[00:00:02] Speaker 00:
We have two cases scheduled for argument this morning.

[00:00:11] Speaker 00:
The first case is Hayek versus Inaku, 18-2390.

[00:00:21] Speaker 00:
You reserve five minutes of your time for rebuttal, correct?

[00:00:28] Speaker 02:
Yes, I do.

[00:00:30] Speaker 02:
Thank you, your honor, and may it please the court.

[00:00:33] Speaker 02:
The applicant here, Mr. Hyatt, has engaged in a pattern of unreasonable delay in prosecuting claims before the patent office.

[00:00:41] Speaker 02:
That unreasonable delay includes an extreme delay in presenting the claims in the

[00:00:48] Speaker 02:
Each of the applications here in all four of them considered together and across 400 similarly situated applications It also includes uncooperative and an obstructive conduct during the patent examination in these cases

[00:01:03] Speaker 02:
as well as three specific examples of what I would call egregious misconduct across the cases.

[00:01:10] Speaker 02:
The first of those examples is his tendency to put the identical or patently indistinct claims in different applications across his family.

[00:01:20] Speaker 00:
Let's go directly to the doctrine of prosecution latches.

[00:01:23] Speaker 00:
One must be shown in order for that to apply.

[00:01:25] Speaker 02:
an unreasonable and unexplained delay in, among other things, presentation of claims to the Patent Office.

[00:01:34] Speaker 02:
There are two Supreme Court cases that provide the foundation for the doctrine.

[00:01:37] Speaker 02:
That's the Woodbridge case and the Webster case, both from the 1920s.

[00:01:41] Speaker 02:
In Woodbridge, the delay was nine and a half years.

[00:01:44] Speaker 02:
In Webster, eight years.

[00:01:46] Speaker 02:
And the purpose behind it is twofold.

[00:01:49] Speaker 02:
It's once somebody invents something, they're supposed to file a patent for it so the public is aware of the invention.

[00:01:55] Speaker 02:
And then that patent term is supposed to begin as soon as possible after the invention so that eventually the patent.

[00:02:02] Speaker 00:
In order for the doctrine to apply, does there have to be a violation of a specific regulation?

[00:02:08] Speaker 00:
or statute?

[00:02:09] Speaker 02:
There does not.

[00:02:10] Speaker 02:
It's an equitable doctrine that was put in place to essentially police conduct that is within the letter of the statute.

[00:02:17] Speaker 02:
So we see that in the Lemelson case, and we see it in this case, although as we point out in the brief, Mr. Hyatt did violate some regulations and some laws along the way.

[00:02:28] Speaker 04:
In the red brief, Mr. Hyatt says, I'm quoting, to inflate the numbers, PTO turned to continuation and part relationships.

[00:02:39] Speaker 04:
When PTO asserts that Hyatt possessed his claimed invention 16, 20, or even 28 years before filing his 1995 application, it is referring to the filing dates and continuation in part patterns.

[00:02:51] Speaker 04:
And this is what I'm interested in, which follows.

[00:02:53] Speaker 04:
But PTO presented no testimony or evidence that those parents disclose any invention claimed in the subject applications or that Hyatt even contends so.

[00:03:04] Speaker 02:
I wanted you to answer that for me.

[00:03:05] Speaker 02:
I believe the contention is in his priority claims themselves.

[00:03:08] Speaker 02:
He claims priority, yes, to continuations in part.

[00:03:11] Speaker 02:
But he claims priority all the way back to 1970.

[00:03:14] Speaker 02:
And some evidence that he's trying to claim subject matter from 1970 is one of these instances of egregious conduct I mentioned.

[00:03:21] Speaker 02:
His attempts to claim the microprocessor patent, which he lost in interference in 1995.

[00:03:26] Speaker 02:
He's continuing to introduce claims to that subject matter with presumably a priority date.

[00:03:32] Speaker 02:
And that's record evidence.

[00:03:33] Speaker 02:
That's record evidence.

[00:03:34] Speaker 02:
The district court specifically found that conduct was not reasonable, but apparently thought it was an isolated instance.

[00:03:40] Speaker 02:
But that's the sort of thing that's occurring across these patent applications, even apart from the delay, which alone under Woodbridge and Webster would be enough to find latches.

[00:03:50] Speaker 02:
The delays in presentation, whether you look at the earliest priority date, as we did, as we think we have to, because he doesn't know.

[00:03:56] Speaker 04:
I don't want to interrupt your flow, but I want some answers to assertions that are made in the red brief.

[00:04:03] Speaker 04:
The next one's at 32 and footnote four, which is the whole page is two footnotes, basically.

[00:04:14] Speaker 04:
There the government says that without explaining this history to the examiner, Mr. Hyatt re-entered his claims and so on, the government then states the USPTO rejected those belatedly filed claims in 2014 on the basis of prosecution lashes.

[00:04:32] Speaker 04:
Hyatt says, you assert that Hyatt reintroduced claims previously lost in an interference proceeding, and you failed to substantiate the point.

[00:04:47] Speaker 04:
And then I was looking at 44 of the blue brief, which I think answers it, but I want you to discuss it.

[00:04:54] Speaker 02:
I thought I heard two different

[00:04:57] Speaker 02:
fact scenarios in there.

[00:04:59] Speaker 02:
There's definitely the microprocessor claim at issue.

[00:05:01] Speaker 02:
There's also the conduct relating to the 094 application.

[00:05:05] Speaker 02:
Are we asking about the microprocessor?

[00:05:06] Speaker 04:
Well, I'm asking about their statement that you assert that they reintroduced claims previously lost in an interference proceeding, and they say you didn't prove it.

[00:05:13] Speaker 04:
OK.

[00:05:15] Speaker 04:
I have my answer to that I want your answer.

[00:05:18] Speaker 02:
It's it's in our blue brief We responded to that directly in our reply brief also at page 26 the the entire claim and the claim appears at appendix 39268 39 into 392 70 it is only to an electronic data processing system implemented on a single integrated circuit chip Okay, and then one last sort of housekeeping kind of thing on page 13 of the yellow brief

[00:05:44] Speaker 04:
You say that Mr. Hyatt's expert reports and slides in 2017 are the very information the USPTO written description rejections were begging for Mr. Hyatt to provide during the administrative proceedings 20 years later.

[00:05:59] Speaker 04:
What do you mean they were begging for him?

[00:06:01] Speaker 02:
The examiners in each of these cases were frustrated by Mr. Hyatt's refusal to provide written description support for these later added claims.

[00:06:10] Speaker 02:
There's an MPEP provision which was in effect at the time, MBP 2163.04, which says that for later added claims the applicant is supposed to show support in the specification.

[00:06:20] Speaker 02:
It only makes sense, especially with these unusual claims that don't find direct support in the specification, to provide that

[00:06:27] Speaker 02:
along with the claims.

[00:06:29] Speaker 02:
Mr. Hyatt litigated his right not to provide that information.

[00:06:33] Speaker 02:
And that culminated in this court's finding in 2007, the Hyatt v. Duda's case, where this court specifically said, yes, it is applicant's responsibility to show written description support for the later added claims, which he did not do.

[00:06:46] Speaker 02:
And so that's part of the prosecution misconduct that we're talking about.

[00:06:50] Speaker 01:
I'm sorry.

[00:06:51] Speaker 01:
It's OK.

[00:06:52] Speaker 01:
Has he, to date, complied with the Hyatt restrictions?

[00:06:56] Speaker 02:
With the restriction requirements, he has selected the families and the 600 claims under each family now.

