Hyatt v. PTO

Case: 21-2324 Document: 37 Page: 1 Filed: 09/08/2022

United States Court of Appeals
for the Federal Circuit
______________________

GILBERT P. HYATT,
Plaintiff-Appellant

v.

UNITED STATES PATENT AND TRADEMARK
OFFICE, KATHERINE K. VIDAL, UNDER
SECRETARY OF COMMERCE FOR
INTELLECTUAL PROPERTY AND DIRECTOR OF
THE UNITED STATES PATENT AND TRADEMARK
OFFICE,
Defendants-Appellees
______________________

2021-2324
______________________

Appeal from the United States District Court for the
Eastern District of Virginia in No. 1:20-cv-00487-CMH-
IDD, Senior Judge Claude M. Hilton.
______________________

Decided: September 8, 2022
______________________

ANDREW M. GROSSMAN, Baker & Hostetler LLP, Wash-
ington, DC, argued for plaintiff-appellant. Also repre-
sented by MARK W. DELAQUIL.

PETER JOHN SAWERT, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, ar-
gued for defendants-appellees. Also represented by
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2 HYATT v. PTO

THOMAS W. KRAUSE, ROBERT MCBRIDE, AMY J. NELSON,
FARHEENA YASMEEN RASHEED; JESSICA D. ABER, Office of
the United States Attorney for the Eastern District of Vir-
ginia, United States Department of Justice, Alexandria,
VA.
______________________

Before MOORE, Chief Judge, PROST and HUGHES, Circuit
Judges.
PROST, Circuit Judge.
Following decades of patent-related litigation, patent
applicant Gilbert P. Hyatt submitted significant claim
amendments for his U.S. Patent Application
No. 08/435,938 (“the ’938 application”) in August 2015. A
Patent and Trademark Office (“PTO”) examiner then is-
sued a restriction requirement for seven of eight claims
that Mr. Hyatt had selected for examination. Mr. Hyatt
filed a complaint in the Eastern District of Virginia alleg-
ing, among other things, that the restriction requirement
was improper, such that the PTO violated 5 U.S.C. § 706.
The district court disagreed; it determined that 37 C.F.R.
§ 1.129 (“Rule 129”) permitted the restriction requirement
for Mr. Hyatt’s ’938 application. The district court accord-
ingly granted the PTO’s motion for summary judgment and
denied Mr. Hyatt’s competing motion. Mr. Hyatt appeals.
We affirm.
BACKGROUND
I
Congress passed the Uruguay Round Agreements Act
(“URAA”) in part to amend the term of U.S. patent protec-
tion: now, as of June 8, 1995, patent terms are 20 years
from the effective filing date instead of 17 years from the
grant date. Pub. L. No. 103-465, 108 Stat. 4809, 4984
(1994) (codified at 35 U.S.C. § 154(a)(2)). The prior patent
term, tied to the grant date, “incentivized certain patentees
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HYATT v. PTO 3

to delay prosecuting their patents by abandoning applica-
tions and filing continuing applications in their place.” Hy-
att v. Hirshfeld, 998 F.3d 1347, 1351 (Fed. Cir. 2021). The
URAA changed the incentives to promote timely disclosure
of innovations by instead tying the patent term to the ef-
fective filing date. See id. at 1352.
But the change in law left a gap for so-called transi-
tional applications—those filed but not yet granted before
the URAA took effect. This “triggered a patent application
gold rush in the spring of 1995” by applicants who wanted
their patent claims to be governed under the pre-URAA pa-
tent term. Id. “For example, in the nine days leading to
June 8, 1995, the PTO reported that it received and pro-
cessed over 50,000 applications—one-quarter of the entire
year’s projected filings.” Id. at 1353. This gold rush is “of-
ten referred to as the ‘GATT Bubble.’” Id. at 1352.
URAA section 532 addresses those GATT Bubble tran-
sitional applications. For transitional applications that
had been pending for two years or longer as of June 8,
1995, 1 it directs the PTO to “prescribe regulations to pro-
vide for further limited reexamination of” those applica-
tions. 108 Stat. at 4985. And for applications that had
been pending for three years or longer as of June 8, 1995,
it instructs the PTO to “prescribe regulations to provide for
the examination of more than [one] independent and dis-
tinct invention.” Id.
Congress further instructed that then-President Clin-
ton’s statement of administrative action (“SAA”) “shall be
regarded as an authoritative expression by the United
States concerning the interpretation and application of
the” URAA “in any judicial proceeding in which a question

