their patent claims to be governed under the pre-URAA pa-
`tent term. Id. “For example, in the nine days leading to
`June 8, 1995, the PTO reported that it received and pro-
`cessed over 50,000 applications—one-quarter of the entire
`year’s projected filings.” Id. at 1353. This gold rush is “of-
`ten referred to as the ‘GATT Bubble.’” Id. at 1352.
`URAA section 532 addresses those GATT Bubble tran-
`sitional applications. For transitional applications that
`had been pending for two years or longer as of June 8,
`1995,1 it directs the PTO to “prescribe regulations to pro-
`vide for further limited reexamination of” those applica-
`tions. 108 Stat. at 4985. And for applications that had
`been pending for three years or longer as of June 8, 1995,
`it instructs the PTO to “prescribe regulations to provide for
`the examination of more than [one] independent and dis-
`tinct invention.” Id.
`Congress further instructed that then-President Clin-
`ton’s statement of administrative action (“SAA”) “shall be
`regarded as an authoritative expression by the United
`States concerning the interpretation and application of
`the” URAA “in any judicial proceeding in which a question
`
`
`1 The URAA accounts for claims of priority to earlier-
`filed applications in determining how long a patent appli-
`cation has been “pending.” See 108 Stat. at 4984–85.
`
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`HYATT v. PTO
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`arises concerning such interpretation or application.”
`19 U.S.C. § 3512(d); see also H.R. Doc. No. 103-316 (1994)
`(SAA).
`The PTO promulgated Rule 129 pursuant to its author-
`ity provided by the URAA and informed by the SAA. In
`particular, Rule 129(b)(1)(ii) provides:
`(1) In an application . . . that has been pending for
`at least three years as of June 8, 1995 . . . , no re-
`quirement for restriction . . . shall be made or main-
`tained in the application after June 8, 1995, except
`where:
`. . . .
`(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 appli-
`cant . . . .
`37 C.F.R. § 1.129(b)(1)(ii) (emphasis added).
`II
`Mr. Hyatt filed the ’938 application, which claims pri-
`ority to applications filed as early as 1983, during the
`GATT Bubble on May 5, 1995. The PTO completed an ini-
`tial examination of those claims in 2003, but from 2003 to
`2012, “the PTO stayed the examination of many of
`[Mr.] Hyatt’s applications pending litigation.” Hyatt,
`998 F.3d at 1354.
`In October 2013, an examiner instructed Mr. Hyatt to
`select a number of claims from his ’938 application for ex-
`amination as part of the PTO’s efforts to manage Mr. Hy-
`att’s approximately 400 pending patent applications.
`Mr. Hyatt complied, under protest, and selected eight
`claims out of the approximately 200 in that application.
`The Examiner issued a non-final rejection of those claims
`in February 2015, and, in August of that year, Mr. Hyatt
`responded with significant claim amendments. By way of
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`HYATT v. PTO
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`example, Mr. Hyatt entirely rewrote one of the selected
`claims, sparing only the preambular terms “A” and “com-
`prising.”
`The Examiner determined that these claim amend-
`ments shifted seven of the eight selected claims to a differ-
`ent species of computer systems and processes. As a result,
`the Examiner issued a restriction requirement between the
`originally selected claims and the amended claims, still al-
`lowing Mr. Hyatt to prosecute his amended claims but forc-
`ing him to do so in a new, separate application.2
`Mr. Hyatt filed a complaint in the Eastern District of
`Virginia. He alleged in relevant part that the PTO’s re-
`striction requirement violated the Administrative Proce-
`dure Act (“APA”) as arbitrary, capricious, an abuse of
`discretion, or otherwise not in accordance with law since
`restriction requirements are generally not permitted for
`transitional applications like the ’938 application and no
`exception to that rule applied. See J.A. 41 (citing 5 U.S.C.
`§ 706); see also Hyatt v. U.S. Pat. & Trademark Off.,
`551 F. Supp. 3d 600, 605 (E.D. Va. 2021). Mr. Hyatt and
`the PTO filed competing motions for summary judgment.