[00:07:03] Speaker 02:
Yes, and we're rejecting those.

[00:07:05] Speaker 02:
However, he is maintaining his right to potentially challenge the restriction requirements.

[00:07:11] Speaker 02:
Sure, but he's challenged those multiple times and lost, hasn't he?

[00:07:14] Speaker 02:
This court has specifically said the requirement was reasonable.

[00:07:17] Speaker 02:
It wasn't in connection with a direct challenge to it.

[00:07:20] Speaker 02:
I think he would say he still has the opportunity to challenge it in connection with the prosecutions.

[00:07:25] Speaker 02:
In these cases, I will say he is continuing to submit amendments even for the claims that he didn't select.

[00:07:32] Speaker 02:
So he's operating as though all 115,000 claims, 45,000.

[00:07:37] Speaker 01:
So can I ask you to just focus me a little bit?

[00:07:41] Speaker 01:
The ultimate question here, the finding that there's no prosecution latches, we would review for abuse of discretion.

[00:07:49] Speaker 01:
But I take it you're arguing that the district court applied the wrong legal framework.

[00:07:54] Speaker 01:
Could you be specific about what you think was the legal error here?

[00:07:58] Speaker 02:
That's correct.

[00:07:59] Speaker 02:
There were at least three separate legal errors, I would say.

[00:08:02] Speaker 02:
The first one is the district court, although acknowledging that Mr. Hyatt had delayed in presentation of the claims, completely failed to analyze it.

[00:08:12] Speaker 02:
Presented at least 12 years as much as 28 years from the earliest priority date under either of those Supreme Court cases That you know should be prosecution latches once you have possession of an invention you should be trying to pound that I'm sorry and repeat what the error was the error was Failing to consider the delayed presentation of these claims in the first place mr.. Hyatt's contention is that he had

[00:08:37] Speaker 02:
support for this subject matter as early as 1970 or 1975 or 1983 or 1988.

[00:08:42] Speaker 02:
But he's saying he had support for that subject matter, and yet he waited at least 12 years before submitting those claims to the Patent Office.

[00:08:53] Speaker 01:
And is that an error in limiting the scope of time that the district court was looking at, or was it

[00:09:00] Speaker 01:
just not giving that evidence so much weight.

[00:09:03] Speaker 01:
Because one of them's a legal issue, and one of them sounds like an abusive discretionary.

[00:09:08] Speaker 02:
He didn't address it at all.

[00:09:09] Speaker 02:
And I think the way you just put it is accurate.

[00:09:11] Speaker 02:
He limited the scope of the time that he would consider to the time period that these claims were an act of prosecution.

[00:09:19] Speaker 02:
But that neglects the history of Mr. Hyatt not presenting those to the office.

[00:09:22] Speaker 02:
And that's exactly what happened in Woodbridge

[00:09:24] Speaker 02:
And Webster, they had claims that they were not presenting to the patent office, or they presented and delayed the issuance for that year.

[00:09:30] Speaker 02:
The delay in presentation results in a delay in issuance.

[00:09:33] Speaker 00:
So under the Latchett's doctrine, you think the district court was required to review the entire period and not just a part of it, not just stages?

[00:09:41] Speaker 02:
Yes.

[00:09:42] Speaker 02:
He was required to review from the time that Mr. Hyatt first claims to have invented these inventions, the priority date.

[00:09:52] Speaker 02:
the time that he submitted them to the Patent Office and then he should also consider what happened at the Patent Office.

[00:09:57] Speaker 00:
Did you argue that there was some sort of delay or unreasonable conduct during that time?

[00:10:02] Speaker 02:
During which time?

[00:10:03] Speaker 00:
During from the time that the the application was filed?

[00:10:09] Speaker 02:
Yes during the time so there's an unreasonable delay in presenting the claims to begin with that's 12 to 28 years and

[00:10:16] Speaker 02:
But then when he gets to prosecuting in the Patent Office, there are several different kinds of unreasonable conduct, the first of which was when the examiner tried to get it.

[00:10:28] Speaker 02:
He didn't provide support for the later added claims as required by the MPEP in this court's subsequent case in 2007.

[00:10:35] Speaker 02:
And the other thing he did was he continued to add

[00:10:39] Speaker 02:
New claims hundreds of new claims each one of these claims has several hundred each one of these patents has patent applications has several hundred claims in it 1592 1592 in total and I say I'm into my rebuttal time This is unrelated, but we don't I don't see very many of these 145 cases and it seems like there's an issue here this is

[00:11:05] Speaker 01:
not necessarily related to latches.

[00:11:10] Speaker 01:
And maybe his counsel can explain what he's asking more.

[00:11:14] Speaker 01:
But it seems like he's asking, if he prevails here, that you all have to issue patents not only on the ones he won on in the trial, but all the ones that were in his complaint that weren't actually litigated that Judge Lambert didn't look at.

[00:11:30] Speaker 01:
And how does a 145 action work when you get the two rejections and a board decision and you come to a de novo review?

[00:11:39] Speaker 01:
If you only pick, say, five of 15 rejected claims to go in the 145 trial, is the decision of the district court only final on the five

[00:11:50] Speaker 02:
If there are rejected claims, our position is absolutely there are.

[00:11:54] Speaker 02:
And that's why this court had held that in the Goldfeig-Quig 1987.

[00:11:59] Speaker 01:
But I take it what he's arguing is he put all of the claims here in his complaint, but the district court only looked at some of them, because those were only the subject of the board decision.

[00:12:10] Speaker 01:
What's the effect of the district court not looking at those others?

[00:12:14] Speaker 02:
Our position is those still need to be valued by the agency.

[00:12:18] Speaker 02:
There's some where the board reversed rejection, so there aren't actual rejections by the agency.

[00:12:22] Speaker 01:
Sure.

[00:12:22] Speaker 01:
I get that your position here.

[00:12:23] Speaker 01:
How does it work in the typical 145 case?

[00:12:27] Speaker 01:
If somebody brings in to the district court and says, I want a de novo review of these claims, what happens to rejected but not raised claims to the district court?

[00:12:39] Speaker 02:
I think this is the only case where it has occurred.

[00:12:42] Speaker 02:
145 actions are relatively rare.

[00:12:45] Speaker 02:
Again, I just think applying normal patent principles, they have to come back to the office for further consideration.

[00:12:51] Speaker 02:
The district court can certainly rule on the claims that are before it.

[00:12:54] Speaker 00:
OK, before you sit down, I do have another question.

[00:12:58] Speaker 00:
So when we're reviewing the doctrine of latches, the applicability of latches here, we're looking at unreasonable conduct, correct?

[00:13:07] Speaker 00:
Yeah.

[00:13:09] Speaker 00:
If Mr. Hyatt's conduct is shown to have complied with agency regulations and your procedures, and apparently all submissions have been timely filed, and so their conduct falls within the realm of

[00:13:31] Speaker 00:
of satisfying and complying with your procedures.

[00:13:36] Speaker 00:
Then what's unreasonable here if they choose to slow it down?

[00:13:39] Speaker 00:
Because OK, go ahead.

[00:13:42] Speaker 02:
But number one is the period of time that they fail to do anything, i.e.

[00:13:47] Speaker 02:
fail to present these claims to the Patent Office exceeds the time held to be prosecution latches by the Supreme Court.

[00:13:53] Speaker 02:
That should at least create some kind of presumption of latches.

[00:13:55] Speaker 02:
But then the second thing is he violated our procedure when he came to the Patent Office and failed to provide written description support for later added claims.

