A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.
Hyatt v. Hirshfeld, Nos. 2018-2390, -2391, -2392, 2019-1038, -1039, -1049, -1070 (Fed. Cir. (D.D.C.) June 1, 2021). Opinion by Reyna, joined by Wallach and Hughes.
The Federal Circuit held that prosecution laches is a defense available to the PTO in an action under 35 U.S.C. § 145. Applying that framework, the court vacated and remanded the district court’s decision for further proceedings.
This case dates back to the 1990s and relates to patent applications filed by Gilbert Hyatt during the “GATT Bubble”—a period in the spring of 1995 when the U.S. changed a patent’s term, which “triggered a patent application gold rush.” Hyatt bulk-filed 381 patent applications during the GATT Bubble, most of which contained small claim sets that were identical to each other. After many years of prosecution, the PTO ultimately rejected the applications.
Hyatt then filed four § 145 actions in district court seeking issuance of four of the patent applications. The PTO filed a motion to dismiss each case on prosecution laches grounds, citing Hyatt’s “pattern of delay in prosecuting his nearly 400 patent applications from 1969 through the present day.” The district court held a bench trial on whether prosecution laches barred the issuance of the patent applications, ultimately siding with Hyatt because the PTO had failed to take the actions necessary to advance the prosecution of Hyatt’s applications. The PTO appealed.
The Federal Circuit held that the PTO has the right to defend its rejections of patent claims based on prosecution laches. The Federal Circuit reviewed the merits of the defense and held that the district court had failed to properly consider the totality of the circumstances. The Federal Circuit noted that Hyatt’s prosecution conduct “created a perfect storm that overwhelmed the PTO,” and that Hyatt’s time-wasting process obstructed the PTO from examining not only Hyatt’s four applications at issue, but nearly all of his GATT Bubble applications. The Federal Circuit ruled that the PTO had carried its burden of proving prosecution laches, and that the district court erred in granting Hyatt’s motions for judgment on partial findings.
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SpeedTrack, Inc. v. Amazon.com, Inc., et al., Nos. 2020-1583, -1660 (Fed. Cir. (N.D. Cal.) June 3, 2021). Opinion by Prost, joined by Bryson and Reyna.
The Federal Circuit held that the district court’s claim construction was correct and thus affirmed the court’s final judgment of noninfringement.
SpeedTrack owns a patent that discloses a “computer filing system for accessing files and data according to user-designated criteria.” According to the patent, the system “allows total freedom from the restrictions imposed by hierarchical and other present day computer filing systems.”
In a lawsuit against various retail website operators, the district court construed claim language reciting “category descriptions having no predefined hierarchical relationship with [a particular] list or each other.” The district court initially adopted SpeedTrack’s proposed construction but later clarified that SpeedTrack’s prosecution statements demonstrated a “clear and unambiguous disavowal of category descriptions based on hierarchical field-and-value systems.” Based on that clarified construction, SpeedTrack stipulated to noninfringement and appealed.
On appeal, the parties agreed that there is no infringement under the district court’s clarified construction, and therefore the Federal Circuit needed only to decide whether the construction is correct. The Federal Circuit concluded that it is.
In so ruling, the Federal Circuit analyzed SpeedTrack’s prosecution statements and held that the prosecution history demonstrates clear and unambiguous disavowal. The Federal Circuit agreed with the district court that the prosecution disclaimer arose from both claim construction and arguments. In particular, the court noted that SpeedTrack’s alternative proposal would lead to the paradoxical result of the claims covering the exact arrangement disclosed by the prior art that SpeedTrack had distinguished during prosecution. The Federal Circuit thus rejected SpeedTrack’s arguments, noting that “the doctrine of prosecution disclaimer ensures that claims are not construed one way in order to obtain their allowance and in a different way against accused infringers.”
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