*1 IV. CONCLUSION has failed to establish
Although Gordon injunction we inappropriate,
that the Proudfoot damages
reverse the award. have ob-
did not establish would Logistics project
tained the Bombardier breach;
were it not for Gordon’s accord-
ingly, failed to establish that Proudfoot has any
it suffered financial loss.
REVERSED. HYATT, Plaintiff-Appellant,
Gilbert P. DOLL, Director, Acting
John J. Patent Office,
and Trademark Defendant-
Appellee.
No. 2007-1066. Appeals,
United States Court of
Federal Circuit.
Aug.
Lardin,
joined Highland,
value for it." Banks v.
So.2d
it is difficult
to understand
added),
(Fla.Dist.Cl.App.2006) (emphasis
attempt
quantify
how
could even
Proudfoot
denied,
(Fla.2007).
review
Kenneth C. P.L.L.C., Washington, Goldstein & Fox of DC, argued plaintiff-appellant. On the A. Lewis brief were Wilma and Michael I. Coe, LLP, Moring Washing- & of Crowell ton, Greg- DC. Of counsel on the brief was Roth, ory Gregory L. of Law Offices L. Roth, Palma, La CA. Of counsel was Martinez, Moring L. Crowell & Michael LLP, DC, Washington, and J. Robert Evans, LLP, Chambers, Herron & Wood Cincinnati, OH. Jenks, Solicitor, Associate William G. Solicitor, Office of the United States Pat- Office, Arlington, ent and Trademark VA, argued defendant-appellee. With McManus, him on the brief was Robert J. Ray- Associate Solicitor. Of counsel Solicitor, Chen, Acting mond T. and Thom- Krause, Associate Solicitor. W. MICHEL, DYK Judge, Before Chief MOORE, Judges. Circuit Opinion for the court filed Chief Judge Dissenting opinion filed MICHEl. Judge Circuit MOORE. MICHEL, Judge. Chief Plaintiff-Appellant Hyatt ap- Gilbert P. grant summary judg- peals from Dudas, in ment in favor of Jon his official capacity as the Director United States Patent and Trademark Office (“PTO”),1 sustaining the decision of the 43(c)(2), Doll was substituted for Appellate Rule of Pro- cedure John 1. Pursuant to Federal continuation-in-part a continuation or Appeals of Patent and Interferences Board (“Board”) rejec- the examiner’s uphold applications, several earlier some which Hyatt’s U.S. of the 117 claims of tion of 79 were themselves continuations or continua- 08/471,702 No. Application Patent Serial tions-in-part. first J.A. When *3 (“the supported as not application”) '702 filed, application priority the '702 claimed adequate description. ap- written The by 1984; Hyatt later back to amended the It argued April on 2008. peal was back application priority to claim to 1975. that under our case- clear from the record J.A. 10756-57. specific Hyatt had an affirmative law application originally The '702 as filed duty to the PTO to disclose claims, 238-page specification, had 15 a court, and was so by the district excluded pages drawings. and 40 of J.A. 10000-293. PTO, willfully by but refused notified incorporated by It multiple also reference process. in the examination cooperate (such publications the “Texas as Instru- case, uphold the facts of this we On ments, Book, Logic Circuits Data ALS/AS Hyatt’s court’s exclusion of evi- district 1983”), 10173-74, J.A. and a “disclosure therefore hold that the district dence. We many ha[ving] copies document of of’ a list correctly granted summary judg- documents; of referenced on the list were the Board decision be- sustaining ment manuals and specification prod- sheets Hyаtt no other evidence and cause offered “Viewpoint/3A ucts such as the Plus” and findings the Board’s decision was based Floppy the “Siemens OEM Disk Drive conclusions, all of fact and factual of which FDD 100-8”. J.A. 10239^0. After sever- evidence, supported are substantial specifica- al rounds of amendments to the thus we affirm. claims, Hyatt ultimately tion and the can-
I.
original
celled all 15
claims and added 117
new claims.
4.
claim 107
J.A. New
is not
A. Proceedings Before the Examiner
atypical:
Hyatt is the sole listed inventor on the
A process
operating memory system
Hyatt
application.
regis-
'702
has been
comprising the acts of:
a patent agent
tered as
since 1975 and
information;
generating input image
prosecuted
application wholly
on his
own.2
storing
array
a two dimensional
pixel image
blocks of
information
'702 application
computer
relates to
two
pixel
memory,
dimensional
block
technology
and software
and is entitled
array
the two dimensional
blocks
“Improved Memory
Having
Architecture
pixel image
arranged
information
in a
Multiple
Output Arrangement.”
Buffer
Hyatt
array
filed the
two dimensional
of rows
application
'702
on June
1995. J.A. 10001. The '702 application
pixel image
columns of blocks of
infor-
(Table) (Fed.Cir. 1996);
upon
resignation
Hyatt,
Dudas
Dudas’s
as Director.
F.3d 424
In re
(Table) (Fed.Cir. 1991);
F.2d
925
1478
In re
Hyatt
is also familiar with this court. See
(Table) (Fed.Cir.1988);
Hyatt,
mation, pixel the blocks wherein response signal. have boundaries to the second clock image information between; there 10472-73. J.A. generat- addresses and write generating action, January In a 1997 office addresses; read ing Hyatt’s final examiner described amend- array of dimensional
writing two incomplete, stating: ment image information into pixel blocks Applicant point also has failed to out block mem- pixel dimensional the two specification support where image input to the ory response for the amended and added be found response information and “Applicant claims. MPEP 714.02 states *4 addresses; write specifically point out the should also a signal having clock generating a first any amendments made to support rate; clock first the disclosure.” The disclosure includes pixel image informa- accessing blocks of the claims. addresses, response to the read tion response appears to be bona Since accessing pix- of blocks of wherein fide, through apparent oversight but information from the two image el provide or inadvertence failed to a com- memory is at pixel block dimensional plete response, applicant is required in response information rate a first complete response within a TIME signal; the first clock LIMIT of ONE MONTH from the date boundary smoothing block generating of this letter or within the timе remain- pixel image to smooth the information ing response period of the last at boundaries between information action, longer. Office whichever is information; pixel image blocks Hyatt responded J.A. 10493. a month la- by weight a storing weight information speci- ter with further amendments to the memory; drawings fication and J.A. and 10498-503. information weight accessed generating following support indication of where weight information by accessing the for the new claims and amendments memory; weight stored specification could be found: weighted image generating smoothed in- Representative antecedent basis by weighting pixel information page compres- for data cludes 23:2-19 contained in the image information sion; buffer; for the frame page 50:6-9 pixel image infor- accessed blocks the section entitled “LOGIC BOARD” to the accessed response mation at 117-127 pages “Address Generators” in response information and weight generator; the section for the address infor- boundary smoothing the block entitled “MEMORY ARCHITEC- mation; pages at 25-62 and the section TURE” signal having a clock generating second pages entitled “MEMORY BOARDS” at clock rate different second memory having for the block 128-135 the first than the first clock rate of cir- accessing, writing, processing and signal; clock cuits; the section entitled “GRAPHICS weighted smoothed generating output 9-14, pages pro- at PROCESSOR” to the image response information 214-30, gram listing pages pages at weighted image informa- smoothed 29-31, 41, 42, and 50 for the vector tion, generation wherein processor; the section en- generator and in- weighted image output smoothed FILTERING” information titled “SPATIAL formation is at different generate program listing generator weight which will pages 15-24 and the spatial processor; addresses,” pages generator 231-236 for “an address pages for the transform 33:15-24:11 apply weight which will addresses processor. inputs RAMS U5E U6E is further referred to
The Examiner intensity at the same time the bits are (see the Prelimi- the Table of Contents applied being to RAMS U3E and Amendments) nary for additional ante- U4E,” generator and “an address cedent basis. generate weight will addresses which selecting weight 10504-05. J.A. values from weight perform table to the desired the examiner issued October weighting function at spatial filter” rejecting action all 117 of final office limitations”) (collectively, ‘weight’ “the Hyatt’s adequate claims for lack of written enablement, (cid:127) description, lack of double boundary smoothing” “block anticipation, or patenting, obviousness. (cid:127) memory system “that the ais video rejected 10634-64. The examiner J.A. image compression system” data lack of de- groups of claims for written (cid:127) “a quantization weighting processor” *5 and based on the fol- scription enablement (cid:127) “generating compressed data video im- lowing groups thirteen limitations and age information” limitations: (cid:127) making product “the act of in re- (cid:127) decompressed image “a datа video in- sponse image information” put generating circuit data decom- In J.A. 10638-56. some of his written pressed image information” description rejections, the examiner indi- (cid:127) an writing accessing “a circuit and cir- cated the closest match he could find be- writing and reading cuit for a block of claim language tween the and the disclo- pixel image video data into the block specification. example, sure of the For memory” “the process writing and 1-14, 17-20, 22- examiner stated “Claims reading and a block of im- pixel video 25, 34-37, 42-45, 81-85, 49-52, 95-112, 117, age memory” data into the block and claim a writing circuit and an (cid:127) “a processor responsive vector to an accessing writing circuit for and reading a pixel image accessed block of video pixel image block of video data into the information and to vector information” memory. block These claims cover simul- (cid:127) processor “a responsive to accessed writing reading taneous and of block of pixel image block of video information” graphic image specification data.... (cid:127) spatial processor “a responsive to an sequential describes a to and write read pixel image accessed block of video memory.” from the block J.A. 10641. For information and to vector information majority description the written re- generating compressed and data vid- however, jections, merely the examiner eo” a claim (cid:127) “a quan- stated limitation —such as “a frequency processor,” “gen- domain weighting processor,” tization “a video im- erating frequency domain image infor- mation,” age compression system,” “a “frequency spa- data domain infor- mation” processor responsive tial to an accessed (cid:127) pixel image block of video information and “a block processor responsive to an pixel image generating
accessed block of informa- vector information and data tion and to vector information” compressed video”—was “not enabled” or (cid:127) See, “not specification.” described input weight generating circuit “[a]n information,”
input A10645,10652-53. weight e.g., “an address Proceedings bol form and even showing component pin B. Before the Board and wire designations connections,” J.A. September In continuing — 10827, and “With the extensive memory represent appealed the exam- himself — 99-135) (e.g., Spec, disclosure pro- rejection final iner’s the Board. J.A. (e.g., Spec, 87-98, cessor disclosure 214- Hyatt’s presented argu- 10936. brief such 36) in the instant application, it is unbeliev- prima rejections as “The '112-1 ments are object able the Examiner would erroneous because the disclosure is facie memory processor disclosure of fea- correct,” presumptively valid and J.A. tures,” addition, J.A. he ..., includ- significant “The disclosure is ed document entitled (repro- “Table-1” comprising pages description over 200 diagrams below), detailed schematic duced provided which he had not show- examiner, ing commercially actual electrical purporting give examples available components sym- well known schematic of support:
TABLE-1 REPRESENTATIVE REPRESENTATIVE PAGE(S) TERMINOLOGY NOTES1 OCCURRENCES CITES 25-83,128-164 access A >100 25-83,128-164 address A >500 25-83,128-164 A block >80 boundary =3 compress =4 compressed data =1 decompressed =1 *6 (FFT) frequency C =7 33-34 graphic D 9-14, >20 214-230 image >50 50-55 information >100 THROUGHOUT input >200 THROUGHOUT 25-83,128-164 memory >400 pixel >300 THROUGHOUT processor >50 85-98 quantization E >100 231-236 read A 25-83, >50 128-164 36,'45, 46, simultaneous >8 smoothing =1 spatial 15-24, B >20 231-236 9-14, vector D >50 214-230 video 77,166,168-171 =8 weight F >100 162-164 25-83,128-164 write A >100 notes, J.A. 10832-34. In accompanying Memory terminology; including memory Hyatt access, asserted that catego- read, certain broad memory write, memory “terminology” ries of were disclosed in cer- memory and block terminology; is dis- tain specification closed, textual sections of the in two whole sec- example, in tions entitled “MEMORY ARCHITEC- and raw source code in appearing specification. J.A. 10833-34. For exam- TURE” and “MEMORY BOARDS” (associated ple, in note “A” with the (Spec, terms at 25-62 and Figs. 128-35 and “access,” 6E-6N) “address,” “block,” “memory,” two additional whole “read,” “write”), Hyatt sections stated that entitled “BUFFER MEMO- 11594. The Board even considered (Spec, BOARD” J.A.