[00:14:03] Speaker 02:
We only saw that support first in 2014 when he started to make these arguments in connection with one of these district court actions.

[00:14:11] Speaker 02:
So there are certain things he certainly has the right to do.

[00:14:14] Speaker 02:
We've learned from the Supreme Court that he has the right to introduce written description support much, much later.

[00:14:20] Speaker 02:
But that doesn't necessarily mean he complied with reasonable conduct during that

[00:14:24] Speaker 02:
patent application process.

[00:14:25] Speaker 02:
And in this case, he essentially rendered that entire examination time annulity by introducing new evidence.

[00:14:34] Speaker 04:
So the government's position that an insufficient submission, legally insufficient submission, unsupported, for example, is inherently untimely?

[00:14:46] Speaker 02:
Or are they two different things?

[00:14:49] Speaker 02:
You mean unsupported by the written description?

[00:14:53] Speaker 02:
I think they're probably two different things.

[00:14:57] Speaker 02:
There's a debate.

[00:14:58] Speaker 02:
We think the vast majority of the claims he's been submitting are not supported by the written description.

[00:15:03] Speaker 02:
We only see the tip of the iceberg.

[00:15:05] Speaker 02:
In this case, these may be the best case for which there is a written description support case.

[00:15:09] Speaker 02:
But even that falls apart because, as you saw, the district court felt a need.

[00:15:14] Speaker 04:
But you're not saying they're untimely.

[00:15:16] Speaker 04:
You're saying they're timely but invalid.

[00:15:18] Speaker 02:
They are untimely in the latches sense in that he presented them much later.

[00:15:23] Speaker 02:
They may be timely in Judge Raina's sense in the sense that they were submitted and he timely complied with the timing requirements in the course of examination.

[00:15:31] Speaker 02:
But they were certainly untimely in the fact that he only got around in 2014 to show written description support as another instance of that latches where he had an obligation to move the prosecution along.

[00:15:44] Speaker 02:
OK.

[00:15:46] Speaker ?:
Thank you.

[00:15:55] Speaker 00:
Counselor Grossman?

[00:15:56] Speaker 03:
Good morning.

[00:15:57] Speaker 03:
May it please the court.

[00:15:58] Speaker 03:
My friend began discussing the doctrine of prosecution latches and explaining that it begins to toll when an inventor, in his words, invents something and then proceeds to delay the free use of that particular invention.

[00:16:10] Speaker 03:
I think that gets right to the heart of the issue in this case.

[00:16:12] Speaker 04:
I have a lot of questions for you.

[00:16:14] Speaker 04:
On page 20 of the blue brief, the government says, one of the suits that you took in action, that you took, I'm adding that in, in action

[00:16:23] Speaker 04:
was the litigation underlying the Supreme Court's capitalist decision.

[00:16:28] Speaker 03:
Why did you litigate that to the Supreme Court and then fail to act?

[00:16:32] Speaker 03:
Ultimately, the case was dismissed for want of prosecution.

[00:16:37] Speaker 03:
Mr. Hyatt faults his attorneys for that.

[00:16:39] Speaker 03:
I should note, we were not those attorneys.

[00:16:42] Speaker 03:
Mr. Hyatt was severely penalized for that.

[00:16:45] Speaker 03:
That application was forfeited.

[00:16:46] Speaker 04:
I'm going to want pretty succinct answers, because I have a lot of questions, and you have 20 minutes, even if we can make it.

[00:16:53] Speaker 04:
If we can extend that.

[00:16:56] Speaker 04:
On 51 and 52 of the blue brief, the government says the five claims the district court found that the specification described are indistinguishable from the rest of the unsupported 639 claims.

[00:17:10] Speaker 04:
How are they distinguishable?

[00:17:12] Speaker 03:
I believe these are the cash memory type claims.

[00:17:15] Speaker 03:
With respect to each of those different claims that was issued, everybody agreed that the specification disclosed cash memory.

[00:17:22] Speaker 03:
What was different between the claims was each one considered the combination of cash memory with other limitations.

[00:17:27] Speaker 03:
And so the limitation with respect to the claim there, it was just a different combination of elements.

[00:17:31] Speaker 03:
And if you look at the district court decision with respect to the cash memory written description portions of it, each one of those focused on different combinations than at issue in that claim.

[00:17:41] Speaker 04:
OK.

[00:17:41] Speaker 04:
On page 15 of the red brief,

[00:17:44] Speaker 04:
You say that the district court, quote, found that Hyatt could not be faulted for any delay between 2003 and 2012 based on the PTO's stipulation of that effect.

[00:17:58] Speaker 04:
How was that a valid analysis by the district court?

[00:18:02] Speaker 03:
I mean, the PTO repeatedly stipulated that it was not charging that time against Mr. Hyatt because the PTO effectively blocked

[00:18:10] Speaker 03:
prosecution of his applications for that decade-long period.

[00:18:14] Speaker 01:
But because you were litigating subsidiary issues that might have affected all of those cases and the way it was conducting in its examination.

[00:18:24] Speaker 03:
There was a lot of back-and-forth evidence on that.

[00:18:26] Speaker 03:
We argued in our findings, in fact, and conclusions of the law based on the testimony that the time periods didn't really line up and that that's not really what was going on.

[00:18:35] Speaker 03:
And that was before we even put on our case.

[00:18:37] Speaker 03:
The PTO asked the district court not to consider any of that.

[00:18:40] Speaker 03:
In other words, we made these fact arguments.

[00:18:42] Speaker 03:
The PTO said, don't consider those fact arguments.

[00:18:44] Speaker 03:
They're irrelevant.

[00:18:45] Speaker 03:
We are not citing that time period in support of our Latchez argument.

[00:18:51] Speaker 03:
And so the district court didn't make any factual findings on that point because the PTO said, not relevant to Latchez.

[00:18:58] Speaker 04:
On page 25 of the red brief at footnote one, you say the 398 application was one of nearly 100

[00:19:05] Speaker 04:
of Hyatt's applications assigned to a single examiner with a full docket of other applications.

[00:19:12] Speaker 04:
Do you deny the blue brief's statement of the number of full-time examiners assigned to Hyatt's applications?

[00:19:20] Speaker 03:
If I recall correctly, that statement concerns a much later time period.

[00:19:24] Speaker 03:
During the time period when this particular application was being examined, there were, in fact, approximately 100 applications

[00:19:31] Speaker 03:
assigned to Brian Werner.

[00:19:33] Speaker 03:
And he had a full-time docket of other applications that he worked on during the day.

[00:19:38] Speaker 03:
He worked on Mr. Hyatt's applications in his free time in the evenings, just as something he enjoyed doing.

[00:19:46] Speaker 04:
That's nice.

[00:19:46] Speaker 04:
On page 27 of the Red Blade, you say that to inflate the number of claims and applications, the PTO turned to continuation and part relationships.

[00:19:56] Speaker 04:
What record evidence do you have that shows the PTO was inflating numbers?

[00:20:01] Speaker 03:
If you're talking about inflating the time periods at issue here.

[00:20:06] Speaker 03:
No of the number of claims.

[00:20:09] Speaker 04:
Yeah, I Mean that is what you're saying

[00:20:13] Speaker 03:
So with respect to continuation and part relationships, I think the thing to focus on, we've got four applications here in this case.

[00:20:21] Speaker 03:
They were subject to summary judgment and then trial.

[00:20:23] Speaker 03:
There was never a dispute between the parties as to what the applicable priority dates were.