1 The URAA accounts for claims of priority to earlier-
filed applications in determining how long a patent appli-
cation has been “pending.” See 108 Stat. at 4984–85.
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4 HYATT v. PTO

arises concerning such interpretation or application.”
19 U.S.C. § 3512(d); see also H.R. Doc. No. 103-316 (1994)
(SAA).
The PTO promulgated Rule 129 pursuant to its author-
ity provided by the URAA and informed by the SAA. In
particular, Rule 129(b)(1)(ii) provides:
(1) In an application . . . that has been pending for
at least three years as of June 8, 1995 . . . , no re-
quirement for restriction . . . shall be made or main-
tained in the application after June 8, 1995, except
where:
....
(ii) The examiner has not made a requirement for
restriction in the present or parent application
prior to April 8, 1995, due to actions by the appli-
cant . . . .
37 C.F.R. § 1.129(b)(1)(ii) (emphasis added).
II
Mr. Hyatt filed the ’938 application, which claims pri-
ority to applications filed as early as 1983, during the
GATT Bubble on May 5, 1995. The PTO completed an ini-
tial examination of those claims in 2003, but from 2003 to
2012, “the PTO stayed the examination of many of
[Mr.] Hyatt’s applications pending litigation.” Hyatt,
998 F.3d at 1354.
In October 2013, an examiner instructed Mr. Hyatt to
select a number of claims from his ’938 application for ex-
amination as part of the PTO’s efforts to manage Mr. Hy-
att’s approximately 400 pending patent applications.
Mr. Hyatt complied, under protest, and selected eight
claims out of the approximately 200 in that application.
The Examiner issued a non-final rejection of those claims
in February 2015, and, in August of that year, Mr. Hyatt
responded with significant claim amendments. By way of
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HYATT v. PTO 5

example, Mr. Hyatt entirely rewrote one of the selected
claims, sparing only the preambular terms “A” and “com-
prising.”
The Examiner determined that these claim amend-
ments shifted seven of the eight selected claims to a differ-
ent species of computer systems and processes. As a result,
the Examiner issued a restriction requirement between the
originally selected claims and the amended claims, still al-
lowing Mr. Hyatt to prosecute his amended claims but forc-
ing him to do so in a new, separate application. 2
Mr. Hyatt filed a complaint in the Eastern District of
Virginia. He alleged in relevant part that the PTO’s re-
striction requirement violated the Administrative Proce-
dure Act (“APA”) as arbitrary, capricious, an abuse of
discretion, or otherwise not in accordance with law since
restriction requirements are generally not permitted for
transitional applications like the ’938 application and no
exception to that rule applied. See J.A. 41 (citing 5 U.S.C.
§ 706); see also Hyatt v. U.S. Pat. & Trademark Off.,
551 F. Supp. 3d 600, 605 (E.D. Va. 2021). Mr. Hyatt and
the PTO filed competing motions for summary judgment.
The district court granted the PTO’s motion and denied
Mr. Hyatt’s motion. J.A. 14. As the district court ex-
plained,
[Mr. Hyatt] failed to disclose claims to a separate
invention and attempted to file them many years
after 1995. Withholding these claims is an action
by the applicant that falls within
[Rule 129(b)(1)(ii)’s applicant-action] exception to
the general rule prohibiting restriction