`The district court granted the PTO’s motion and denied
`Mr. Hyatt’s motion. J.A. 14. As the district court ex-
`plained,
`[Mr. Hyatt] failed to disclose claims to a separate
`invention and attempted to file them many years
`after 1995. Withholding these claims is an action
`by
`the
`applicant
`that
`falls
`within
`[Rule 129(b)(1)(ii)’s applicant-action] exception to
`the
`general
`rule
`prohibiting
`restriction
`
`
`2 This meant, at a minimum, that Mr. Hyatt’s
`amended claims would be subject to the new patent term—
`20 years from the effective filing date. See Appellant’s Br. 5
`n.1.
`
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`HYATT v. PTO
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`requirements on transitional applications. The
`[Examiner] was thus within his authority to im-
`pose a restriction requirement under [that] excep-
`tion . . . .
`Hyatt, 551 F. Supp. 3d at 605–06. Mr. Hyatt appeals. We
`have jurisdiction under 28 U.S.C. § 1295(a)(1).
`DISCUSSION
`We review the district court’s grant of summary judg-
`ment de novo. Star Fruits S.N.C. v. United States, 393 F.3d
`1277, 1281 (Fed. Cir. 2005). Summary judgment is appro-
`priate where “there is no genuine dispute as to any mate-
`rial fact and the movant is entitled to judgment as a matter
`of law.” Fed. R. Civ. P. 56(a). The APA provides that
`agency actions are unlawful if they are “arbitrary, capri-
`cious, an abuse of discretion, or otherwise not in accordance
`with law.” 5 U.S.C. § 706(2)(A).
`Mr. Hyatt contests the application of Rule 129(b)(1)(ii)
`to his ’938 patent application. He argues that the appli-
`cant-action exception to the general ban on restriction re-
`quirements cannot apply to the ’938 application for two
`primary reasons: (I) he argues that the applicant-action ex-
`ception cannot apply based on the text of Rule 129(b)(1)(ii);
`and (II) he asserts that applying the applicant-action ex-
`ception
`in this case contradicts Rule 129(a) and
`Rule 129(b)(2). Addressing each in turn, we find neither
`persuasive.
`
`I
`Rule 129(b)(1)(ii) permits restriction requirements for
`transitional applications when “[t]he examiner has not
`made a requirement for restriction in the present or parent
`application prior to April 8, 1995, due to actions by the ap-
`plicant.” Mr. Hyatt argues that this applicant-action ex-
`ception to the general ban on restriction requirements
`cannot apply to his ’938 application based on its text. Ap-
`pellant’s Br. 20. He asserts that “actions,” as used in the
`
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`HYATT v. PTO
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`applicant-action exception, does not encompass “inactions.”
`As a result, he contends that his first arguable action
`within the meaning of Rule 129 was in August 2015 when
`he filed the claim amendments that prompted the re-
`striction requirement. That filing, Mr. Hyatt argues, also
`does not permit a restriction requirement for his ’938 ap-
`plication because an effect cannot precede its cause: a lack
`of a restriction requirement in 1995 cannot be said to be
`caused by his decades-later August 2015 filing.
`Mr. Hyatt made similar arguments at the district
`court, but the district court found them unpersuasive. The
`court determined that Rule 129(b)(1)(ii) could and did ap-
`ply to Mr. Hyatt’s ’938 application because Mr. Hyatt
`“failed to disclose claims to a separate invention and at-
`tempted to file them many years after 1995.” Hyatt,
`551 F. Supp. 3d at 605. And since “[w]ithholding these
`claims is an action by the applicant that falls within” the
`applicant-action exception, the Examiner was “within his
`authority to impose a restriction requirement under [that]
`exception.” Id. at 605–06. We agree with the district court.
`As a threshold matter, we first note that Mr. Hyatt’s
`failure to disclose his species-altering amendments can
`also be accurately characterized as an act of withholding.
`See id. (“[Mr. Hyatt] failed to disclose claims to a separate
`invention . . . . Withholding these claims is an action by
`the applicant . . . .”). And whether Mr. Hyatt’s actions are
`characterized as a failure to disclose or an act of withhold-
`ing an entirely new species, it was that conduct of Mr. Hy-
`att that prevented the Examiner from entering a
`restriction requirement.