[00:20:27] Speaker 03:
And that's typically, and I believe if you go through the prosecution history.

[00:20:31] Speaker 04:
No, you asserted.

[00:20:32] Speaker 04:
I want succinct answers if I can.

[00:20:35] Speaker 04:
You asserted that PTO inflated the number of claims and applications.

[00:20:40] Speaker 03:
Oh, I apologize, Your Honor.

[00:20:41] Speaker 03:
I misunderstood your question.

[00:20:43] Speaker 03:
So I want to know what record evidence you have.

[00:20:46] Speaker 03:
We were not able to put on our case, but in evidence there was the prosecution histories of Mr. Hyatt's pending 1995 applications.

[00:20:57] Speaker 03:
And the PTO to inflate the number includes, I believe, canceled claims as well as currently pending claims.

[00:21:03] Speaker 04:
I'm going to cede to my brother for the moment.

[00:21:06] Speaker 04:
I have a lot more.

[00:21:07] Speaker 00:
I have a question.

[00:21:11] Speaker 00:
Looking at the record and looking at the amount of cases and claims, if Sherlock's home was here, he'd say there's something afoot.

[00:21:23] Speaker 00:
Something's going on.

[00:21:25] Speaker 00:
And it seems to me that although Mr. Hyatt may have been within the confines of agency regulations and procedures,

[00:21:41] Speaker 00:
that there was significant delay.

[00:21:43] Speaker 00:
And some of it appears to have been intentional, this failure to cite the specification for an extended period of time.

[00:21:55] Speaker 00:
And I don't know if you would say I disagree with you, Judge.

[00:22:00] Speaker 00:
There's no delay here.

[00:22:01] Speaker 00:
This is not unusual.

[00:22:05] Speaker 00:
But I think it is.

[00:22:06] Speaker 00:
I think it's highly unusual.

[00:22:09] Speaker 00:
And something's happening.

[00:22:10] Speaker 00:
And although you may have been within the scope of the regulations, I think the doctrine of latches would still apply here.

[00:22:21] Speaker 00:
And I think our case law would support that.

[00:22:24] Speaker 00:
So I'd like to know from you, what is it that was reasonable about the behavior, the conduct here that resulted in this maze, this beehive,

[00:22:38] Speaker 00:
of thousands of claims and specifications that are hundreds of pages long and without you pointing to what's relevant or not.

[00:22:48] Speaker 00:
And so I wanted you to have that opportunity.

[00:22:52] Speaker 00:
Explain that to me.

[00:22:53] Speaker 03:
Thank you, Your Honor.

[00:22:54] Speaker 03:
I appreciate that.

[00:22:55] Speaker 03:
Of course, as Your Honors are well aware, Mr. Hyatt did not put on his defense because the district court granted judgment on partial findings.

[00:23:01] Speaker 03:
With that being said, Mr. Hyatt's specifications describe entire systems that he invented.

[00:23:07] Speaker 03:
which have multiple inventive features, and that's what's claimed in his applications.

[00:23:11] Speaker 03:
If you look at the individual claims, the claims tend to be very narrow.

[00:23:15] Speaker 03:
These are not broad, cover-the-world claims.

[00:23:17] Speaker 03:
They tend to describe particular uses, particular functionalities, and so on with many limitations.

[00:23:22] Speaker 03:
I think that, by and large, describes why there are so many claims.

[00:23:27] Speaker 03:
In terms of the issue of delay, I will note that we're talking about four applications here.

[00:23:33] Speaker 03:
My friend, Mr. Kraus.

[00:23:34] Speaker 03:
Isn't that the problem?

[00:23:36] Speaker 01:
in the latches analysis that the district court allowed you to focus in on four single applications from this vast universe and then limited the time frame for consideration to a much narrower time frame than the entirety of the conduct here.

[00:23:54] Speaker 01:
And the problem the patent office has is not just with these four applications, it's with the way since 1970

[00:24:01] Speaker 01:
that Mr. Hyatt has prosecuted all these applications.

[00:24:04] Speaker 01:
And isn't that legal error when he limited the scope of what he was going to review for latches?

[00:24:09] Speaker 03:
Your Honor, the district court did not limit the scope.

[00:24:12] Speaker 03:
I want to be very clear about this.

[00:24:15] Speaker 01:
Let's assume I disagree with your reading of that.

[00:24:18] Speaker 03:
May I have the opportunity to explain why we believe that's the case?

[00:24:22] Speaker 03:
First of all, the PTO conceded that post-2002 actions, at least 2002 through about 2013, were not going to be chargeable with respect to latches.

[00:24:31] Speaker 03:
Second, my friend Mr. Kraus spent a lot of time talking about the presentation of claims.

[00:24:36] Speaker 03:
This court said in symbol that simply that the passage of time or the word merely the mere use of continuation applications is not itself latches.

[00:24:45] Speaker 03:
There has to be something more.

[00:24:47] Speaker 03:
This court has a half dozen cases that state that proposition with respect to latches.

[00:24:51] Speaker 01:
But you got to stop when I start talking.

[00:24:53] Speaker 01:
I'm going to let you finish.

[00:24:54] Speaker 01:
But you got to stop.

[00:24:54] Speaker 01:
I apologize, Your Honor.

[00:24:56] Speaker 01:
Maybe the mere passage of time, doesn't it?

[00:24:58] Speaker 01:
mean latches but doesn't when it's 20 or 30 years turn into something that's not just mere passage but unreasonable first of all we're not you dispute that but let's just assume that's a hypothetical not what happened here first of all we're not talking about 20 or 30 years with respect to the presentation of claims second

[00:25:17] Speaker 03:
I think it's the government's burden under this court's cases regarding latches and prosecution latches specifically to show something more.

[00:25:23] Speaker 03:
I will note the prosecution histories of the parent and grandparent applications here, the PTO didn't even offer those in the evidence.

[00:25:30] Speaker 03:
They were not before the district court.

[00:25:32] Speaker 03:
The PTO didn't have an expert testify that this was unreasonable, this was unreasonable, this should have been done.

[00:25:37] Speaker 03:
Mr. Hyatt testified at his deposition.

[00:25:40] Speaker 03:
that he prosecuted the parent applications to resolve common issues, in other words, issues that might involve multiple claims, and then at that point proceeded to file child applications.

[00:25:51] Speaker 03:
This court recognized in symbol that that was a perfectly legitimate use of continuing applications.

[00:25:57] Speaker 03:
My friends did not put in Mr. Hyde.

[00:25:59] Speaker 01:
What about his failure to

[00:26:02] Speaker 01:
When the examiner's asked for written description support for these multiple claims on these different specifications What about his refusal to do that?

[00:26:12] Speaker 01:
Mr. Hyatt won many reversals on written description issues before the board.

[00:26:15] Speaker 01:
That's not answering my question He refused even if he was within his right to refuse when you have this extraordinary group of patent claims and specifications across all these different things if the examiner is

[00:26:28] Speaker 01:
in order to figure out where there is written description support for a certain claim in a 600-page specification ask, isn't it unreasonable to not respond?

[00:26:39] Speaker 01:
And if you do that multiple times over the course of multiple years, doesn't that, at some point, end up in prosecution latches?

[00:26:47] Speaker 03:
You know, Your Honor, it might, but that's not what happened here.

[00:26:49] Speaker 03:
These applications were prosecuted briskly.