2 This meant, at a minimum, that Mr. Hyatt’s
amended claims would be subject to the new patent term—
20 years from the effective filing date. See Appellant’s Br. 5
n.1.
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6 HYATT v. PTO

requirements on transitional applications. The
[Examiner] was thus within his authority to im-
pose a restriction requirement under [that] excep-
tion . . . .
Hyatt, 551 F. Supp. 3d at 605–06. Mr. Hyatt appeals. We
have jurisdiction under 28 U.S.C. § 1295(a)(1).
DISCUSSION
We review the district court’s grant of summary judg-
ment de novo. Star Fruits S.N.C. v. United States, 393 F.3d
1277, 1281 (Fed. Cir. 2005). Summary judgment is appro-
priate where “there is no genuine dispute as to any mate-
rial fact and the movant is entitled to judgment as a matter
of law.” Fed. R. Civ. P. 56(a). The APA provides that
agency actions are unlawful if they are “arbitrary, capri-
cious, an abuse of discretion, or otherwise not in accordance
with law.” 5 U.S.C. § 706(2)(A).
Mr. Hyatt contests the application of Rule 129(b)(1)(ii)
to his ’938 patent application. He argues that the appli-
cant-action exception to the general ban on restriction re-
quirements cannot apply to the ’938 application for two
primary reasons: (I) he argues that the applicant-action ex-
ception cannot apply based on the text of Rule 129(b)(1)(ii);
and (II) he asserts that applying the applicant-action ex-
ception in this case contradicts Rule 129(a) and
Rule 129(b)(2). Addressing each in turn, we find neither
persuasive.
I
Rule 129(b)(1)(ii) permits restriction requirements for
transitional applications when “[t]he examiner has not
made a requirement for restriction in the present or parent
application prior to April 8, 1995, due to actions by the ap-
plicant.” Mr. Hyatt argues that this applicant-action ex-
ception to the general ban on restriction requirements
cannot apply to his ’938 application based on its text. Ap-
pellant’s Br. 20. He asserts that “actions,” as used in the
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HYATT v. PTO 7

applicant-action exception, does not encompass “inactions.”
As a result, he contends that his first arguable action
within the meaning of Rule 129 was in August 2015 when
he filed the claim amendments that prompted the re-
striction requirement. That filing, Mr. Hyatt argues, also
does not permit a restriction requirement for his ’938 ap-
plication because an effect cannot precede its cause: a lack
of a restriction requirement in 1995 cannot be said to be
caused by his decades-later August 2015 filing.
Mr. Hyatt made similar arguments at the district
court, but the district court found them unpersuasive. The
court determined that Rule 129(b)(1)(ii) could and did ap-
ply to Mr. Hyatt’s ’938 application because Mr. Hyatt
“failed to disclose claims to a separate invention and at-
tempted to file them many years after 1995.” Hyatt,
551 F. Supp. 3d at 605. And since “[w]ithholding these
claims is an action by the applicant that falls within” the
applicant-action exception, the Examiner was “within his
authority to impose a restriction requirement under [that]
exception.” Id. at 605–06. We agree with the district court.
As a threshold matter, we first note that Mr. Hyatt’s
failure to disclose his species-altering amendments can
also be accurately characterized as an act of withholding.
See id. (“[Mr. Hyatt] failed to disclose claims to a separate
invention . . . . Withholding these claims is an action by
the applicant . . . .”). And whether Mr. Hyatt’s actions are
characterized as a failure to disclose or an act of withhold-
ing an entirely new species, it was that conduct of Mr. Hy-
att that prevented the Examiner from entering a
restriction requirement.
In any case, as the PTO observes, the Manual of Patent
Examining Procedure (“MPEP”) section 803.03 provides
examples of inaction—including delays—that it catego-
rizes as falling under the “actions by the applicant”
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8 HYATT v. PTO

exception. 3 “Although the MPEP does not have the force of
law, it is entitled to judicial notice so far as it is an official
interpretation of statutes or regulations with which it is
not in conflict.” Airbus S.A.S. v. Firepass Corp., 793 F.3d
1376, 1380 (Fed. Cir. 2015) (cleaned up). And here, the
MPEP demonstrates that “the public has been on clear no-
tice of the [PTO]’s interpretation” of the applicant-action
exception. Appellees’ Br. 21. In light of the circumstances
of this case, we fail to see how the application of
Rule 129(b)(1)(ii) due to Mr. Hyatt’s so-called inaction was