`In any case, as the PTO observes, the Manual of Patent
`Examining Procedure (“MPEP”) section 803.03 provides
`examples of inaction—including delays—that it catego-
`rizes as falling under the “actions by the applicant”
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`HYATT v. PTO
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`exception.3 “Although the MPEP does not have the force of
`law, it is entitled to judicial notice so far as it is an official
`interpretation of statutes or regulations with which it is
`not in conflict.” Airbus S.A.S. v. Firepass Corp., 793 F.3d
`1376, 1380 (Fed. Cir. 2015) (cleaned up). And here, the
`MPEP demonstrates that “the public has been on clear no-
`tice of the [PTO]’s interpretation” of the applicant-action
`exception. Appellees’ Br. 21. In light of the circumstances
`of this case, we fail to see how the application of
`Rule 129(b)(1)(ii) due to Mr. Hyatt’s so-called inaction was
`
`
`3 Section 803.03 lists the following examples as “ac-
`tions by the applicant”:
`(A) applicant abandoned the application and con-
`tinued to refile the application such that no [PTO]
`action could be issued in the application,
`(B) applicant requested suspension of prosecution
`under 37 CFR [§] 1.103(a) such that no [PTO] ac-
`tion could be issued in the application,
`(C) applicant disclosed a plurality of independent
`and distinct inventions in the present or parent ap-
`plication[] 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, and
`(D) applicant combined several applications, each
`of which claimed a different independent and dis-
`tinct invention, into one large ‘continuing’ applica-
`tion, but delayed filing the continuing application
`first claiming more than one independent and dis-
`tinct invention such that no restriction require-
`ment could be made prior to April 8, 1995.
`
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`HYATT v. PTO
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`arbitrary, capricious, an abuse of discretion, or contrary to
`law.
`This also does away with Mr. Hyatt’s cause-and-effect
`argument because there is no cause after an effect here. As
`the PTO describes, and Mr. Hyatt does not rebut, Mr. Hy-
`att “did act prior to April 8, 1995 to actively withhold” his
`claim amendments.4 Id. at 24. So Mr. Hyatt’s action pre-
`ceded (and resulted in) a lack of restriction requirement be-
`fore April 8, 1995, making the applicant-action exception
`applicable.
`In this regard, Mr. Hyatt makes two primary argu-
`ments that Rule 129’s “actions” cannot include “inactions.”
`Both are unpersuasive. First, he cites cases like Defenders
`of Wildlife v. Andrus, 627 F.2d 1238 (D.C. Cir. 1980), and
`Western Watersheds Project v. Matejko, 468 F.3d 1099
`(9th Cir. 2006), in an attempt to distinguish action from in-
`action. Appellant’s Br. 22. But, as the PTO observes, these
`cases are not only not binding, but they also address mate-
`rially different statutory contexts. Appellees’ Br. 25–26;
`see Defs. of Wildlife, 627 F.2d at 1243–44 (interpreting
`
`4 We also agree with the district court that Mr. Hy-
`att’s interpretation disjoins the rule’s “April 8, 1995” date
`from its antecedent subject. The applicant-action excep-
`tion allows a restriction requirement when “[t]he examiner
`has not made a requirement for restriction . . . prior to
`April 8, 1995, due to actions by the applicant.” 37 C.F.R.
`§ 1.129(b)(1)(ii). As the district court explained, “[t]he date
`refers to the examiner’s [lack of] action”—i.e., the absence
`of a restriction requirement before April 8, 1995. Hyatt,
`551 F. Supp. 3d at 606 (emphasis added); see also Appel-
`lees’ Br. 24 (“The specified date clearly refers to the time of
`the restriction requirement by the Examiner . . . .”). And
`there is no dispute that the Examiner did not issue a re-
`striction requirement for the ’938 application before that
`date.
`
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`HYATT v. PTO
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`“agency action” as used in 42 U.S.C. § 4332(C)); W. Water-
`sheds, 468 F.3d at 1106–08 (interpreting “agency action” as
`used in 16 U.S.C. § 1536(a)(2)).
`Second, Mr. Hyatt seemingly contends that applying
`the applicant-action exception to the ’938 application con-
`tradicts the SAA.5 Although Mr. Hyatt fails to explicitly
`direct us to the SAA language he refers to, he appears to
`rely on the SAA’s statement that the general ban on
`
`
`5 Mr. Hyatt maintained—both in his briefs and at
`oral argument—that the PTO never rebutted this argu-
`ment. Mr. Hyatt characterizes this as a statutory dispute
`against which the PTO forfeited a response. Oral Arg.