RY” and “BUFFER
6W-6AF).
“misleading”
Table-1
in that it indicated
Figs.
and 136-58 and
63-83
“quantization” appeared
that
the word
Although Hyatt presented
10833.
J.A.
specification, while the
ac-
specification
argument
thirty-six pages
general
tually
symbol
contained the
and the
and enablement re-
description
the written
“FlX(exp)”
arithmetic
functions
10823-58,
reversed, J.A.
jections should be
“INT(exp).” J.A. 11617.
address —and did
Hyatt
separately
did not
Board nevertheless reversed the
specification sup-
not indicate where
rejections
thirty-eight
of the
examiner’s
any of the claim
could be found
port
for—
claims. J.A. 11638. The Board reviewed
determined
limitations
examiner
specification, looking
sup-
the entire
for the limitation
support, except
lacked
claim
port for each of the
limitations at
10836^40,
J.A.
and the
“making product,”
support
issue and found
for three of the
limitations. J.A. 10835.
group
“weight”
(such as one for “a
decom-
limitations
data
that Ta-
Hyatt
general
made
statements
input
generat-
pressed
image
video
circuit
speci-
of contents of his
ble-1 and the table
ing
decompressed
image
data
video
infor-
support
for the rele-
fication indicated
mation”). See, e.g., J.A. 11599-601. The
specification.
vant limitations existed
rejection
Board also reversed one
because
argued that
J.A.
also
language
appearing
was based on
not
twenty-nine publications
lists of
had been
(the
limitations).
“weight”
the claims
J.A.
incorporated by
specifi-
reference into the
eight groups
11602-03. For the other
provided enabling
cation and
disclosure.
however,
issue,
claim limitations at
“making
10848-51. Aside from the
J.A.
agreed
Board
with the examiner
limitations,
(such
product”
“weight”
and the
“generating
these limitations
two
Table-1,
processed image
dimensional
information
Hyatt did not correlate
his table
in response
pixel
to the accessed blocks of
contents,
any
incorporated-by-
image
response
information and
publications
particular
reference
limi-
information”)
two dimensional vector
were
tations.
supported by adequate
written de-
Although reversing some of the examin-
scription,
explained
reasoning
its
*7
description
er’s written
and enablement
See, e.g.,
detail.
J.A. 11604-06. The
rejections, the Board sustained the written
rejections
also
on the
Board
reversed
rejections
description and enablement
for
obviousness,
grounds
anticipation,
seventy-nine
July
in a
claims
2002 decision.
in
patenting,
double
which are not at issue
J.A. 11638. The Board addressed each of
appeal.
this
J.A. 11638.
claim
limitations relied on
ex-
Hyatt
request
rehearing
filed a
for
rejected
aminer. The Board
Table-1 as
September
the Board on
2002. J.A.
unhelpful
identifying
description
written
supporting
In the brief
his re-
support:
quest,
provided
argu-
he
extensive new
agree
merely
with the examiner that
We
specification
ments and citations
pointing to isolated words scattered
purportedly detailing
disputed
where
limi-
throughout
specification
not de-
does
still-rejected
tations of each
claim derive
scribe the invention claimed as a combi-
description support
written
and are en-
elements, functions,
nation of
and inter-
abled. J.A. 11642-792. The Board denied
connections, anymore
dictionary
than a
that
request
rehearing, holding
his
for
provides
description support
written
arguments
these new
and citations could
are
book where words
used
combi-
presented during
and should have been
provide
meaning.
original appeal briefing.
nation to
a certain
J.A. 11805-07.
Hyatt
timely appealed
then
the district
§ 145 Action
The
C.
judgment
stayed
to this court.
court’s
We
Hyatt,
acting
now
April
On
in a
appeal pending
the decision
relat-
counsel,
court ac-
filed a district
through
Dudas,
appeal, Hyatt v.
under the
(7th
O’Connor,
890, 890,
227 F.
892
any refusal to allow
son v.
equity
for
bill
Cir.1915)
of inter-
just
(appeal
a refusal based
from examiner
application, not
examiners-in-chief,
ferences,
of
to
interfering patent.7
an
to board
on
111.,
Commissioner, D.C.Cir., to N.D.
to
to
1893,
creаted “the court of
Congress
In
Cir.).
many
7th
It also seemed unusual
Columbia,” which
of
appeals of
District
time;
hearings and
Congressional
at the
of the
appellate supervision
general
had
to the 1927 amend-
reports leading up
of Columbia.
supreme court of the District
Act, the fact that in no
ments to the Patent
1, 7,
9, 1893,
74, §§
27
ch.
Stat.
Act of Feb.
pos-
appeals”
other area of law were “five
court were also as
434-35. To this new
See, e.g.,
often mentioned.
Pro-
sible was
signed appeals from decisions of
Com
Hearing
cedure in the Patent
appeals
from
missioner.
Id.
9. While
Office:
H.
H.R. 7563 and H.R.
appeals
the court of
of
13487
judgments”
“final
of
before
Comm,
(“H.R.
Hearing”),
on Pats.
taken to
of Columbia could be
the District
(Dec.
1926) (statement
10,
of
Cong.
69th
Court,
8,§
Supreme
Supreme
id.
Paul,
Legislation
of
A.C.
Chairman
jurisdiction to
held that
it lacked
Court
Comm.,
Section,
Am. Bar
Pat.
Appeals
of
review decision of
Court
Ass’n);
the Patent
Procedure in
affirming
the District of Columbia
of
Office:
Comm,
Hearing on S.
the S.
rejection
application
of an
Commissioner’s
4812 before
(“S.
”),
Hearing
Cong.
69th
on Pats.
may
because “the decision of
be
(Dec.
1926) (statement
20,
of Thomas E.
pat
of
challenged generally and
refusal
Robertson,
Pats.); H.R.Rep.
Comm’r
by bill
may
ent
be reviewed and contested
(Jan.
1927).8
2,
28,
69-1889,
No.
Revised Statutes
provided”
as
Moore,
1, 9,
§ 4915. Frasch v.
211 U.S.
1927, Congress significantly
altered
(1908).
S.Ct.
However,
open
have left
the extent to which
in General Talk we
we
explained
Pictures,
§in
Congress provided
ing
adopt
precedents
should
from
admitting
the Patent Office
this method
other circuits.
Id.
thus
We
undertake
that it “shall have the
required
record
past
review of
decisions of other courts.
pro
originally
if
taken
effect as
same
*13
pre-1927
Under
version of the stat-
specific
to overcome a
in the suit”
duced
ute,
Supreme
made clear that a
Court
equity
in
in
only
bills
problem that existed
equity
bill
in
under Revised Statutes
interferences,
not those based
based on
§
independent
proceedings
4915 was not
of
The absence of sim
parte prosecution.
ex
Instead,
in the Patent Office.
the Court
suggest
§
language in
145 does not
ilar
given less
this bill in equity
that the PTO record should be
described
as
Fregeau
§
in a
145 action. But see
weight
something
appeal.
more than a mere
It
1034,
776 F.2d
1041-42
Mossinghojf,
v.
application
is an
to the court to set aside
(Fed.Cir.1985) (Newman, J., concurring in
depart-
the action of one of the executive
(asserting
145’s silence about evi
part)
government.
ments of the
The one
145 proceedings
dence means
charged with the administration
regard
conducted without
should be
system
patent
investiga-
had finished its
record).