3 Section 803.03 lists the following examples as “ac-
tions by the applicant”:
(A) applicant abandoned the application and con-
tinued to refile the application such that no [PTO]
action could be issued in the application,
(B) applicant requested suspension of prosecution
under 37 CFR [§] 1.103(a) such that no [PTO] ac-
tion could be issued in the application,
(C) applicant disclosed a plurality of independent
and distinct inventions in the present or parent ap-
plication[] but delayed presenting claims to more
than one of the disclosed independent and distinct
inventions in the present or parent application
such that no restriction requirement could be made
prior to April 8, 1995, and
(D) applicant combined several applications, each
of which claimed a different independent and dis-
tinct invention, into one large ‘continuing’ applica-
tion, but delayed filing the continuing application
first claiming more than one independent and dis-
tinct invention such that no restriction require-
ment could be made prior to April 8, 1995.
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HYATT v. PTO 9

arbitrary, capricious, an abuse of discretion, or contrary to
law.
This also does away with Mr. Hyatt’s cause-and-effect
argument because there is no cause after an effect here. As
the PTO describes, and Mr. Hyatt does not rebut, Mr. Hy-
att “did act prior to April 8, 1995 to actively withhold” his
claim amendments. 4 Id. at 24. So Mr. Hyatt’s action pre-
ceded (and resulted in) a lack of restriction requirement be-
fore April 8, 1995, making the applicant-action exception
applicable.
In this regard, Mr. Hyatt makes two primary argu-
ments that Rule 129’s “actions” cannot include “inactions.”
Both are unpersuasive. First, he cites cases like Defenders
of Wildlife v. Andrus, 627 F.2d 1238 (D.C. Cir. 1980), and
Western Watersheds Project v. Matejko, 468 F.3d 1099
(9th Cir. 2006), in an attempt to distinguish action from in-
action. Appellant’s Br. 22. But, as the PTO observes, these
cases are not only not binding, but they also address mate-
rially different statutory contexts. Appellees’ Br. 25–26;
see Defs. of Wildlife, 627 F.2d at 1243–44 (interpreting

4 We also agree with the district court that Mr. Hy-
att’s interpretation disjoins the rule’s “April 8, 1995” date
from its antecedent subject. The applicant-action excep-
tion allows a restriction requirement when “[t]he examiner
has not made a requirement for restriction . . . prior to
April 8, 1995, due to actions by the applicant.” 37 C.F.R.
§ 1.129(b)(1)(ii). As the district court explained, “[t]he date
refers to the examiner’s [lack of] action”—i.e., the absence
of a restriction requirement before April 8, 1995. Hyatt,
551 F. Supp. 3d at 606 (emphasis added); see also Appel-
lees’ Br. 24 (“The specified date clearly refers to the time of
the restriction requirement by the Examiner . . . .”). And
there is no dispute that the Examiner did not issue a re-
striction requirement for the ’938 application before that
date.
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10 HYATT v. PTO

“agency action” as used in 42 U.S.C. § 4332(C)); W. Water-
sheds, 468 F.3d at 1106–08 (interpreting “agency action” as
used in 16 U.S.C. § 1536(a)(2)).
Second, Mr. Hyatt seemingly contends that applying
the applicant-action exception to the ’938 application con-
tradicts the SAA. 5 Although Mr. Hyatt fails to explicitly
direct us to the SAA language he refers to, he appears to
rely on the SAA’s statement that the general ban on