`at 4:55–5:05, No. 21-2324, https://oralarguments.cafc.usco
`urts.gov/default.aspx?fl=21-2324_07072022.mp3. The PTO
`reasonably responded during oral argument that it did not
`understand Mr. Hyatt to raise a “facial challenge” to Rule
`129 at the district court or on appeal. Id. at 13:35–58. The
`PTO added that, even if Mr. Hyatt preserved that argu-
`ment, it fails on its merits because Rule 129 is consistent
`with the SAA. Id. at 13:58–14:40. Since we also struggled
`to ascertain the bounds of this SAA-based argument, we
`decline to find that the PTO forfeited a response. See also
`Appellant’s Br. 23–24 (asserting that “[t]he URAA . . . for-
`bade the PTO from entering ‘a requirement for restriction,’
`subject to two exceptions not even arguably applicable
`here” (citing H.R. Doc. No. 103-316, at 1006, without fur-
`ther elaboration)). In any event, we are not required to ac-
`cept Mr. Hyatt’s legal arguments even if the PTO did not
`respond. See Kamen v. Kemper Fin. Servs., Inc., 500 U.S.
`90, 99 (1991) (“When an issue or claim is properly before
`the court, the court is not limited to the particular legal
`theories advanced by the parties[] but rather retains the
`independent power to identify and apply the proper con-
`struction of governing law.”).
`
`
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`HYATT v. PTO
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`restriction requirements for transitional applications does
`not apply “if there has not been at least one [PTO] action
`due to actions by the applicant.” H.R. Doc. No. 103-316,
`at 1006. His argument seems to depend on reading this
`SAA language as saying that the applicant-action excep-
`tion applies only when the applicant’s actions “prevent
`[the] PTO from taking any action in a given application.”
`Appellant’s Br. 22–23 (emphasis in original). And under
`this reading, in Mr. Hyatt’s view, the applicant-action ex-
`ception cannot apply here because the PTO issued several
`actions in examining Mr. Hyatt’s ’938 application prior to
`making the restriction requirement. See Oral Arg.
`at 24:04–30.
`Mr. Hyatt’s reading of that SAA language, though, re-
`stricts it beyond its plain terms. The SAA does not say that
`the general ban on restriction requirements for transi-
`tional applications does not apply only if there has been no
`PTO action due to actions by the applicant. The SAA
`simply says that the general ban does not apply if the ap-
`plicant’s actions prevent “at least one [PTO] action.” H.R.
`Doc. No. 103-316, at 1006. And like the PTO, we see no
`inconsistency between the applicant-action exception and
`the SAA.6 That the PTO “has not made a requirement for
`restriction,” as described in the applicant-action exception,
`is an example of “one [PTO] action” that has not been
`taken, as stated in the SAA.
`
`
`6 Following oral argument, Mr. Hyatt submitted a
`Rule 28(j) letter in an attempt to clarify this SAA-based ar-
`gument. This letter was improper. Rule 28(j) is not a ve-
`hicle for seeking to substantively improve an answer to a
`question asked of a party at oral argument, and it is cer-
`tainly not a vehicle for attempting to supplement briefing
`with four new paragraphs of argument and citations to five
`new cases that Mr. Hyatt could have identified previously.
`Fed. Cir. R. Prac. 28(j); see Oral Arg. at 5:11–9:40.
`
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`HYATT v. PTO
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`Indeed, rather than point to an inconsistency, the por-
`tion of the SAA that Mr. Hyatt seemingly relies on appears
`to mirror Rule 129. Rule 129(b)(1)(ii) states that the appli-
`cant-action exception applies when “[t]he examiner has not
`made a requirement for restriction . . . due to actions by the
`applicant.” 37 C.F.R. § 1.129(b)(1)(ii) (emphasis added).
`The SAA similarly instructs that that same general ban on
`restriction requirements “does not apply if . . . there has
`not been at least one [PTO] action due to actions by the ap-
`plicant.” H.R. Doc. No. 103-316, at 1006 (emphasis added).
`And as previously discussed, the Examiner was unable to
`issue a restriction requirement for the ’938 application
`within the relevant time frame “due to” Mr. Hyatt’s “ac-
`tions.”
`
`II
`Mr. Hyatt next argues that even if the applicant-action
`exception could apply based on its text, it still cannot apply
`to his ’938 application as a matter of logic due to surround-
`ing regulations. Mr. Hyatt contends that applying the ap-
`plicant-action exception would conflict with Rule 129(a)
`and Rule 129(b)(2).