Indeed,
be
PTO
as we discuss
tions
made
its determination with
low,
by the
it was well established
Su
respect
question
of priority of
agency
that review of
deci
preme Court
That
gave
invention.
determination
agency
on the
record.
generally
sions was
rights
the defendant the exclusive
aof
that there
kept
It should also be
mind
A
patentee.
proceedings
is institut-
parte prosecu
between ex
are differences
courts,
proceeding
ed
to set
practice
tion and interference
before
—a
PTO,
testimony may
as that live
aside the conclusions reached
the ad-
such
be taken in interfer
certain circumstances
department,
give
ministrative
and to
parte prosecution,
ences but not ex
see
plaintiff
rights
there awarded to
Ap
Trial
of the Board of Patent
Division
something
the defendant.
It is
Standing
peals and Interferences
Order
judgment,
nature
a suit to set
aside
1,
http://www.usрto.gov/go/dcom/bpai/
and,
such,
is not to be sustained
Benson,
v.
Standing-Order.pdf; Ginter
mere preponderance
evidence.
(B.P.A.I.2005).
1342, 1349
U.S.P.Q.2d
Daniels,
120,
Morgan
124,
153 U.S.
(1894)
(emphasis
S.Ct.
None
upon addressed -this
that,
dissent
relies
impaired
much
from the
though
fact
either,
un-
or even involved suits
question
accessible, it was not introduced during
§ 145 or Revised Statutes
der
proceedings.”
the interference
Standard
(which
an
issue in Zurko
involved
Co.,
Cartridge
Cartridge
Co. v. Peters
§ 141 rather than an action
appeal under
(6th Cir.1896).
F.
145)
under
was whether
standard
Fowler,
In Western Electric Co. v.
APA “applies
forth in the
when
review set
interference, Fowler,
to an
party
argued
findings
fact
the Federal Circuit reviews
for and submitted evidence supporting a
by the Patent and Trademark Of-
made
June 1901 date of
practice,
reduction to
fice.”
In an
from
opinion
Sixth Cir-
case).
cuit, although
excluding
evidence out-
cumstance of that
believes,
downplays
13.
It
ironic that the dissent
as absolute as the dissent
is
it would
(and
holding
seemingly
importance
trump
of the
of Zurko
criti-
the Federal Rules of Evi-
APA),
cizes the fact that we even discuss the
dence.
at 12
on
see Dissent
n.
instead fixates
“permits
disap-
the statement that
14. The dissent
this
See
overlooks
distinction.
pointed applicant
present to the court evi-
parte Squire,
Dissent at 1281-85. Neither Ex
present
(No.
(C.C.E.D.Mo.1877)
dence that the
did not
to the
22 F. Cas.
(which
Shaw,
part
rejection
13,269),
PTO”
of a
nor Butler v.
21 F.
(C.C.D.Mass.1884),
holding that the
support
Federal Circuit’s rationale for
the dissent’s ar
141).
apply
appeals
gument
right
APA did not
that the
to admit new evidence
Zurko,
unconstrained;
wholly
merely
See
While
pro-
The Eastern District of New York
subsequent
in a
fairly
reading
limited
mulgated a novel formulation of the rule of
case,15
interpreted
courts have
Bar
other
Barrett, namely that evidence
available
broadly.
Eighth
Circuit
rett more
presented by
party
but not
who lost
affirming
when
a district
cited Barrett
given
before the Patent Office would be
that could
court’s exclusion
“no
weight”
losing party gave
because
presented to the Patent Office
why
have been
“no sufficient reason”
the evidence
Lamar,
but was not. Kirschke
presented
was not
to the Patent Office.
(8th Cir.1970).
Co.,
The District of
Sperry
872-75
Perkins v. Lawrence
Aircraft
(E.D.N.Y.1932).
Massachusetts followed Barrett
O’Don 57 F.2d
720-21
Con-
Machinery Corp., 2 versely,
party
nell v.
Shoe
the court also ruled that the
United
(1933).
There,
plain
F.Supp.
successful before
office was
by”
However,
rule.
tiff
witnesses to the Patent Of
“not bound
Id.
presented
Hand,
fice,
Judge
writing
Learned
they
testify
about an
the Sec-
but
did
Circuit,
disapproval
ond
hinted his
allegedly per
such
experiment
plaintiff
had
interference,
stringent
exclusion standard the follow-
losing
formed.
Id. After
*17
ing year:
instituted a suit under Revised
plaintiff
sought
to have the
Statutes
Koppers,
In Barrett Co. v.
the Third
testify
alleged
about the
same witnesses
refused to consider
Circuit
evidence
objected
experiment.
deliberately
Id. The defendant
the inventor had
sup-
which
interference,
evidence,
pressed
to this new
and the court disal
in the
and used
it,
language than
saying:
lowed
broader
the exact situa-
Mining Mfg.
Minn.
&
Co. v. Carborun
time before the district court. Standard Oil
See
Cir.1946)
dum,
(3d
(di
stingu
(Ind.) Montedison, S.P.A.,
155 F.2d
Co.
v.
664 F.2d
affirming
ishing Barrett and
district
(3d
1981) (“[N]ew
court's
expert testimony
Cir.
expert testimony
denial of motion to exclude
clearly
in a
admissible
section 146 action
plain
allegedly “available to the
which was
justification
without such
to the extent that it
proceedings
tiffs at the time of the
understanding
already
aids the court
issues
Patent Office'' because the evidence was not
Board.”).
presented It is not clear
intentionally suppressed).
subsequent,
In a
however,
opinion,
objecting
from the
that the
Oil,
appeal of Standard
the Third Cir
related
party
anything
attempt
place
did
other than
to
rejected
argument
cuit
the district
justifying
the burden of
the evidence on the
required
party
explain
court should have
party offering it.
why
only offering
it was
evidence for
first
quoted
ap-
before the Patent Office is to sanction
required,
tion
which we
Beidler,
justice.
v.
58 F.2d
the destruction of administrative
proval Greene
Cir.1932).
(2d
However, it does
209-10
estoppel
But we are satisfied that the
that it
have extended
not follow
would
principle has its limitations.
It should
suppressed,
not
the doctrine
evidence
penalize
par-
not be used to
an innocent
merely
through
plain-
neglected
but
ty.
presenta-
Nor should it exclude the
Perkins
preparation.
tiffs slackness
evidence,
previously
tion
which
had
Sperry
Co. did so
Lawrence
procurable
not been
or which had be-
Aircraft
it,
approve.
extend
but we need
pro-
come known
after
interference
question
prefer
is doubtful and we
Coming
ceedings.
now to the instant
open,
necessary
leave it
for it is not
case, we find that Stoekle did not inten-
it here.
answer
tionally
which
withhold
he
produced
later
in court....
It seems
(2d
Jones,
Dowling v.
67 F.2d
undisputable
that evidence
avail-
be
(citations
Cir.1933)
omitted;
altered and
time,
a given
able and existent at
added).16
altered; emphasis
formatting
yet
knowledge
“pos-
not be within the
accepted
The Seventh Circuit likewise
person
and control” of
session
desir-
that evidence could be excluded from a
ing to make use of it.
are not
We
brought
case
under Revised Statutes
prepared
say
did not
Stoekle
4915 because of the actions of a
diligence
procuring
exercise due
applicant:
evidence sooner than he did.
case,
In the Bamtt
the additional
Co.,
Chicago
Supply
Globe-Union v.
Tel.
“wholly
evidence was at all times
within
(7th
(format-
Cir.1939)
(the) possession
plain-
and control” of
added).
altered;
ting
emphasis
tiff,
he had
but
“withheld” the evidence
By the
Corp.
time of Velsicol Chemical
the Patent
cir-
Under such
from
Office.
Co.,
v. Monsanto
at least in the Seventh
cumstances,
it
is reasonable that
Circuit, the rule based on Barrett had
withholding person
estopped
pres-
be
developed
following:
into the
principle
ent that evidence later.
Such
[Ajbsent
circumstances,17
estoppel
properly many
special
works
in-
stances, e.g.,
question
when evidence has
proper
been
for the district court
secreted,
deliberately withheld or
was whether the failure of
propo-
story
when a
completely changed
nent of the additional evidence to uncov-
coming
dispute
to court.
do not
er
procure
We
its existence earlier or to
proposition
soundness
that all
for the interference proceeding occurred
evidence,
available,
pertinent
actually
in spite
proponent’s diligence
*18
should be
in the
in-
preparing
submitted
his case
the Board.
first
before
permit partial presentation
agree
stance. To
with the court in
We
Kirschke
approved
Examples
might
The Second
had
special
Circuit
earlier
of
circumstances
16.
17.
Beidler,
207,
law,
of Barrett. See Greenev.
58 F.2d
intervening change
include an
(2d Cir.1932) (quoting
209-10
issue,
Banett for
presence of a new
or the admission of
proposition
parties
that
a
"cannot come into
deserving
response
other new evidence
of a
say,
Court
District
and
now for the first time
e.g., Douglas
further elaboration. See
Aircraft
story
we shall tell the true
of reduction to
Mueller,
321,
U.S.App.
v.
D.C.
Co.
praсtice
patent”
stating
a
demand
(1960).
F.2d 351
substantially
position
"This is
which the
appellees
pre-
here have taken.
It cannot
vail.”).
The D.C. Circuit has stated that “the
it makes no difference whether
that
plaintiff may not submit for the first time
was “at-
produce
the evidence
failure
negligent
failing
evidence which he
motives or not
by reprehensible
tended
to submit to the Patent Office.” Cal. Re-
(or)
other
it be for tactical or
whether
Ladd,
813,
v.
F.2d
Corp.
search
820 n.
Moreover,
1266
presented
the district court must rule
not
due to
minated before
was
PTO
bad
admissibility
on the
of evidence not before
gross negligence
faith or
and sometimes if
See,
v.
e.g.,
the PTO.