5 Mr. Hyatt maintained—both in his briefs and at
oral argument—that the PTO never rebutted this argu-
ment. Mr. Hyatt characterizes this as a statutory dispute
against which the PTO forfeited a response. Oral Arg.
at 4:55–5:05, No. 21-2324, https://oralarguments.cafc.usco
urts.gov/default.aspx?fl=21-2324_07072022.mp3. The PTO
reasonably responded during oral argument that it did not
understand Mr. Hyatt to raise a “facial challenge” to Rule
129 at the district court or on appeal. Id. at 13:35–58. The
PTO added that, even if Mr. Hyatt preserved that argu-
ment, it fails on its merits because Rule 129 is consistent
with the SAA. Id. at 13:58–14:40. Since we also struggled
to ascertain the bounds of this SAA-based argument, we
decline to find that the PTO forfeited a response. See also
Appellant’s Br. 23–24 (asserting that “[t]he URAA . . . for-
bade the PTO from entering ‘a requirement for restriction,’
subject to two exceptions not even arguably applicable
here” (citing H.R. Doc. No. 103-316, at 1006, without fur-
ther elaboration)). In any event, we are not required to ac-
cept Mr. Hyatt’s legal arguments even if the PTO did not
respond. See Kamen v. Kemper Fin. Servs., Inc., 500 U.S.
90, 99 (1991) (“When an issue or claim is properly before
the court, the court is not limited to the particular legal
theories advanced by the parties[] but rather retains the
independent power to identify and apply the proper con-
struction of governing law.”).
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HYATT v. PTO 11

restriction requirements for transitional applications does
not apply “if there has not been at least one [PTO] action
due to actions by the applicant.” H.R. Doc. No. 103-316,
at 1006. His argument seems to depend on reading this
SAA language as saying that the applicant-action excep-
tion applies only when the applicant’s actions “prevent
[the] PTO from taking any action in a given application.”
Appellant’s Br. 22–23 (emphasis in original). And under
this reading, in Mr. Hyatt’s view, the applicant-action ex-
ception cannot apply here because the PTO issued several
actions in examining Mr. Hyatt’s ’938 application prior to
making the restriction requirement. See Oral Arg.
at 24:04–30.
Mr. Hyatt’s reading of that SAA language, though, re-
stricts it beyond its plain terms. The SAA does not say that
the general ban on restriction requirements for transi-
tional applications does not apply only if there has been no
PTO action due to actions by the applicant. The SAA
simply says that the general ban does not apply if the ap-
plicant’s actions prevent “at least one [PTO] action.” H.R.
Doc. No. 103-316, at 1006. And like the PTO, we see no
inconsistency between the applicant-action exception and
the SAA. 6 That the PTO “has not made a requirement for
restriction,” as described in the applicant-action exception,
is an example of “one [PTO] action” that has not been
taken, as stated in the SAA.

6 Following oral argument, Mr. Hyatt submitted a
Rule 28(j) letter in an attempt to clarify this SAA-based ar-
gument. This letter was improper. Rule 28(j) is not a ve-
hicle for seeking to substantively improve an answer to a
question asked of a party at oral argument, and it is cer-
tainly not a vehicle for attempting to supplement briefing
with four new paragraphs of argument and citations to five
new cases that Mr. Hyatt could have identified previously.
Fed. Cir. R. Prac. 28(j); see Oral Arg. at 5:11–9:40.
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12 HYATT v. PTO

Indeed, rather than point to an inconsistency, the por-
tion of the SAA that Mr. Hyatt seemingly relies on appears
to mirror Rule 129. Rule 129(b)(1)(ii) states that the appli-
cant-action exception applies when “[t]he examiner has not
made a requirement for restriction . . . due to actions by the
applicant.” 37 C.F.R. § 1.129(b)(1)(ii) (emphasis added).
The SAA similarly instructs that that same general ban on
restriction requirements “does not apply if . . . there has
not been at least one [PTO] action due to actions by the ap-
plicant.” H.R. Doc. No. 103-316, at 1006 (emphasis added).
And as previously discussed, the Examiner was unable to
issue a restriction requirement for the ’938 application
within the relevant time frame “due to” Mr. Hyatt’s “ac-
tions.”
II
Mr. Hyatt next argues that even if the applicant-action
exception could apply based on its text, it still cannot apply
to his ’938 application as a matter of logic due to surround-
ing regulations. Mr. Hyatt contends that applying the ap-
plicant-action exception would conflict with Rule 129(a)
and Rule 129(b)(2).
Rule 129(a) provides that
[a]n applicant in an application . . . that has been
pending for at least two years as of June 8,
1995, . . . is entitled to have a first submission en-
tered and considered on the merits after final rejec-
tion . . . . A submission as used in this paragraph
includes . . . an amendment to the . . . claims . . . .
37 C.F.R. § 1.129(a). According to Mr. Hyatt, Rule 129(a)
entitles him to have his species-altering amendments con-
sidered on the merits as “continuation-type amendments,”
which would be subject to the pre-URAA patent term. Ap-
pellant’s Br. 18–19, 32–34, 36–37. Mr. Hyatt contends that
such continuation-type consideration would be incon-
sistent with a restriction requirement here because
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HYATT v. PTO 13

