United States District Court, E.D. Virginia
GILBERT P. HYATT, Plaintiff,
UNITED STATES PATENT AND TRADEMARK OFFICE, et al., Defendants.
CLAUDE M. HILTON, District Judge.
THIS MATTER comes before the Court on Defendants' Motion to Dismiss or Cross-Motion for Summary Judgment in opposition to Plaintiff Gilbert P. Hyatt's Motion for Summary Judgment.
Plaintiff is the named inventor of at least 75 issued patents and at least 399 pending patent applications that were filed on or before June 8, 1995. His pending applications contain an average of 116 independent claims and 299 total claims - among the largest claims sets ever encountered by the United States Patent and Trademark Office ("USPTO"). In addition, each of the 399 pending applications purportedly incorporates by reference and claims the benefit of priority to numerous earlier-filed applications often dating back into the early 1970s. Many of the pending applications not only claim priority to a web of overlapping, earlier-filed applications, but are also themselves "parents" for the overlapping priority claims of numerous other later-filed applications. For example, no fewer than 112 applications claim priority to patent application number 05/849, 812 ("the '812 application"), while the 812 application itself claims priority to each of 20 applications.
The size, volume, and interconnectedness of Plaintiff's applications complicated their examination by the USPTO and contributed to examination delays. In addition, the examination of many or most of Plaintiff's applications was formally stayed during the pendency of multiple proceedings before the Board of Patent Appeals and Interferences as well as civil lawsuits brought by Plaintiff against the USPTO, the outcome of which affected the examination of many of his pending applications.
Following the United States Supreme Court's decision in Hyatt v. Kappos , 132 S.Ct. 1690 (2012), the USPTO dedicated additional resources to examining Plaintiff's pending applications. The USPTO determined that among Plaintiff's 399 pending applications, there exist only 12 roughly-distinct specifications. The agency accordingly grouped the applications into 12 "families" corresponding to a common specification. Cumulatively, the USPTO estimates that among the 399 pending applications, there are 45, 000 pending independent claims and 115, 000 total claims directed to the 12 distinct specifications.
Beginning in August 2013, the USPTO began issuing a series of formal Requirements to the applications in 11 of the 12 families, or to 385 total applications. A single Requirement applies to each application within a given family; accordingly, each Requirement has been copied into the application file of every application to which it applies. Each Requirement relies upon 35 U.S.C. § 131 and 37 C.F.R. §§ 1.75(b), 1.105(a), which provide, respectively: (1) that the USPTO "shall cause an examination to be made" of all patent applications; (2) that a single application may present more than one claim, "provided they differ substantially from each other and are not unduly multiplied;" and (3) that "in the course of examining or treating a matter in a pending... application... the examiner or other Office employee may require the submission... of such information as may be reasonably necessary to properly examine or treat the matter...."
Though highly specific to the facts of the family to which it applies, each Requirement generally makes three demands of Plaintiff: (1) that he select a reasonable number of claims across the entire family, not to exceed 600 claims total per family, for examination (though he may explain why he believes he needs more if necessary); (2) that for each claim he selects, Plaintiff identify the earliest applicable priority date and supporting disclosure; and (3) that he present a copy of the pending claims in accordance with current practice.
Plaintiff filed numerous petitions in each family subjected to the Requirements. He requested that the USPTO either expunge or redact from the Requirements information that he believes must remain confidential under 35 U.S.C. § 122(a). The statute provides that:
applications for patents shall be kept in confidence by the Patent and Trademark Office and no information concerning the same given without authority of the applicant or owner unless necessary to carry out the provisions of an Act of Congress or in such special circumstances as may be determined by the Director.