Novo Nordisk A/S
present
negligent.
the failure to
it was
Dudas,
06-cv-01896, slip op. at 2-3
No.
sum,
general
it has been the
2007)
by consent
3,
(dismissing case
(July
of federal courts for
practice
eighty
over
of parties).
years
certain circumstances to exclude
practice
uniform
in the Dis
is no
There
party
which a
could and should
regarding
district court
trict
Columbia
have
introduced before
Patent Office
governing exclusion from
the standard
despite
obligation
but did not
to do so.
of evidence that was not
actions
145
adopted
own cases likewise have not
Our
during
proceedings.
PTO
See
submitted
de novo standard for trial.
have said
We
(after
5569663,
II, 2005 WL
at *4-7
Hyatt
“[cjlearly,
not
applicant does
start
objection, excluding evidence
Director’s
to prosecute
application
over
before the
failure to submit it to PTO was
because
happened
district
unfettered
what
Dudas,
“negligent”); Hitachi Koki Co. v.
Fregeau,
in the PTO.”
1267
Park, Inc. v.
such
Volpe,
Preserve Overton
of adminis-
and standardization
procedure
agen-
the diverse
in
among
de novo review is authorized
two situa-
practice
trative
widely
departed
first,
had
adjudicato-
cies whose customs
tions:
“when the action is
Sung v.
Wong Yang
each other.”
from
ry
agency factfinding
nature and the
445,
41,
McGrath,
33,
94
70 S.Ct.
339 U.S.
or, second,
procedures
inadequate,”
are
statute,
(1950), superseded by
616
L.Ed.
“when issues that were not before the
1951,
Act of
Appropriation
Supplemental
agency
proceeding
are raised in a
to en-
1048,
Marcello v.
recognized in
64 Stat.
nonadjudicatory agency
force
action.” 401
757,
302, 311, 75
99
U.S.
S.Ct.
Bonds 349
402, 415,
814,
U.S.
91 S.Ct.
actions,
light
that in the absence Court decision sheds little
on the
we have held
evidence,
question
a district court must re
issue. Zurko involved the
of new
proper
Board for substan what was the
view the decision of the
standard
review
evidence,
questions
tial
but for factual
direct
to the Federal Circuit under
Supreme
new evidence is before the district
although
where
Court
*23
court,
§
court makes de novo
“present
the district
noted that a
145 claimant can
How
findings. Fregeau,
more
language
ability
Some restrictions on the
of an
e.g., Nat’l
Broadcasting, 319 U.S.
applicant
introduce new evidence in a
997;
Bros.,
Tagg
at 444-
S.Ct.
280 U.S.
§
required
145 action are therefore
under
4,n.
45 &
discussed
Supreme
Court has
directly
never
scope
Hyatt
considered the
argue
and the dissent
evidence,
(or
be)
regard
145 with
proceedings
new
under
145 are
should
However,
preme
implying
Court has set for
availability
trial de
live
direct testi-
novo.
mony and
would
cross-examination
make a
quite
section 145 action
different from sec-
Zurko,
Supreme
In
Court noted that we
appeal, regardless
tion 141
of whether some
adjust
need to
standards
review
evidence available to the
but not
APA,
prevent anomalous results under the
submitted to the PTO would be excludable.
citing Fregeau
apparent approval.
See
proceedings
Just because
two sec-
Zurko,
the construction
bill, they understandably
they
the record that
have in the Patent
zeal to defeat
by
reach.” 524
supplement
tend to overstate its
U.S.
Office
additional
evidence.”).
(1998)
1939,
Mazzari,
In other
A. excluding long history There is had ruling If the district court’s PTO, and of evidence submitted to evidentiary ruling, conventional we been a may that evidence be excluded a consensus apply would the standard of review not submitted PTO at least if it was to the regional circuit. See Ad appropriate fraud, faith, gross bad negligence, due to Medtronic, Sys. v. vanced Cardiovascular See, suppression. e.g., intentional Cal. or (Fed.Cir.2001). Inc., 265 F.3d Research, at (excluding 356 F.2d n. However, challenged evidentiary ruling evidence not submitted to Patent Office partly interpreta tied issues of here is Velsicol, “negligence”); merely due to extent, law. To this we tion of (excluding F.2d at 1046 evidence not sub review these apply Federal Circuit law and merely Patent to lack mitted to Office due legal de novo. interpretation issues of Watson, 121 “diligence”); Killian v. N.V., A.G. Picanol Sulzer Textil (Fed.Cir.2004). U.S.P.Q. (excluding at 509 new evidence To F.3d failure to submit it Patent Of evidentiary rul because that district court extent standard, The Di- “grossly negligent”). correct we ings apply legal fice argues negligence in favor of a stan- ing production rector the burden of to the appli- dard, cant, although argues Hyatt’s he also simply by identifying specific claim gross negligence. conduct amounts to See stating despite limitations and review- Hyatt Br. Appellee’s at 28-53. himself ing specification, he could not find argues “prevailing that the in the Dis- law support those limitations. 76 trict of Columbia” is that evidence not 1175; Wertheim, see also re only (CCPA submitted to the PTO. can be excluded 1976) (“[T]he 263-64 PTO hаs if “gross negli- the failure was due to the initial of presenting burden gence.” Hyatt Br. at Appellant’s 27. also why persons reasons skilled the art if states that we exclude some evidence in recognize would not in the disclosure a actions, gross negligence should be description of the invention defined applicable standard. Id. claims;” so, if the PTO does bears the burden of rebutting this show- note, however, terminology We that the ing.); Manual of Patent Examining Proce- (and negligence gross negligence) is (“MPEP”) 2163.04(I)(B) (reiterat- dure inapposite somewhat to the issue of admis- Alton). ing holding of (which sibility. Negligence roughly diligence) implies duty. absence of 7,1997 Any January time from the office patent applicants While do have certain rejecting Hyatt’s action new claims for PTO, including duties duties of dis- Hyatt’s failure “specifically point out the closure,29 beyond a point, certain how support pursuant for” the claims much more evidence to submit in large reading examiner’s of MPEP up 714.02 part a patentee determination for which a Hyatt through when filed his initial agents good and his must use judgment.30 brief before the September Board on certainly While there are many factors 1998, Hyatt could have declared where decision, which could go duty into such a specification description written the PTO not necessarily be one of support for each of disputed limitations them. We believe a semantic away shift resided. After the examiner stated that from negligence will help focus attention he through had read specification on the factors that are pertinent to wheth- could find no support for certain claim er an applicant should be allowed to intro- limitations, all needed to do was duce evidence before the district court *27 show the specifica- examiner where in the objection by over an the Director. support tion something that existed — him, should Hyatt simple have been for obligated per- was to respond to the son specification. most familiar with the description rejection examiner’s written by Alton, (Fed.Cir. noted, re Board “It is far easier for 1996),by explaining appellant in to describe specifica- where where the limitation tion support for each of he wrote is these limitations disclosed than for the Office to could be prove found. We held in that the Alton limitation is not disclosed.” after studying specification, an J.A. Rejection examin- 11600-01. per as Alton was prima er can make out a facie case of lack in essence the examiner telling Hyatt to of adequate written description, thus shift- point to written description support in the 29. "Each filing individual associated with the individual patentability to be material to 1.56(a). prosecution application of a defined in this has a section.” 37 C.F.R. duty good dealing candor and faith in Information “cumulative to information al- Office, duty which includes to disclose ready patenta- of record” is not “mаterial to all Office information known to that 1.56(b). bility.” 37 C.F.R. many clearly appear limitations do not ver- Hyatt, for his claims. howev- specification though he er, cooperate, to even in specification. refused batim Before the necessarily possessed the information Board, showing Hyatt submitted table the time he filed his sought by examiner some, all, of where but not the substituent application. found, words these limitations could be many but this table was for limitations of facts, court’s exclu- the district
On these
help
support
must
af- no
locating
be
whatsoever
Hyatt’s
new evidence
sion
court found that
The district
claim limitations at
If the
firmed.
issue.32
failing
to submit
“negligent”
was
Hyatt
wrong,
Hyatt
Board was
was because
Hyatt
in the
disclosed
decla-
the evidence
kept
by
it in the
not
purposefully
dark
obligat-
he was
to the PTO because
ration
possession
within
presenting evidence
his
so,
opportunity
he
a fair
to do
ed to do
had
rejections to overcome the examiner’s
so,
adequate
give
expla-
he failed
description.
lack of written
This blatant
Hyatt
it.
for his failure to submit
nation
non-cooperation
Allowing
was willful.
*3,
II,
5-7.
2005 WL
Howev-
consequences
Hyatt
escape the
of his
er,
Hyatt
it is clear from the record
his
timely
refusal
submit
own informa-
in his
provide
refused to
evidence
willfully
required by
tion to the PTO that he was
by
a valid
action
possession
response
requested by
law and
the examiner to
provide
a refusal to
the examiner. Such
hardly
submit would
be
with the
consonant
grounds
possessed
which one
evidence
legislative purpose
APA or the
145.33
evi-
in Barrett
exclude
withheld
Similarly,
that in
light
we hold
dence.
B.
here, the
non-cooperation
willful
Hyatt’s
Hyatt
arguments
why
its discretion
court did not abuse
makes four
as to
district
excluding
declaration.31
responsive
present
refusal to
evidence
not bar
from pre-
PTO should
him
pri-
rebutting
Instead of
examiner’s
(1)
senting
his declaration
district court:
case that
the claims were not
ma facie
presented
the Board’s decision
description,
written
supported
adequate
grounds
rejection beyond
those
digging
Hyatt argued that the burden
examiner
thus he was
on notice
specification re-
through
238-page
(2)
examiner,
he
though
required;
even
that such evidence was
mained on
"weight”
pages
through
appears on
leave to
cases consideration of
31. We
future
"processor”
pages
through
may be
on
98. To
excluded
whether
suggest
helpful
determining
type
grounds
of refusal at issue
Table-1 is
other than the
specification support
where
for these
here and Barrett.
limitations
be found borders on insolent.
example,
could
no
32. For
the examiner
find
*28
Hyatt’s specification
distinguishable
33. The
case is
from
support
in
for "block
instant
Burlington
Quigg,
up-
language.
we
boundary smoothing” claim
J.A.