imposing a restriction requirement effectively “swallow[s]”
Rule 129(a). Id. at 33.
Rule 129(b)(2), for its part, states that an “applicant
will be . . . notified and given a time period” to take certain
actions if the applicant’s transitional application “contains
more than one independent and distinct invention and a
requirement for restriction . . . cannot be made or main-
tained pursuant to this paragraph.” 37 C.F.R.
§ 1.129(b)(2). Mr. Hyatt asserts that, since Rule 129(b)(2)
recognizes that transitional applications may contain more
than one independent and distinct invention, a restriction
requirement for such an application—including the ’938
application—would be improper. Appellant’s Br. 34–36.
Mr. Hyatt levied similar arguments at the district
court, and the court rejected them. The district court ex-
plained there was no inconsistency in applying the appli-
cant-action exception in the face of either Rule 129(a) or
Rule 129(b)(2). Specifically, the court said “[n]othing in
[Rule 129(a)] references restriction practice or otherwise
overrides the more specific provisions of [the applicant-ac-
tion exception].” Hyatt, 551 F. Supp. 3d at 606. And as for
Rule 129(b)(2), that section “applies only when a require-
ment for restriction . . . cannot be made . . . . In this case,
however, the [applicant-action exception] applies” and per-
mits a restriction requirement. Id. (cleaned up). We agree
on both counts. Applying the applicant-action exception to
Mr. Hyatt’s ’938 application is not inconsistent with either
Rule 129(a) or Rule 129(b)(2).
Rule 129(a) does not speak to restriction requirements;
it provides no limitations on applying the applicant-action
exception. This means that applying the applicant-action
exception to the ’938 application does not “swallow”
Rule 129(a), as Mr. Hyatt suggests. Appellant’s Br. 33. As
the PTO observes, the “submission of amendments under
[Rule 129(a)] does not immunize those amendments from
the normal course of examination, including restriction
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14 HYATT v. PTO

under [the applicant-action exception] as appropriate.” Ap-
pellees’ Br. 32.
Rule 129(b)(2) is also not inconsistent with the applica-
tion of the applicant-action exception in this case. Indeed,
Rule 129(b)(2) specifically makes room for the applicant-
action exception. By its text, Rule 129(b)(2) “applies only
when ‘a requirement for restriction . . . cannot be made or
maintained pursuant to this paragraph.’” Hyatt,
551 F. Supp. 3d at 606 (emphasis added) (quoting 37 C.F.R.
§ 1.129(b)(2)). So, as the district court noted, applying the
applicant-action exception to Mr. Hyatt’s application “is
not inconsistent” with Rule 129(b)(2) because that excep-
tion allows the PTO “an opportunity to issue a restriction
requirement” here. Id. This means a requirement for re-
striction can be made, so Rule 129(b)(2) is of no import in
this case.
* * *
Because the district court correctly concluded that the
applicant-action exception can and did apply in this case,
we affirm its determination that the restriction require-
ment for Mr. Hyatt’s ’938 application was proper.
CONCLUSION
We have considered Mr. Hyatt’s remaining arguments
but find them unpersuasive. For the foregoing reasons, we
affirm the district court’s judgment.
AFFIRMED