[00:26:52] Speaker 03:
Mr. Hyatt did put forward written description support, which is why he was able to reverse examiner

[00:26:57] Speaker 03:
rejections for lack of written

[00:27:05] Speaker 03:
And then ultimately, the evidence that Mr. Hyatt put forward in court was the kind of evidence that one puts in court, including expert testimony.

[00:27:12] Speaker 03:
The PTO has never required that somebody have the testimony of one skilled in the art to present opinion evidence before the agency.

[00:27:19] Speaker 03:
That would transform the way that the agency deals with written descriptions altogether.

[00:27:23] Speaker 03:
It would make the prosecution process far more burdensome.

[00:27:27] Speaker 03:
But at the end of the day, I would still get back to, and I think the court ought to focus on,

[00:27:30] Speaker 03:
where Mr. Krauss began, which is talking about the individual inventions that are claimed here.

[00:27:37] Speaker 00:
Let's get back to the focus of my question.

[00:27:40] Speaker 00:
And I asked you as to why the delay here was not unreasonable.

[00:27:45] Speaker 00:
I don't think you've answered the question.

[00:27:48] Speaker 00:
You did cite symbol technologies, and I'm going to read to you one sentence out of there.

[00:27:52] Speaker 00:
Thus, in symbol technologies, we held that a patent may be rendered unenforceable if it was obtained after an unreasonable and unexplained delay in prosecution.

[00:28:03] Speaker 00:
There were delays here.

[00:28:05] Speaker 00:
This is highly unusual.

[00:28:07] Speaker 00:
The delays here compared to the normal course of the life of a patent going through an application process, this is highly unusual.

[00:28:18] Speaker 00:
I would like to know why it's not unreasonable.

[00:28:23] Speaker 03:
Well, again, noting that we did not put on our defense, what I would say was, I think the district court properly looked at the different periods of time at issue.

[00:28:32] Speaker 03:
I mean, let's just go through the different periods.

[00:28:34] Speaker 03:
There were about three periods of time, and I think we can address them quite quickly.

[00:28:36] Speaker 03:
The first one is with respect to presentation of claims from when the first comments passed.

[00:28:42] Speaker 00:
So your argument is that there was no delay?

[00:28:45] Speaker 03:
Our argument is that the PTO did not prove that there was unreasonable and unexplained delay here, which was the PTO's burden as the party asserting a prosecution latches defense.

[00:28:54] Speaker 03:
The PTO put on basically no evidence with respect to the prosecution of the parent or grandparent applications, no expert testimony, nothing.

[00:29:01] Speaker 03:
They simply had the dates, and that's it.

[00:29:03] Speaker 03:
And the court's cases made clear, that gets you nowhere.

[00:29:06] Speaker 03:
Second, the period of prosecution of these applications, the PTO's own witnesses testified that the amount of time they spent in prosecution was unremarkable.

[00:29:14] Speaker 03:
The PTO itself, in its opening brief, devotes all of one page of argumentation to the prosecution of these four applications.

[00:29:24] Speaker 03:
That is it.

[00:29:25] Speaker 03:
I think you can draw a conclusion from that.

[00:29:28] Speaker 03:
And indeed, the PTO's expert was unable to say that anything Mr. Height did or didn't do during the prosecution of these applications caused any particular period of delay.

[00:29:37] Speaker 03:
And as I said, in any instance, they were prosecuted in a reasonable period of time themselves.

[00:29:43] Speaker 03:
You have the period from 2002 to 2012 or 2013.

[00:29:48] Speaker 01:
Can I just ask you one separate question?

[00:29:52] Speaker 01:
We also have the written description decisions on appeal.

[00:29:55] Speaker 01:
If we vacate and remand until the district court to relook at prosecution latches, do we need to look at written description now, or can that wait until after the district court's decision on prosecution latches?

[00:30:07] Speaker 01:
I know you want us to look at it now, but can it wait, or do you somehow

[00:30:11] Speaker 01:
Do we somehow procedurally err if we wait?

[00:30:14] Speaker 01:
I think it would be at the court's discretion.

[00:30:18] Speaker 03:
Having 40 seconds left, I would continue the point.

[00:30:21] Speaker 00:
I have a lot more questions for you.

[00:30:24] Speaker 04:
And I mean a lot more.

[00:30:27] Speaker 04:
On page 34 of a 89-page red brief, you say, Hyatt takes great umbrage with and disputes the lawfulness of the PTO's recent efforts to disparage him in office actions

[00:30:41] Speaker 04:
and to push his applications into abandonment.

[00:30:45] Speaker 04:
Why do you need that kind of language in an 89-page brief?

[00:30:48] Speaker 04:
That's a lot of reading for us to do.

[00:30:50] Speaker 04:
I read everything three times.

[00:30:53] Speaker 04:
It appears to me that you're writing for your client and not for the court.

[00:30:57] Speaker 04:
And you're an attorney.

[00:31:00] Speaker 04:
Explain it to me.

[00:31:02] Speaker 03:
I apologize, Your Honor, if that was taken.

[00:31:05] Speaker 03:
Our intent was to make the court aware.

[00:31:07] Speaker 04:
It was taken as puerile.

[00:31:08] Speaker 04:
That is, childish excess verbiage.

[00:31:12] Speaker 04:
On pages 36 and 37 of the red brief, you state that for the PTO to now reverse itself, disputing that it stipulated anything, and argue that Hyatt was really to blame for the agency's delay is stunning.

[00:31:29] Speaker 04:
The PTO at footnote four of the blue brief says, the PTO offered to stipulate that this period of time does not constitute part of the unreasonable delay, but no stipulation was

[00:31:42] Speaker 04:
ultimately entered.

[00:31:47] Speaker 04:
And I'm keeping in mind that the government says, in a footnote, where they say they offered to stipulate, that they do not argue that the period in which the PTO stayed examination from 2003 till 2012 constitutes part of Hayat's unreasonable delay.

[00:32:06] Speaker 04:
But I want to know, because I didn't see it, where's the stipulation?

[00:32:09] Speaker 03:
Your Honor, we cite in the portion that Your Honor quoted

[00:32:12] Speaker 03:
to the findings of fact and conclusions of law that the PTO filed, which states that the PTO stipulated to that effect.

[00:32:19] Speaker 04:
They say they stipulate?

[00:32:21] Speaker 04:
Yes.

[00:32:22] Speaker 04:
All right.

[00:32:22] Speaker 04:
I'll look.

[00:32:24] Speaker 04:
On page 39 of the red brief, you say that this court has never upheld a finding of prosecution lashes based on anything other than egregious abuse of continuations that delays the prosecution of specific inventions.

[00:32:44] Speaker 04:
I think my brethren have asked this question.

[00:32:46] Speaker 04:
How is Hyatt's full pattern of behavior before the PTO not an egregious abuse of its procedures?

[00:32:55] Speaker 03:
Your Honor, Mr. Hyatt began as an independent inventor, writing and prosecuting his own applications.

[00:33:02] Speaker 03:
He did so in a methodical fashion.

[00:33:04] Speaker 03:
He obtained 70 patents.

[00:33:05] Speaker 03:
He's renown for his inventions, which were groundbreaking at the time.

[00:33:09] Speaker 03:
And he's tried to do the best he can with an agency that, frankly,

[00:33:12] Speaker 03:
he is found to be very recalcitrant.

[00:33:14] Speaker 03:
I know there are recriminations on both sides as to the conduct of the parties.

[00:33:18] Speaker 03:
And I will simply note that those issues, that set of issues, is being litigated now in the Eastern District of Virginia, where we overcame the PTO's motion to dismiss on a claim that the PTO has a de facto policy to simply preclude Mr. Hyatt from obtaining further patent applications, and that it's had that policy in force from approximately the late 1990s.