`Rule 129(a) provides that
`[a]n applicant in an application . . . that has been
`pending for at least two years as of June 8,
`1995, . . . is entitled to have a first submission en-
`tered and considered on the merits after final rejec-
`tion . . . . A submission as used in this paragraph
`includes . . . an amendment to the . . . claims . . . .
`37 C.F.R. § 1.129(a). According to Mr. Hyatt, Rule 129(a)
`entitles him to have his species-altering amendments con-
`sidered on the merits as “continuation-type amendments,”
`which would be subject to the pre-URAA patent term. Ap-
`pellant’s Br. 18–19, 32–34, 36–37. Mr. Hyatt contends that
`such continuation-type consideration would be incon-
`sistent with a restriction requirement here because
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`HYATT v. PTO
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`imposing a restriction requirement effectively “swallow[s]”
`Rule 129(a). Id. at 33.
`
`Rule 129(b)(2), for its part, states that an “applicant
`will be . . . notified and given a time period” to take certain
`actions if the applicant’s transitional application “contains
`more than one independent and distinct invention and a
`requirement for restriction . . . cannot be made or main-
`tained pursuant
`to
`this paragraph.”
` 37 C.F.R.
`§ 1.129(b)(2). Mr. Hyatt asserts that, since Rule 129(b)(2)
`recognizes that transitional applications may contain more
`than one independent and distinct invention, a restriction
`requirement for such an application—including the ’938
`application—would be improper. Appellant’s Br. 34–36.
` Mr. Hyatt levied similar arguments at the district
`court, and the court rejected them. The district court ex-
`plained there was no inconsistency in applying the appli-
`cant-action exception in the face of either Rule 129(a) or
`Rule 129(b)(2). Specifically, the court said “[n]othing in
`[Rule 129(a)] references restriction practice or otherwise
`overrides the more specific provisions of [the applicant-ac-
`tion exception].” Hyatt, 551 F. Supp. 3d at 606. And as for
`Rule 129(b)(2), that section “applies only when a require-
`ment for restriction . . . cannot be made . . . . In this case,
`however, the [applicant-action exception] applies” and per-
`mits a restriction requirement. Id. (cleaned up). We agree
`on both counts. Applying the applicant-action exception to
`Mr. Hyatt’s ’938 application is not inconsistent with either
`Rule 129(a) or Rule 129(b)(2).
`Rule 129(a) does not speak to restriction requirements;
`it provides no limitations on applying the applicant-action
`exception. This means that applying the applicant-action
`exception to the ’938 application does not “swallow”
`Rule 129(a), as Mr. Hyatt suggests. Appellant’s Br. 33. As
`the PTO observes, the “submission of amendments under
`[Rule 129(a)] does not immunize those amendments from
`the normal course of examination, including restriction
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`HYATT v. PTO
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`under [the applicant-action exception] as appropriate.” Ap-
`pellees’ Br. 32.
`Rule 129(b)(2) is also not inconsistent with the applica-
`tion of the applicant-action exception in this case. Indeed,
`Rule 129(b)(2) specifically makes room for the applicant-
`action exception. By its text, Rule 129(b)(2) “applies only
`when ‘a requirement for restriction . . . cannot be made or
`maintained pursuant to this paragraph.’”
` Hyatt,
`551 F. Supp. 3d at 606 (emphasis added) (quoting 37 C.F.R.
`§ 1.129(b)(2)). So, as the district court noted, applying the
`applicant-action exception to Mr. Hyatt’s application “is
`not inconsistent” with Rule 129(b)(2) because that excep-
`tion allows the PTO “an opportunity to issue a restriction
`requirement” here. Id. This means a requirement for re-
`striction can be made, so Rule 129(b)(2) is of no import in
`this case.
`
`*
`*
`*
`Because the district court correctly concluded that the
`applicant-action exception can and did apply in this case,
`we affirm its determination that the restriction require-
`ment for Mr. Hyatt’s ’938 application was proper.
`CONCLUSION
`We have considered Mr. Hyatt’s remaining arguments
`but find them unpersuasive. For the foregoing reasons, we
`affirm the district court’s judgment.
`AFFIRMED
`
`