Industries
where
Table-1,
a
According
ap-
held
district court's reversal
to
“block”
20-21.
rejections by
pages
through 83
action
claim
the PTO. 822
pears
and 128
on
164;
1581, 1582,
(1987).
"boundary”
pages
We noted that
through
on
14 and
once,
41;
largely
decision
"smoothing”
page
on
232.
district court’s
was based
and
(which
testimony
"boundary”
on live
was unavailable dur-
words
and
J.A.
if,
PTO)
by
ing proceedings
“smoothing”
separated
two
before
and
are
almost
Similarly,
reached
pages.
stat-
such circumstances
district court
hundred
examiner
PTO,
specifica-
different from
of the
support in the
conclusion
ed he could find no
legislative purpose
contrary
"quantization weighting
"that
not
for the claimed
tion
Indeed,
Table-1,
it is
According
“quantiza-
of section 145 de novo review.
processor.”
purpose.”
through
of that
Id. at 1584.
appears
pages 231
fulfillment
tion”
on
prior
was unaware
to this court’s decision that the
gone beyond
Board
have
Hyatt
I that he bore the burden of
scope
rejections
of the examiner’s
explanation
or
producing
regard
to rebut
to the claim limitation “making a
rejec-
description
examiner’s written
product in response
image
information.”
(3)
tions;
since the Board reversed the
II,
Hyatt
See
2005 WL
at *6.
rejections
examiner’s
for 38 of the 117 However,
correctly
as the district court
claims,
rejected
providing
his efforts at
ruled,
the Board’s rationale as to these
evidence to the Board must also have been
claims
not a
ground
rejection
was
new
claims;
remaining
reasonable as to the
simply
because it was
response
argu-
(4)
expertise
he relied on the
of the
by Hyatt
ments raised
briefing
reasonably
PTO
thus
believed that the
Thus,
the Board. See id. at *5-6.
he had
require
PTO did not
this evidence. We
to,
did,
the opportunity
argu-
make
argument
address each
in turn.
ground.
ments as to this
Hyatt argued for
the first time to the Board that written
First,
agree
we
with the district court
description support existed in
specifi-
that the Board decision did not
any
include
“signal”
cation because a
“prod-
could be a
II,
ground
rejection.
new
Hyatt
See
uct,”
rejected
and the Board
that view.
WL
*6. The district court
Therefore,
reject Hyatt’s argument
we
correctly noted
applicant
that an
must
that the
declaration must be admit-
have an opportunity
respond
to new
ted to
him
opportunity
afford
to re-
grounds
rejection
relied on
spond to
grounds
the Board’s new
for re-
Kronig,
Board. See In re
(CCPA 1976).
jection because we hold that
1302-03
the Board did
But whether a
present any
not
grounds.
new
ground
rejection
depends
is “new”
on
whether
had a “fair opportu
Second,
reject
we
Hyatt’s argument that
nity to react to
rejection.”
the thrust of the
the timing of our
in Hyatt
decision
I in
Here,
Id.
reviewing
after
the Board deci 2007
provide
excuses his failure to
sion
rejections
examiner,
and the
we Hyatt
I,
declaration to the
In Hyatt
PTO.
agree with the district court
the we held that an examiner can shift the
rely
any
Board did not
ground
new
proof
burden of
showing
adequate writ-
rejection.
fifty-nine
For
of the seventy-
description by
ten
identifying specific
issue,
nine claims still at
both the Board
claim limitations
clearly stating
and the exаminer relied on the same ratio
despite reviewing
specification,
he
nale, namely that one or more claim limita
could not find support for those limita-
they
tions—which
expressly identified— tions.
Third, district court agree we with the support could be found in the written de- thirty-eight Board’s reversal that the it to scription required or amend add the description rejec- written the examiner’s I, support. Hyatt at 1371. Hyatt acted rea- not establish tions does regard seventy-nine sonably to the with sum, Hyatt presents acceptable In no II, Hyatt not See rejections reversed. present failure to properly excuse for his As the at *6. district 2005 WL his declaration to the PTO. observed, the correctly Board’s re- Hyatt willfully respond That refused own solely based on its inde- versals were description rejec- to the written examiner’s pendent analysis of the claims and written specifi- out in the pointing tions where expressly Id. The Board stat- description. his support cation claims could be not, not, rely on it did and could ed that primary found reason we affirm the Hyatt, specifically provided by anything Hyatt district court’s exclusion of the dec- provide any Table-1 not noting that did Hyatt, laration. failure of who This information. 11600-01. helpful J.A. a patent agent time had been for over assessments of the agree We twenty perform simple task years, court; Ta- the district neither Board and that it burden is inex- perform was his *30 1278
The majority (Fed.Cir.1998). dissent also characterizes the Corp., 149 F.3d opinion standing something as it context, that In the in the absence of does not: that evidence must be excluded evidence, new the district court must enter simply because it could have present- been judgment for the Director if the Board’s ed to the PTO. Dissent In- See at 1284. findings regarding adequate the lack of stead, merely we have reached the unre- written description are supported by sub- markable conclusion that it is unreasonable Curtis, stantial evidence. See re Congress believe intended to allow a (Fed.Cir.2004) (whether 145 action to intro- written description adequately supports duce regard new evidence with no whatso- fact); Mazzari, claims is issue of PTO, ever as to his before conduct (absent evidence, at 1004-05 PTO that, specifically, Congress did not intend fact-finding reviewed under substantial ev- owed,34 requested and will- actions). idence standard in fully withheld from the PTO must never- Hyatt argues that the Board’s decision theless be admitted in a 145 action. supported by was not substantial evidence appears dissent also to misappre- because the record before the Board cited is, import hend the of Alton. There and contained adequate written description Alton, only one acceptable response to a for all rejected claims the Board. description rejection: written showing the When closely, however, examined more examiner where column and line num- Hyatt’s arguments rely entirely almost ber in the specification may he find written earlier, Table-1. As noted simply Table-1 description support disputed for each claim lists certain individual words used within Here, limitation.35 only Hyatt’s limitations, various multi-word the number response to the written description rejec- of times each appears such word completely tions wholly inadequate, specification, and “representative” pages in was willfully so. He simply refused to the specification where each word appears respond required as by Alton to the re- (or, many cases, simply states that the quests of the examiner for citations to the appears word “throughout” specifica- specification, and clearly he did so deliber- tion). For example, certain claims were ately, impeding thus the examination the rejected lacking description written PTO legally required to conduct. support for a “processor responsive to an
IV. accessed block of video pixel image infor- ¶ mation.” J.A. 10643 15. Table-1 indi- Hyatt Since did not any offer oth cates that “block” was used over 80 times er action, evidence in his the district on at pages least 25-83 and 128-164 of correctly reviewed the Board’s deci specification; sion “information” solely on the was used over record before the Board. “throughout” We review a times grant specification; district court’s of sum mary judgment novo, de “video” was applying exactly eight used times on at same 77, 166, standards pages 168-71; the district court. least etc. J.A. Ethicon Endo-Surgery v. U.S. Surgical not, however, 10832. Table-1 does explain 34. The dissent's claim that we hold that complains Hyatt's The dissent about bur- " to, responding 'owed' the den of possesses PTO all evidence as the dissent he calculates it, separate rejections.” "2546 responsive Dissent at rejection,” to a Dissent at 1279- acknowledge 1288. The dissent does not added, (emphasis omitted), citation is over- proportional Hyatt’s prosecution this is broad and illustrates the dissent’s misunder- application containing pending claims standing holding. of our spanning pages. See J.A. 10411-89.
1279 withholding willful or findings indicating individual occurrences any of these how fact, suppression; the dis- “pro- discloses a intentional substituent words these not even conclude that Mr. accessed trict court did responsive block cessor gross negli- image information.” The same conduct amounted pixel Hyatt’s video Hyatt’s arguments each of rather excluded the evidence gence, exists in but defect we are not and so a have” standard. relying negligence on Table-1 “could any by stage them. the even persuaded argue, Nor did PTO Hyatt’s con- proceedings, these that Mr. addition, Hyatt points to repeatedly in this case was willful or intentional. duct printed specifica- raw source code Nonetheless, majority the concludes that of his disclosing as various features tion “owed,” Maj. Op. at self-serving attorney from claims. Aside possesses he re- PTO all evidence that is points to no Hyatt evidence arguments, rejection to a and that failure to sponsive the district court or this that would enable duty” created newly fulfill this “affirmative source to determine whether withholding as matter amounts willful these actually does disclose features. code only possible ways are of law. There two Moreover, unsupported he made the same majority’s interpret willful withhold- PTO, and its despite arguments ing majority determination. Either is them to be un- expertise the PTO found engaging appellate finding fact or it is determining whether the written helpful determining newly that breach of its creat- supported description adequately duty withholding is ed affirmative willful agree We therefore claims issue. matter law. latter as a The leaves no that the Board’s decision the district court finding room for fact in individual cases supported substantial evidence. completely away takes the discretion error in the district court’s There was no Ultimately, from the trial court. the ma- summary judgment. grant jority’s sweeping exclusionary' rule far is CONCLUSION anything argued by par- broader than ties. above, stated the dis- For reasons summary grant judgment is
trict court’s
has
Supreme Court
character-
While
that
proceeding
ized the
145 action as
AFFIRMED.
fact,
necessarily,
part
“in
is
MOORE,
dissenting.