[00:33:39] Speaker 04:
How does that answer my question?

[00:33:41] Speaker 04:
that it's not an egregious abuse of procedures?

[00:33:45] Speaker 04:
Has the court there held that?

[00:33:47] Speaker 04:
I'm sorry, I'm confused.

[00:33:48] Speaker 03:
Your Honor, my point is that I think if you look at some of what's happened here in a vacuum, you can say there's been a lot of time that's passed, and that seems awfully unusual, and we don't disagree with that.

[00:33:57] Speaker 04:
OK.

[00:33:58] Speaker 03:
But the question?

[00:33:59] Speaker 04:
No.

[00:33:59] Speaker 04:
You know the rules.

[00:34:01] Speaker 04:
As I said, I want to keep this succinct because I have a lot of questions.

[00:34:06] Speaker 04:
On page 43 of the red brief, you say that the government's arguing

[00:34:10] Speaker 04:
pages 36 and 37 of the blue brief, quote, relies entirely on the bare number of claims without any analysis of their substance, the subject matter they concern, their relationships or structure, the natures of the inventions at issue, or even how they compare to other applicants claims.

[00:34:30] Speaker 04:
Do you agree that on page 36 of the blue brief the government provides a chart, a big chart,

[00:34:37] Speaker 04:
showing the distribution of claim counts for your applications and analyze the individual claim counts over time?

[00:34:44] Speaker 03:
I assume that chart appears there, Your Honor.

[00:34:48] Speaker 04:
I should think you'd know the briefs.

[00:34:51] Speaker 04:
Yes, Your Honor, there is a chart.

[00:34:52] Speaker 04:
How are those detailed statistics not analyzing the substance of the claims?

[00:34:58] Speaker 03:
Your Honor,

[00:34:58] Speaker 03:
This court has said, with respect to, say, undue multiplicity, that too many claims is not really any type of argument under the Patent Act.

[00:35:06] Speaker 03:
You have to look at the individual claims themselves, and you have to determine whether they're meaningfully distinct and whether they help to clarify the invention.

[00:35:13] Speaker 03:
That's the point, which is if the PTO is going to argue too many claims, that simply is not an objection to issuance that the Patent Act recognizes.

[00:35:24] Speaker 04:
Do you agree?

[00:35:27] Speaker 04:
Well, let me say this.

[00:35:29] Speaker 04:
On page 64 of the red brief, you say that USPTO takes Hyatt's statements out of context by mixing them with unattributed quotes from Castleman equating those terms to GUI.

[00:35:42] Speaker 04:
Where are the unattributed quotes?

[00:35:45] Speaker 04:
And when you say that, I write a marginal note saying,

[00:35:50] Speaker 03:
I believe, Your Honor, they're in the section of the PTO's brief that's referenced regarding the definition of the term windows and icons and menus.

[00:35:58] Speaker 03:
There are quotes from Mr. Hyatt's testimony that describe his understanding of those particular claims, and there are other quotes in that section that are actually quotes from Mr. Castleman, if I recall correctly.

[00:36:10] Speaker 03:
Who is the PTO's expert, I would ask?

[00:36:11] Speaker 04:
I understand, but I didn't find anything that wasn't cited.

[00:36:16] Speaker 04:
I'll go back and look again.

[00:36:19] Speaker 03:
Your Honor, to be perfectly clear, there were appendix citations there.

[00:36:23] Speaker 03:
In our view, it appeared to be somewhat ambiguous as to who was saying what, and we simply sought to point that out.

[00:36:29] Speaker 04:
All right.

[00:36:32] Speaker 04:
OK, that's your take on an unattributed fine.

[00:36:37] Speaker 04:
On page 78 of the Red Bridge, you say that the USPTO cannot prevail in its challenge to the court's de novo factual findings on claim 214 because it introduced no evidence to rebut high its new evidence.

[00:36:49] Speaker 04:
But on page 42 of the yellow brief, the government says, you don't dispute the district court's conclusion that the specifications discussion of buffer memory and frame memory was not sufficient to support similar claims reciting cache memory.

[00:37:04] Speaker 04:
Do you dispute the district court's conclusion?

[00:37:08] Speaker 03:
Not with respect to, there was an issue whether buffered memory, whether the term buffered memory was sufficient to encompass cash memory.

[00:37:16] Speaker 03:
And the district court held against us on that description issue.

[00:37:19] Speaker 03:
But that was not an issue in claim number 214.

[00:37:22] Speaker 03:
Claim 214, the issue there was the combination of cash memory with a computer and refreshable memory.

[00:37:29] Speaker 03:
And we put on specific evidence of that.

[00:37:32] Speaker 03:
And the PTO's expert declined to offer an opinion on that issue.

[00:37:36] Speaker 04:
On page six of the yellow brief,

[00:37:39] Speaker 04:
The government says, well, reference is Hayat v. Boone, the TI case.

[00:37:46] Speaker 04:
Is it true that TI owned the computer on a single chip invention in 1971?

[00:37:54] Speaker 03:
They did prevail in the interference action regarding that.

[00:37:57] Speaker 04:
Yes, Your Honor.

[00:38:02] Speaker 04:
Let's see.

[00:38:02] Speaker 04:
I'm trying to just get the ones I really want.

[00:38:10] Speaker 04:
On page 18 of the yellow brief, the government says, the agency has to know about these identical sets of claims to examine them consistently.

[00:38:20] Speaker 04:
And the claims in two of the applications at issue were patently indistinct and identical.

[00:38:28] Speaker 04:
How are they patently distinct?

[00:38:32] Speaker 03:
The particular claims at issue, I'm not sure to which claims the government was referring in that instance.

[00:38:37] Speaker 03:
I will note that the government did not raise any double patenting issue in this particular case, and it could have under this court's decision of Troy versus Sansom.

[00:38:45] Speaker 03:
And in fact, it did raise a ground of rejection as a defense with respect to latches.

[00:38:50] Speaker 04:
On page 27 of the yellow brief, I'm trying to move you along because I have a lot.

[00:38:56] Speaker 04:
The government states that while Mr. Hyatt asserts on page one of the red brief that the USPTO routinely disparaged him in his applications in court filings and to Congress, going so far as to announce that it would never allow any of them to issue, Mr. Hyatt cites no evidence to support those allegations.

[00:39:16] Speaker 04:
Where is that evidence in the record?

[00:39:18] Speaker 03:
Your Honor, we would be happy to file a notice of supplemental authority that cites those particular... That wasn't my question, was it?

[00:39:25] Speaker 04:
Come on now.

[00:39:26] Speaker 04:
I asked you, where is that evidence in the record?

[00:39:29] Speaker 04:
I have some volumes here.

[00:39:32] Speaker 04:
I can try to lift the others.

[00:39:35] Speaker 04:
It's a big record.

[00:39:36] Speaker 04:
Where is it in the record?

[00:39:38] Speaker 03:
I don't want supplemental authority on, what, 14 volumes?

[00:39:43] Speaker 03:
Your Honor, I do not recall whether that's in the record.

[00:39:45] Speaker 03:
I would have to present that in notice of supplemental authority, which, as I said, we're happy to do.

[00:39:50] Speaker 04:
On page 37 of the yellow brief at footnote 14,

[00:39:54] Speaker 04:
The government says that contrary to Mr. Hyatt's statement that cancer research addressed bogies and held that intervening rights is required for any application of prosecution latches, cancer research did not overturn bogies in any respect.