On November 5, 2013, the USPTO issued the Order from which Plaintiff appeals here, concluding that § 122(a) does not constitute a legal bar to the introduction of the information sought in the Requirements from a first application into a second, related, application. The Order found that both statutory exceptions to § 122(a)'s disclosure prohibition - that disclosure of the information is necessary to carry out an Act of Congress, and, that the Director has determined special circumstances exist to warrant the disclosure - were implicated here. Given the complexity, volume, and interconnectedness of Plaintiff's patent applications, the Order reasoned that the special procedures set forth by the Requirements are necessary for the USPTO to effectively examine the applications and create an adequate public record. As such, the Order found, "the fact that a Requirement might become available to the public as part of an application's prosecution history can also be said to have been required by an Act of Congress...." Alternatively, the Order stated that "the number of related applications filed, the number of claims filed, and the number of applications to which benefit of priority is claimed" provided sufficiently-special circumstances for the USPTO to invoke that exception as well. The Order quelled concerns over the disclosure of trade secrets, reasoning that such a disclosure would not be implicated by any publications following the Requirements because the information in the Requirements would not become public until the specification to which the Requirement applies - the portion that would contain any trade secret - becomes public. Plaintiff filed this action in response, challenging the USPTO's application of § 122(a) and seeking both declaratory and injunctive relief to prevent the publication of the information within the Requirements that he asserts to be confidential.
Defendants move to dismiss pursuant to Fed.R.Civ.P. 12(b)(1), for lack of subject-matter jurisdiction, or for summary judgment pursuant to Fed.R.Civ.P. 56(c). Defendants contend that Plaintiff has failed in his burden to prove subject-matter jurisdiction because § 122(a)'s disclosure determinations are "committed to agency discretion by law" and thus judicially unreviewable pursuant to the Administrative Procedure Act ("APA"). See 5 U.S.C. § 701(a)(2); cf. Arbaugh v. Y & H Corp. , 546 U.S. 500, 514 (2006) ("[W]hen a federal court concludes that it lacks subject-matter jurisdiction, the court must dismiss the complaint in its entirety."). Alternatively, if a judicially manageable standard of review exists, Defendants move for summary judgment on the ground that there is no genuine issue of material fact within the Administrative Record and the relevant legal questions presented by the suit result in judgment for the Defendants as both § 122(a) exceptions apply here. See Fed.R.Civ.P. 56(a); Wyeth v. Kappos , 591 F.3d 1364, 1369 (Fed. Cir. 2010).
"Before review may be had under the APA, a party must first clear the hurdle of [5 U.S.C.] § 701(a), '" which governs when courts may review agency action. Almond Bros. Lumber Co. v. United States , 721 F.3d 1320, 1326 (Fed. Cir. 2013) (quoting Heckler v. Chaney , 470 U.S. 821, 828 (1985)). When a "statute is drawn so that a court would have no meaningful standard against which to judge the agency's exercise of discretion, " see id. at 830, the statute is "thereby insulated from judicial review, " See Hinck v. United States , 550 U.S. 501, 504 (2007). As "there is no law to apply" without a meaningful standard of judicial review, the jusiticability of Plaintiff's claim must be established at the threshold. See Inova Alexandria Hosp. v. Shalala , 244 F.3d 342, 346 (4th Cir. 2001) (quotations and citations omitted).
Plaintiff here is challenging the USPTO Director's application of 35 U.S.C. § 122(a), which provides that patent applications filed prior to November 28, 2000 remain confidential during their pendency "unless necessary to carry out the provisions of an Act of Congress or in such special circumstances as may be determined by the Director." Id . He seeks judicial review of the "necessity" and "special circumstances" the Director's Order invoked to justify disclosure.
Plaintiff fails to identify what judicially manageable standard of review exists to assess the Director's determination of "necessity" or "special circumstances" - failing to provide the Court with a basis for subject-matter jurisdiction. Plaintiff attempts to rely on Sears v. Gottschalk , 502 F.2d 122 (4th Cir. 1974), where the Court determined whether § 122 fell within a Freedom of Information Act ("FOIA") exemption allowing agencies to withhold any information "specifically exempted from disclosure by statute." See id. at 126 (quotations omitted). The Court found that § 122 satisfied the FOIA exemption because "the phrase applications for patents' [within § 122] sufficiently identifies the class of items Congress deems appropriate[.]" See id. at 127. The Court so found while acknowledging that this phrase's specificity ensured "that the absence of guidelines in § 122 for the exercise of the Commissioner's discretion would not be determinative." See id. (emphasis added). Yet ...