Judge,
Circuit
patent,”
the hallmark of
application for
proceeding
145
in the district court
majority
away
ap-
takes
“all competent
evidence” shall be
to a
ac-
right
“civil
plicant’s fundamental
subject
ordinary
only to
course
heard
“the
patent”
granted by
tion to obtain [a]
equity practice
procedure.” Gandy
Today
U.S.C.
Congress
35
Marble,
432, 439,
122
7 S.Ct.
U.S.
patent applicant
that a
majority decides
(1887);
L.Ed.
see also
Butterworth
not introduce the invеntor’s declara-
may
Hoe,
ex rel.
v. United States
U.S.
the dis-
proceeding
tion in a
before
(1884).
L.Ed.
be
5 S.Ct.
To
inventor had an
trict court because the
clear,
argue
Mr.
does not
duty”
“obligation”
to dis-
“affirmative
entirely
are
are
actions
de novo trials that
PTO.
failure
close this
His
evidence
separate
proceedings.
from PTO
Mr.
duty,
not dis-
to fulfill his affirmative
only
Hyatt argues
he
have
closing evidence
could
disclosed
§a
action.
ac-
PTO,
be admitted in
He
being
results
such evidence
(sub-
knowledges
that deferential
pro-
review
from the district court
excluded
evidence)
given
to Board fact
no fact
stantial
ceeding. The district court made
*32
§
findings
pro-
absent new evidence in
to a
right
civil action
the district
pertaining
also that
ceedings and
evidence
right
distinct from
appeal.
court
their
to new issues cannot be
See
introduced.
obligation
It
protect
is our
to
the distinc-
1/5, 8,
14-15;
10-11,
Appellant’s Br.
see
Congress
§
tion
codified in
not to
Conservolite,
Widmayer, 21
also
Inc. v.
reweigh the virtues of
decision.
that
The
(Fed.Cir.1994) (holding
that in a
§
proceeding
is a civil action and
action,
§
to new
pertaining
ought
governed
to be
by the same Federal
that
the PTO
issues
were
raised before
Rules
Evidence
govern
that
other civil
excluded).
may be
need,
actions. Patent cases do not
nor
majority’s
decision to affirm the
they have, special
should
rules of evidence.
district court’s exclusion of the inventor’s
Section
titled
action to
“Civil
obtain
§
own
action
declaration
a
145 civil
se-
patent,” provides:
verely
rights
Congress
restricts the
that
applicant
An
dissatisfied
the deci-
patent,
making
afforded
this
applicants,
sion
Board of
Appeals
Patent
proceeding more of an
than the new
appeal
Interferences in an appeal under section
contemplated
civil action
and enacted
134(a) of this title
unless
may,
Moreover,
Congress.
by concluding that
has been taken to the United States
an
an
duty”
inventor has
“affirmative
of Appeals
Court
for the Federal Cir-
response
submit his
to a
own declaration
cuit, have remedy by
action against
civil
PTO,
rejection by the
prevented
he
lest
be
the Director in the United States Dis-
admitting
any
from
the material in
subse-
Court
trict
for the District of Columbia
quent
major-
court proceeding,
district
if commenced within such time after
ity
impossible
makes it
for inventors to
decision,
such
sixty days,
not less than
testify
ever
in a
145 action unless their
testimony
as the Director
proffered
appoints.
had first been
The court
agree
PTO. I cannot
that
was what
may adjudge
applicant
this
that such
is enti-
Congress contemplated when it enacted
patent
invention,
tled
receive a
for his
I
and therefore
dissent.
specified
any
of his claims involved
in the decision of the Board of Patent
Hyatt’s
I. Mr.
Declaration
Not
Should
Be
Interferences,
Appeals and
as the facts
Excluded
may
in the case
appear
adjudi-
and such
Congress
permit-
enacted a statute that
cation shall authorize the Director to
gave
ted
“civil action” and
patent appli-
such
issue
on compliance with the
right
present
cants the
new evidence
requirements of
expenses
law. All the
a trial in
district
despite
that this
of the proceedings
paid by
shall be
right would allow
applicant
to intro-
applicant.
duce
they
“evidence that
could have
added).
(emphasis
35 U.S.C.
brought
PTO,
in before” the
potentially
distinguishes
The statute itself
the ap-
resulting
in “dragging
opponent
an
peal
pursuant
be brought
to 35
through a second time.” To Amend Sec-
§ 141
U.S.C.
because a
145 action is not
tion 52
Judicial Code and
Stat-
Other
appeal;
is a “civil action.” The stat-
utes Affecting Procedure in Patent Office:
obligates
ute
adjudi-
district court to
Hearings
H.R.
on
6252 and H.R. 7087
Comm,
cate the facts in this civil action. Because
Patents,
the H.
69th
Before
limitations
(1926)
statute affords no
(statement
on the
Cong., 1st Sess. 80-81
Robertson,
type
Hon.
E.
of evidence that
to be
ought
admissi-
Thomas
Commissioner
Patents)
To
ble in a civil
brought
[hereinafter
Amend Section
action
Congress granted patent applicants
52].
the standard Federal Rules of Evidence
bring
allows the
in evi-
ought
gov-
which
all civil actions
govern
brought
of 145
he could have
legislative histories
dence
ern. The
before
statute,
the PTO,
4915 of
Congress
adopt
ap-
section
decided to
predecessor
its
Statutes,
Paul,
and without
repeatedly
Revised
proach. Mr. A.C.
Chairman
the intent
indicate
contradiction
the Legislation
Patent Section of
Commit-
patent applicant
permit
Congress was
Association,
the American Bar
made
tee of
*33
upon a new
bring a new suit built
to
that
understood section
clear
he too
leading to the Pat-
testimony
In
record.
introduction of new evidence:
permit
the
Pat-
the
of
ent Act of
Commissioner
our committee would have the
While
as one
to a section
suit
ents referred
start
novo
the
of
case
de
after
decision
proceed “de
applicant
an
would
where
and the
the board ...
difference would
”
court,
right
“to
in
with
novo
district
ap-
be then if we went
the court of
in “fur-
up
bring
new
and
build
a
record”
an
decision must be
peals
in
might
put
that
ther evidence
I
have
the same
If
upon
go
based
record.
we
trail
drag you through another
before and
equity
parties may
into a court of
To
at 79-
court.”
Amend Section
[sic]
they
that
have in the
use
record
of Patents was
The Commissioner
may supplement
Patent Office and
statute,
this
opposition
in
testifying
additional evidence.
in
court. He
this civil action
the district
Similarly, Congressman
at 81.
Id.
Albert
this
permits
this
that
testified that
statute
party
H. Vestal
that “if a
stated
feels
oppo-
“dragging
results in
an
“new record”
bring
he can
his suit in the
aggrieved,
a
time.” Id. at 80.
through
nent
second
court,
it is
equity
appeal.
but
not
It is
fact,
a
these
he articulated
concerns
bringing
of a new
Id. at 36.1
suit.”
time,
al-
noting that
statute
second
Howson,
E.
Chairman of
Charles
Com-
testimony
а
to “file
lowed patent
on
mittee
Patent Law Revision for the
they
in
that
could have
bringing
evidence
Association,
American Bar
who was the
not
but did
brought
[the PTO]
in before
that
“chairman of the committee
drew
before,
a man
bring
dragging
in
and after
bills” explained:
these
have
through
procedure
you
which
all
is
advantage
The
of section 4915
that it
just
complicated
so
and burden-
said is
interest,
some,
court,
bring
party
desiring
enables the
start de novo in
and
first
Id. at
a
testimony
patent,
not taken the
time.”
obtain
to take evidence in a
(statement
81;
Karl
see
id. at 76
of
also
or
business it is to
court
tribunal whose
Fenning,
Commissioner
Former Assistant
wp
facts and make
a
try issues of
record
Patents)
thing to
(arguing
that “the best
he
in addition to
has been enabled
entirely
cut
for ex
do
be to
out 4915
would
the examiners in the Patent
to furnish
encourage
appli-
parte applications” to
a
Office,
get
therefore
before
court
and
testimony pertinent
cant to
in all
“put
jurisdiction
competent
everything
PTO).
to his ease” before the
rights
every
connected with his
and
fact
patent;
connected
other
Despite being presented
policy
with the
action,
words,
permitting
everything
not
have
him
reasons for
civil
before
Walker,
was before the Patent Of-
Albert H.
The Law Pat-
consider whatever
1. See also
1917) ("In
(5th
ed.
proceedings
ents
Inventions
resulted in the
fice in
which
a bill in
order to decide
issues
such
grant
patent....
proceeding,
refusal
court,
section,
equity
is treated in this
however,
revisory
of the Patent Office
pending,
testimony,
where
will take
the bill
original
equi-
proceeding, but is an
suit in
evidence, according
any
other admissible
ty....").
equity;
will also
to the course of courts of
country
them
prior
courts in the
have
that excluded
evidence
before
infringement
cases.
act
did so
a hodgepodge
(diligence,
different standards
intentional
added);
at 21 (emphasis
Id.
see also To
faith).
suppression
Congress
bad
could
Amend the Statutes
the United States
implicitly adopted
not have
all of these
as to
Procedure
Patent
Office
Comm,
Indeed,
differing
Congress
standards.
Hearing
the Courts:
did
S.
Before
Patents,
Cong.,
type
13-14 not limit the
69th
2d Sess.