[00:40:09] Speaker 03:
Why do you believe it did?

[00:40:11] Speaker 03:
We do not believe it overturned bogies.

[00:40:14] Speaker 03:
If you look at cancer research technology's discussion of bogies, it made clear that

[00:40:17] Speaker 03:
Intermediating rights was proven before the board.

[00:40:19] Speaker 03:
The PTO did, in fact, prove that.

[00:40:21] Speaker 03:
And the board ruled against the applicant on that issue.

[00:40:24] Speaker 03:
And the applicant did not raise that issue in his appeal to this court.

[00:40:28] Speaker 03:
OK, one last question for you.

[00:40:30] Speaker 04:
And I don't know what others have.

[00:40:31] Speaker 04:
On page 56 of the yellow brief, the government says that you quote, cite your own proposed findings of fact, and they give a JAA sign, in support of your claim video image sources.

[00:40:45] Speaker 04:
I ask counsel this a lot in various cases.

[00:40:47] Speaker 03:
How are your own proposed findings of fact the basis for a citation?

[00:40:51] Speaker 03:
Two points, Your Honor.

[00:40:53] Speaker 03:
First of all, in several instances, we did cite our findings in fact, where those findings in fact compiled pieces of testimony that it was useful to have in one place.

[00:41:02] Speaker 03:
And so it was simply for the sake of convenience where we quoted the actual testimony at issue.

[00:41:06] Speaker 03:
And I think in many of those instances, perhaps not all of them, we parenthetically cited the portion of the testimony that was at issue.

[00:41:13] Speaker 03:
Second, with respect to the video, there was video evidence presented at the trial, but the district court ultimately did not rely on that.

[00:41:19] Speaker 03:
No, this is video image sources.

[00:41:20] Speaker 03:
It's not.

[00:41:21] Speaker 03:
Oh.

[00:41:22] Speaker 03:
With video image sources.

[00:41:24] Speaker 03:
Oh well that then my answer stands your honor.

[00:41:26] Speaker 03:
Okay, then I'll check the record Okay, Mr.. Grossman.

[00:41:29] Speaker 00:
We thank you for your for your answers Let's hear from Mr.. Krauss now, and I'm going to restore your time to five minutes, sir

[00:41:45] Speaker 01:
Thank you, Your Honor.

[00:41:46] Speaker 01:
Can I start with just my side question?

[00:41:49] Speaker 01:
If we decide to vacate and remand on latches, is there any need for us to wait into written description right now?

[00:41:56] Speaker 02:
Subject to checking, there may be, in one of these cases, I think in the 211 case, the only thing that remains alive are these written description rejections.

[00:42:05] Speaker 02:
In other words, if you uphold our position,

[00:42:08] Speaker 01:
Written description that application no if we send this back to the district court and say look at the latches defense again Isn't your position that that takes care of this whole case it absolutely does so why would we need to wait in to?

[00:42:22] Speaker 02:
Description now I think that's it is a matter of this course discretion and it doesn't matter economy especially if you provide an opinion that provides clear instructions to the district court on how to deal with the latches and

[00:42:33] Speaker 02:
question, maybe we can avoid the written description questions entirely.

[00:42:40] Speaker 02:
But we would ask that based on this record, the court simply agree with us that prosecution latches applies and write a decision to that effect.

[00:42:47] Speaker 02:
We don't see anything that Mr. Hyatt could possibly say in his rebuttal case that would overcome the unreasonable delays that occurred

[00:42:56] Speaker 02:
presenting claims here.

[00:42:57] Speaker 01:
Well that seems highly irregular I mean he wasn't even allowed to put on a full defense and you know he may still ultimately prevail but if he wasn't allowed to put on a full defense he should be given that option.

[00:43:09] Speaker 02:
It's an unusual case and it warrants an unusual request but I completely understand that you might think that there's a reason to remand but but again.

[00:43:18] Speaker 02:
When the government says we don't see what he could possibly say

[00:43:21] Speaker 02:
It doesn't mean that he doesn't see what he could possibly say.

[00:43:23] Speaker 02:
Well, again, the delays here haven't even been before.

[00:43:26] Speaker 02:
Latches occurred even before he presented the claims to the agency, at the agency, despite the fact that he just said these were normal prosecution times.

[00:43:33] Speaker 02:
They were not normal prosecutions, because we emerged from prosecution from the examiner with no sense of where the written description support was.

[00:43:40] Speaker 01:
But his counsel suggests that they have good reasons for that, and they weren't allowed to present them.

[00:43:45] Speaker 01:
Whether they do or not is a different story, but it seems to me that if we

[00:43:52] Speaker 01:
ruled for you without giving them that opportunity, our judgment would be.

[00:43:56] Speaker 01:
very infirm if he saw it.

[00:44:00] Speaker 02:
All we would ask is that you lay out the law of prosecution latches as clearly as possible for the district court to apply on remand.

[00:44:09] Speaker 00:
And in doing so, are we asking the district court to review the application of latches in the same manner it did before by taking out certain time frames and certain familial applications

[00:44:22] Speaker 00:
Or is not the actual test one of totality of circumstances?

[00:44:27] Speaker 02:
Totality of the circumstances is the actual overall test, and that's one of the errors that

[00:44:32] Speaker 02:
district court committed by not considering these applications in the context of the other 400 applications at issue.

[00:44:40] Speaker 02:
But there are also some guidelines you could provide as far as how long is a reasonable amount of time to wait before presenting claims, what constitutes reasonable conduct.

[00:44:50] Speaker 02:
I'm not so sure we can do that as much as we can say how long is not a reasonable amount of time.

[00:44:56] Speaker 02:
That's another way of formulating it, and I think that would be acceptable as well.

[00:45:02] Speaker 02:
I will just back up on the prosecution time.

[00:45:05] Speaker 02:
Opposing counsel did say it was a normal prosecution time.

[00:45:08] Speaker 02:
Again, it was not a normal prosecution.

[00:45:10] Speaker 02:
He mentioned that they prevailed at the board, and that should somehow be evidence.

[00:45:13] Speaker 02:
But that was only based on the fact that he was at the board and presented new evidence entirely at the board, and new arguments.

[00:45:22] Speaker 02:
An example of that is the A214 of the record, where the board notes the examiner noting that this is the very first time Mr. Hyatt offered description and support for a certain claim.

[00:45:32] Speaker 02:
And even then, the board in these cases mostly on the reversals went off on its own without a whole lot of help from Mr. Hyatt to reverse the written description rejections by the examiner, some of which were just on procedural grounds.

[00:45:50] Speaker 02:
Mr.

[00:45:53] Speaker 02:
Grossman mentioned the grandparent applications, how we failed to talk about that.

[00:45:57] Speaker 02:
That wasn't the focus of our case.

[00:45:58] Speaker 02:
But part of our case, we did mention the 094 application, which is a grandparent to the 211 and 398 applications here.

[00:46:06] Speaker 02:
In that application, he received an allowance back in 1988 on certain claims, and then allowed, and then didn't take the claims, allowed them to go abandon, which in itself wouldn't necessarily be wrong, or let's say,

[00:46:21] Speaker 02:
Not taking the claims wouldn't be a self-wrong, because he might want to present new prior art.

[00:46:25] Speaker 02:
But then he allowed the claims to go abandoned, only to reintroduce them 10 years later, adding a 10-year delay to these previously allowed claims.

[00:46:35] Speaker 02:
So that's the discussion of the grandparent applications.

[00:46:37] Speaker 02:
I think if we do look at the grandparent applications, we'll find that they don't justify the conduct that has occurred in these.

[00:46:44] Speaker 02:
The problem is he keeps on adding claims and duplicative claims across the applications.

[00:46:51] Speaker 02:
I will also briefly mention the so-called stipulation by the government.

[00:46:58] Speaker 02:
We are not trying to count those.

[00:47:00] Speaker 02:
Ten-year period from 2003 to 2004 against this right.

[00:47:04] Speaker 02:
We don't need to we have up till 2003 worth of delay.

[00:47:08] Speaker 02:
That's over 30 years with respect to some of these Patents, but we do believe the conduct during that period underscores that there's something more going on here than trying to get claims So if the conduct was all to vindicate his right not to present a

[00:47:23] Speaker 02:
information not to engage the agency in a normal prosecution process and it all confirms in fact he did not because in the Supreme Court case he was actually asking for the ability to introduce evidence relating to written description that he had withheld from the pound office.

[00:47:39] Speaker 02:
Do you have any questions?

[00:47:43] Speaker 00:
There's nothing else?

[00:47:44] Speaker 00:
No, thank you very much.

[00:47:57] Speaker 03:
Your Honor, we have a rebuttal regarding our cross-appeal.

[00:48:00] Speaker 03:
But before I turn to that, I would simply follow up on two questions from Judge Wallach.

[00:48:04] Speaker 03:
The language regarding the stipulation is on a. Why don't you just address the cross-appeal?

[00:48:09] Speaker 03:
Yes, Your Honor.

[00:48:11] Speaker 03:
So with respect to our cross-appeal, the issue is whether Section 145 applies to claims on which the board reversed all rejections.

[00:48:18] Speaker 03:
We think that whatever the court decides on laches or the other issues, it would be useful to reach the cross-appeal issue and decide it as well so that the district court

[00:48:25] Speaker 03:
should there be a remand, knows what to do on that remand.

[00:48:29] Speaker 03:
The district court held that it lacked Article III jurisdiction over those claims.

[00:48:32] Speaker 03:
The PTO does not defend that view on appeal.

[00:48:37] Speaker 03:
There is, as we cited in our brief Supreme Court precedent, that the prospect of further administrative proceedings, the prospect of a remand, creates a sufficient Article III injury to satisfy the Constitution's

[00:48:48] Speaker 03:
case or controversy requirement.

[00:48:50] Speaker 01:
So if we agree with you, I find this procedure unusual because we don't see it very often.

[00:48:55] Speaker 01:
If we agree with you that there was Article III jurisdiction on those claims that the district court didn't address,

[00:49:03] Speaker 01:
Isn't the remedy to tell the district court he has to address all of them and your arguments on all of them, not to order them granted?

[00:49:11] Speaker 01:
No, Your Honor.

[00:49:11] Speaker 01:
I think it depends on exactly what.

[00:49:13] Speaker 01:
Why?

[00:49:13] Speaker 01:
He refused to address them.

[00:49:15] Speaker 01:
So there's no decision on them.

[00:49:18] Speaker 01:
The patent office can't lose by default when he refused to specifically address them.

[00:49:23] Speaker 03:
Your Honor, I think this might be the unusual case where the PTO can lose by default.

[00:49:27] Speaker 03:
Let me explain why.

[00:49:28] Speaker 03:
The Supreme Court held in Kaples versus Hyatt

[00:49:31] Speaker 03:
that the ordinary federal rules of civil procedure govern section 145 proceedings, when a party does not raise any defense to a claim, that party defaults on the claim.

[00:49:40] Speaker 03:
That's simply the way the federal rules work.

[00:49:43] Speaker 03:
The statute is quite clear that those claims were properly before the district court.

[00:49:47] Speaker 01:
And it was a district court, though.

[00:49:49] Speaker 01:
If the district court thought he had authority to hear them, and if the patent office failed to provide a defense, that might be one thing.

[00:49:56] Speaker 01:
The district court clearly said, I can't hear these cases because of a

[00:50:01] Speaker 01:
I don't know whether he was correct or not.

[00:50:03] Speaker 01:
It seems to me like, you know, he operates in the District of Columbia, and he's used to exhaustion of administrative remedies, and that may be what he was looking at.

[00:50:12] Speaker 01:
Frankly, I thought that was probably right, too, until I looked at this.

[00:50:14] Speaker 01:
But since it's a de novo action, if he has improperly

[00:50:19] Speaker 01:
failed to address these claims, I don't see how his decision can be seen as a judgment on the merits at all.

[00:50:26] Speaker 01:
It's an error, and then the decision is he has to look at them, and the patent office has to provide a response.

[00:50:32] Speaker 03:
Well, Your Honor, two points, if I may.

[00:50:35] Speaker 03:
First of all, the PTO did actually provide a defense to those claims.

[00:50:39] Speaker 03:
It asserted prosecution latches as a defense to those claims in its amended answer in each of these cases.

[00:50:45] Speaker 03:
So it did assert one defense.

[00:50:47] Speaker 01:
Well, isn't that even more problematic for you?

[00:50:49] Speaker 01:
Because they have not waived their right.

[00:50:52] Speaker 01:
They asserted a defense.

[00:50:54] Speaker 01:
He refused to hear that defense altogether with regards to those cases or those claims because he said he didn't have authority to hear them, jurisdiction to hear them.

[00:51:02] Speaker 03:
Your Honor, that happens at the end of the case.

[00:51:04] Speaker 03:
The PTO never attempted to obtain judgment on those claims.

[00:51:07] Speaker 03:
The district court did not decide that it lacked Article III jurisdiction over them until the very end of this case, because they were addressed in the party's conclusions.

[00:51:15] Speaker 01:
I don't know how that helps you.

[00:51:17] Speaker 01:
I mean, I don't know how you can argue that it's somehow a default judgment when the district court's judgment explicitly doesn't cover them.

[00:51:23] Speaker 01:
You may be right that there was an error there, but it seems that the remedy would be to tell the district court that he has to consider however many other 100 claims you want to present to the district court.

[00:51:34] Speaker 03:
Your Honor, if I may, Your Honor, if this were a case not involving the government, if it were just regular parties and civil litigation.

[00:51:41] Speaker 03:
Well, I mean, that argument's not going to get you very far.

[00:51:43] Speaker 03:
But I'm just saying, I think everyone would agree that that ship has sailed at this point.

[00:51:47] Speaker 03:
I mean, a party has to offer its defenses in its answer.

[00:51:50] Speaker 03:
At this point, those answers have been out there for years.

[00:51:53] Speaker 03:
And the party has to seek judgment or seek to challenge a claim.

[00:51:58] Speaker 03:
And in this case, the PTO simply never did that.

[00:52:01] Speaker 03:
That's just under the normal federal rules of civil procedure.

[00:52:03] Speaker 03:
The PTO adopted a litigation strategy.

[00:52:05] Speaker 01:
My guess is that the PTO's response is going to be, and probably correctly so, that you can't default the government.

[00:52:13] Speaker 03:
I am not aware that that is a rule, Your Honor.

[00:52:15] Speaker 03:
I mean, the government may not defend itself with respect to every claim in every case.

[00:52:19] Speaker 03:
The ordinary rules of civil procedure apply.

[00:52:21] Speaker 03:
The court has no further questions.

[00:52:23] Speaker 03:
Thank you.

[00:52:24] Speaker 03:
Thank you very much for your arguments.