(1926)
Barnett)
(statement
(Pur-
of Otto R.
patent applicant may
precisely
introduce
4915, you may
suant
to section
file an because it
civil
intended for a
action under
-
want
“you
action
the district
if
now
upon
to be based
a new
bring
things
out
new record to
new
devel-
evidence,
if
record
even
that new
oped
your patent,
you
in lieu of that
*34
could
brought
evidence
have been
before
Now,
may
it
file a new suit....
when
came
Congress
PTO.
that
the
intended
the dis-
cases,
parte
to ex
comparatively
§
trict
in a
every-
court
145 action have
simple
say
to
that the individual inventor
that a
thing
court would have in
in-
may
may
he
his
appeal, or
start
new fringement
standard,
suit.
this
Under
‘Well, somebody
suit....
may want
to
certainly
Congress
intended for an inven-
start a
and bring
new suit
out other and tor,
as Mr. Hyatt,
permitted
such
to be
to
said,
things.’
right,
new
we
‘All
So
take
in
§
introduce
own declaration
a
145
your choice;
suit,
on
go
with a new
or
action.2
”).
appeal.’
Moreover, to
applicants
deter
from ex-
These numerous
confirm
statements
actly
type
the
procedural gaming
that
Congress
that
statute,
when
enacted this
§
the majority,
imposes
concerns
145
on
which
limit
does not
the
that
evidence
heavy
the
the
economic
applicant
burden
be
in
introduced
this “new suit” or “civil
of paying
expenses
the
pro-
“[a]ll
action,”
did
Congress
purpose
so with this
ceedings.”
35 U.S.C.
145. This burden
and intent. The majority attempts
to
encourages applicants
present
their best
(as
sweep away
of the legislative history
all
responsibility
case to
PTO to avoid
“anachronistic”) claiming that
mere
ex-
expenses
all
in a
proceeding.
145
To
istence of
“suggests
Congress
Barrett
that
type
this
allow
of evidence
these civil
approved of
cases holding
patent
was a policy
actions
decision committed
applicants
present
not
could
to a district
to the
solely
Congress,
discretion of
which
they
court evidence
but
should have
did
it duly made.
present
Maj.
to the Patent Office.”
only
majority
Not
does the
decision con-
Op. at
prob-
1271-73. There are several
interpretation
flict with the proper
theory. First,
lems with
parties
this
145,
but it is
agree
also
conflict with
and
Su-
Congress clearly
stated
preme
jurisprudence
Court
patent
point.
1952
act made no substantive
Supreme
changes
16;
The
Court
repeatedly
4915. See
Br.
has
Appellant’s
and
45;
Appellee’s
S.Rep.
spoken
Br.
without limitation
to an applicant’s
No. 82-1979
(1952),
reprinted
“present
right
1952 U.S.C.C.A.N.
evidence that
2394,
Second,
2400.
even the few courts
did not
present
the PTO.
1303,
2. The
sup-
Federal Rules of
Phillips
Evidence do not
Corp.,
AWH
415 F.3d
1317
v.
port
majority's
(Fed.Cir.2005) (en
(claim
banc)
construction);
exclusion of inventor state-
1321,
testimony
ments.
regularly
Goldfarb,
(Fed.
Inventor
is
Cooper
admit-
v.
154 F.3d
1330
Cir.1998) (reduction
infringement
ted in
cases
practice); Symantec
for various reasons:
Labs.,
Wang
Int’l, Inc.,
v.
Corp.,
Computer
Inc.
Toshiba
993 F.2d
Corp. v.
Assocs.
858,
(Fed.Cir.1993) (written
1279,
(Fed.Cir.2008)
description);
866
(conception).
jurisdiction
original equity
different
under
presence of such
laws,
of the district
according
ordinary
makes
factfinder
Zurko,
527 U.S.
judge.” Dickinson v.
equity practice
procedure.
course of
It
that the
theory
would
course
tional data and new
to the district
elear-viz.,
proceeding
either case is
court);
Corp.
Titanium Metals
Am. v.
equity.”
(Fed.Cir.1985)
“according
Banner,
(new
course
The majority
importance
present
discusses the
choose to
additional evidence to
of preserving settled expectations. Our
the district court
...
the district court
own precedent
replete
is
examples
of would
de
findings.”).
make
novo factual
Shaw,
3. See
jurisdiction
also Butler v.
F.
ordinary
"a suit
the
within
(C.C.D.Mass.1884) (distinguishing between
equity
courts
statute
of the
...
the
contains
patent applicant's right
the
appeal
to
where
provision requiring
no
the case to be heard
strictly
appeal
“that court acts
as a court of
upon
produced
the evidence
before the com-
hearing
summary,
the
matter ...
is
and is
missioner ... as has been
in this
held
specific
appeal,
confined to the
reasons
circuits,
other
the court
receive new evi-
produced
to the evidence
before the commis-
dence,
powers
and has the same
as in other
patent applicant's right
sioner” and the
to file
equity”).
cases in
equity”
“bill in
under section
which is
(citation omitted).
(Fed.Cir.
These
Id. at 1579
cases
cording majority is In re The uses to Alton create an (Fed.Cir.1996). The ma duty” “affirmative with which appli- jority failing holds that to offer comply. cants must does not justify Alton PTO, testimony Hyatt has failed to duty. propo- this new Alton stands for the affirmative satisfy duty.” “an and specific sition when the examiner makes a Maj. In Op. way, at 1248. this this new prima facie case for his written description prosecution to duty affirmative seems rejection, coming burden of forward conduct, though inequitable resemble here (burden argument with evidence or of pro- applicant penalized regardless is duction) Alton, shifts to applicant. majority explains: their intent. The And, F.3d at 1175. true whether “Hyatt obligated to to respond was rejecting examiner is claim on the description rejection by examiner’s written obviousness, anticipation, basis of enable- Alton, (Fed.Cir. In re 76 F.3d ment, any written or description other rea- 1996),by explaining where in specifica Oetiker, son. See re support tion each of these limitations (Fed.Cir.1992) (“[T]he examiner Maj. Op. could be found.” at 1274.6 The burden, bears the initial on review of the majority “Hyatt clearly continues: on prior art or on any ground, other of pre- obligation provide notice of his to evidence prima senting unpatentabili- facie case explanation or examiner rebut met, ty. If that burden is the burden of rejections,” description Maj. Op. written coming forward with argument evidence or required “he was law” to applicant.”); shifts to see also Manual provide Maj. Op. it. all 1275. due With Patent Examination Procedure of ¶ respect majority, I do not believe (8th ed., 2008); I.A (pat- rev. id. duty” new “affirmative is war disclose subject matter), § entable (utility), 2107.02 ranted, nor I believe Hyatt do was “re (inherent (ob- anticipation), quired by “obligated” provide or law” viousness), (written description), 2163.04 his declaration to the PTO. Mr. While (enablement), § 2164.04 (equiva- Hyatt may have failed to overcome the lents). rejections Once the prima examiner makes a or to convince the Board based case, upon facie then PTO, his submissions to the he has the bur- did not fail to fulfill an “obligation” coming “affir den of forward evidence to duty” majority mative alleges. prima showing. rebut that facie stringent an even more majority suggests standard for the only there one new way respond consideration of description evidence. Defendant rejec- to a written Dudas, ("There is, primarily relies Maj. Op. in which tion. at 1278 Judge Kennedy only declined to acceptable response consider Alton one to a writ- "negligently description rejection: showing submitted after the *38 ten the exam- end of proceedings.” by administrative This iner where column and line number in the articulation of the "new specification may evidence” standard description he find written represents significant departure limitation.”). a support disputed from the for each claim and, guidelines plaintiff argues, PTO’s respect, With all due not this correct. Writ- would "render an description rejections 145 ... ten by can be addressed nearly indistinguishable ap- arguing, example, from a direct the that examiner failed Circuit, peal case, to the Federal prima by would ren- to forth a set facie amend- ment, claim, der the purpose duplicative adjusting statute priority a or meaningless.” pointing The Court de- therefore out common alternative definitions adopt Hyatt clines to the standard for con- claim ordinary for a term known to one of sidering new evidence in this simply case. skill in the art. way There is not one Dudas, Hitachi v. Koki F.Supp.2d respond, Co. an can or must and we (D.D.C.2008) (citations omitted). micromanage prosecution. should not majori- at If shifting other. Id. 34-35. burden occurs Because the same every rejection an regard type ty withholding to would like willful stan- with makes, duty this new affirmative examiner fact applied findings dard be and for to to description to the written is not limited must accordingly, be made vacate and if in Alton. Hence reviewed issue court to remand for the district do so affirmative shifting creates “an burden the first instance. Because willful with- duty comes into duty” then this affirmative parties argued by not or holding was every time examiner makes existence court, by the district we as an considered I rejects claims. facie case prima simply court cannot know the appellate per rule that an agree se cannot that on the volume of evidence exist willfully to with- applicant is deemed have judge to Mr. position issue nor are we during prose- possessed he anything held credibility. Hyatt’s rejection responsive to a that was cution troubling majority’s I charac- find applicant’s actual intent. regardless of See, Maj. Hyatt. е.g., terizations of Mr. always requires intent and is Willfulness (Mr. Op. “Hyatt purposefully kept at 1275 majority’s compatible with the simply (his dark”); in the id. “bla- [the Board] liability approach. strict (Mr. at noncooperation”); tant id. Hyatt’s Mr. Evidence provide III. “Hyatt willfully refused evi- “re- possession”); (Hyatt dence in his id. case, found that In this the district court (“Hyatt’s fused willful cooperate”); id. proffer his declara Hyatt’s Mr. failure (“Hyatt at 1277 non-cooperation”); id. merely negligent. PTO was tion to the refused”); at 1274 Dudas, 03-0901, willfully (providing id. No. WL Hyatt 2005) (D.D.C. simple his have been Sept. 30, *7 declaration “should at II”) (that (“Hyatt’s explain him”); Hyatt’s failure {“Hyatt id. failure earli why he didn’t submit his declaration simple perform “to task it was court and the district need negligent, er is inexcusable”); perform id. burden to submit negligently not consider evidence (“Hyatt’s unhelpfulness”). perverse pro after the end of administrative ted appears in the district court None of this finding has no ceedings.”). There been or the proceedings, proceedings, PTO faith, fraud, withholding, inten willful bad findings ought fact to be left record-these negli or suppression gross tional even court which is the best district argue did not gence this case. PTO contradictory evi- position weigh court or to either the district dence. in this would establish facts case Contrary finding of will- appellate suppression intentional or willful withhold withholding, ample ful the record contains Rather, ar ing by Hyatt. Mr. PTO withholding. a lack of willful evidence of gued that the facts established Mr. Here, rejected all of Mr. the examiner negligently acted alterna de- Hyatt’s 117 claims for lack written negligently. Appellee’s Br. grossly tive enable, scription, obviousness- failure to fact, argues that Mr. 51-53. PTO (over separate ref- type patenting double or deliberate Hyatt’s focus on “intentional erences), pat- Schneller-type double point.” Appellee’s Br. conduct misses the *39 references). (over enting the same 8 present the case to Scher Analogizing rejected claims antici- examiner also as Marzall, F.Supp. Corp. v. ing reference) and 7 obvious pated {Hill (D.D.C.1951), distinguishes the PTO be references). (over of three a combination hand on the one and suppression tween appealing Mr. Technically, Hyatt without sufficient excuse evidence withheld separate helpful” majority alleges. separate totaling issues re- as the With all facts, jections arguing and no of his claims to the Board. these one willful finding should 129-page withholding, brief we be the He wrote a address- I rejections.7 And, first instance? believe the court ing all of these different is clear, wrong newly to hold breach the to be the reversed all Board the i.e., duty, produc- created affirmative rejections obviousness, an- examiner’s PTO, ing to willful is with- ticipation, obviousness-type patent- double holding as matter law. ing, Schneller-type patenting, double and many description written and en- It helpful compare is to these facts to rejections. regard ablement to the With only one of willful examples with- description rejections in particular, written holding, a court where excluded evidence rejections the Board reversed the of 38 practice assignee of reduction to where rejections claims and sustained the of 79 corporation expressly to refused disclose Hyatt prevailed claims. Mr. on 92% of all and to allow their to witnesses answer rejections the examiner’s Board lev- questions order before PTO in to main- success, el. Despite Hyatt’s Mr. the ma- Barrett, tain a advantage. commercial jority Hyatt’s response Mr. declares to be (“[T]he Company F.2d at 396 Barrett for- “completely wholly inadequate” and answer.”). bade them to Barrett repre- Hyatt Mr. have perversely unhelp- been sents an posi- extreme and unwarranted 1277,1278. ful. Maj. Op. at tion, and majority go chooses to far beyond even that Mr. Hyatt’s standard. With respect description the written hardly conduct here rises to the level of issue, Hyatt responded rejec- Mr. Company. the Barrett There is no evi- majority tions—as the explains' thir- —with Hyatt intentionally dence that Mr. with- ty pages argument six and Table-1. held information to retain some commer- Table-1, While the Board criticizes Rather, cial advantage, as Barrett. Board thirty-eight reversed of the examin- majority concludes that an applicant where rejections er’s for lack of descrip- written fails to position, convince PTO of his he tion and in some upon exactly cases relied is foreclosed from bringing new evi- the information referenced Table-1. dence to further that position §a For example, the support Board found action, regardless of he whether believed “a decompressed data image input video he had adequate submitted evidence to the circuit generating decompressed data im- i.e., regardless applicant’s of in- (in claims) age thirty-three information” on PTO — tent. page 23 the 236-page specification, only
exact and location says where table-1 In hindsight, perhaps Hyatt Mr. should “data compressed” terms and “decom- have submitted his declaration or that of pressed” See, appeared. e.g., Ex Parte any prosecution other expert earlier (B.P.A.I. Hyatt, No. 2000-2049 July process. hindsight But misleadingly 2002) at Although Hyatt 19-20. Mr. expert acute. Declarations reports have failed overcome all of the written consuming are expensive time to pre- rejections description upon based his pare. sub- hardly It is reasonable even de- PTO, missions to he did not require patent fail sirable to applicants put fulfill “obligation” duty,” or “affirmative massive declarations into the record at an certainly and he “perversely was not early stage prosecution, un- weighing the prosecuted Hyatt application 7. Mr. patent patents several to his credit pro suggest se. is not This that Mr. agent. unsophisticated, as he is an inventor with *40 exactly problem gress PTO. foresaw this and the the applicant to cost both Lemley, providing ap- Rational it with Mark A. ameliorated generally See Office, Nw. to a civil plicants way initiate action and at the Patent Ignorance (2003) that (arguing pro- introduce new evidence after Board U.L.Rev. the PTO to overin- are much ceedings inefficient for when the issues more would be patents so few is because consolidated. This illus- vest examination succinct and enforced). case, example, here, perfectly this the applicant are trated where many rejected claims on rejections the contending the examiner with 2546 on was (double on 8 dif- patenting different bases bases the Board. many different before references, obviousness, anticipa- nearly ferent all After the Board overturned etc.), enablement, tion, description, written them, only rejections— a small number of rejections. The separate totaling 2546 on description/enablement— written based It is nearly all of them. Board overturned maintained. Hence district were say hindsight the benefit of to easy with proffer could much more have introduced Hyatt Mr. should more extensive evidence because the uni- description to evidence on written was greatly verse issues narrowed. facing was not Hyatt Board. But Mr. approach Congress This is the sensible he merely description rejection, a written places enacted. The statute the cost even rejections on facing separate was proceeding party on the better posi- majority The many, many different bases. of the applica- tioned know value re- separate asserts that 2546 implausibly majority’s applicant. tion—the The new Hyatt’s jections “proportional prose- is exclusionary upon rule based its new affir- application containing cution of an duty upsets mative balance. Maj. spanning pages.” claims pending CONCLUSION An of 21 average at 1278 n. 35. Op. rejections hardly proportional. claim per ease, majority In this blurs the line appeal inde- was forced to Hyatt Mr. pursuant an between Board when the pendent issues admissibility civil of 145. The action Crouch, average two. D. Under- Dennis exactly of new evidence is what distin- Role the Board Patent standing the § 141. “We guishes 145 from must be 4, available Appeals, in Ex Parte Appeals applicants preserve patent vigilant at http://papers.ssrn.com/sol3/papers.cfm? procedures alternative the law Despite this chal- abstract-id=142392295. preserve and to historical provides, Hyatt largely successful lenge, Mr. Fregeau, 776 distinction between them.” Further, Mr. length appeal. (Newman, J., coneurring-in- at 1041 that his ef- application suggests Hyatt’s history legislative and Su- part). containing certain pinpoint pages forts to make clear that preme precedent Court helpful good faith. Mr. terms was admissibility hallmark is the distinction especially Hyatt’s responsе may have been evidence,” up a competent “all “to build in the time before searchable valuable court,” record,” novo in “to start de applications. electronic testimony file bringing “and evidence they in before brought [the could have Mr. had an affirma- say To This bring but in before.” PTO] did all evidence to the duty tive to introduce action, evidence, civil 1278) in this admissible (Maj. Op. he Board or that “owed” Supreme Court governed be should put he is to possessed all practice proce- by “equity indicated on the and undesirable burden enormous i.e., dure,” Rules of Evidence the Federal one that will foreclose patentee, and Civil Procedure. many inventors. Con- protection for small *41 only presence Since evidence
invokes de novo standard review
(otherwise will give the district court findings
Board fact substantial evidence
deference, Fregeau, 1038), F.2d at see majority’s decision in this case makes virtually indistinguishable 145 action
from an This version contrary
of a “civil action” under 145 is Congressional intent and to the Su-
preme rulings. Court’s While is sound
policy encourage full disclosure to ad- PTO,
ministrative tribunals such as the we body
are not makes decision Congress
of how best do this. held hearings legislation,
numerous over this
considered the concerns permitting over action,
civil and decided the legis- to enact
lation these despite concerns. Hyatt
Mr. did not fail fulfill an affir- duty obligation
mative and he should penalized.
not be I Congress gave believe
Mr. right have own decla-
ration part considered as court, 145 civil action at the district I therefore must dissent from the
majority’s patent appli- constriction of this rights.
cant’s
Philip CUSHMAN, E. Claimant-
Appellant, SHINSEKI, Secretary
Eric K. Affairs, Respondent-
Veterans
Appellee.
No. 2008-7129. Appeals,
United States Court of
Federal Circuit.
Aug. 12, 2009. notes its indicate accompanying ble-1 nor cusable in the circumstances of this case. support can be description written where However, consideration all the facts any of claim limitations at found for including this absence of ade- case— The fact that the substituent words issue. quate Hyatt’s failure explanation individually limitation are used of a claim earlier, present the evidence the form of explain not how specification does (documentary the evidence instead of testi- the claim limita- specification discloses monial), objection the Director’s to the itself, pur- not even tion Table-1 does Hyatt rehearing and his brief declaration all claim port to address of the limitations court, Hyatt’s per- before the district lacking the examiner identified as written unhelpfulness only verse reinforces this Thus, description support. neither — hold conclusion. We that the district court thoroughly ana- laudable efforts to Board’s any legal not did commit error or abuse its lyze in the specification even absence excluding Hyatt’s declaration discretion Hyatt, from nor the limited assistance Hyatt’s present because of failure to provide did Hyatt information Board, evidence earlier. Hyatt provided the indicates that it needed to PTO with information C. his properly patentability assess the fact, anything, claims. if Board’s incorrectly our dissent describes de- of Table-1 demonstrates consideration promulgating “sweeping cision exclu- opportunity properly had sionary at 1279. rule.” See Dissent We provide helpful information to Board “per have adopted “sweeping” se but, identify, for reasons we need not did 1279-80, rule.” 1287. We ex- See id. not. press opinion admissibility as to evi- no variegated dence in the multitude of factu- Lastly, Hyatt’s alleged reliance on the al scenarios that arise future support also fails to expertise PTO clearly today. which dissent claims are decided case. The examiner indicated