The opinion of the court was delivered by: Emmet G. Sullivan United States District Judge
Plaintiff Gilbert Hyatt is an inventor who holds more than sixty patents on subjects including microcomputers, computer memories, displays, global-positioning systems and data compression. In 1995, Hyatt filed five patent applications with defendant, the United States Patent and Trademark Office ("PTO"), all generally relating to an improved memory system for a computerized display system. See Pl.'s Mot. for Summ. J. at 3. After a lengthy appeals process, the PTO ultimately rejected plaintiff's patent applications. Plaintiff then commenced the instant action pursuant to 35 U.S.C. § 145, which provides dissatisfied applicants the right to file a civil action against the Director of the PTO in the United States District Court for the District of Columbia.
Pending before the Court are the parties' cross-motions for summary judgment. Because this case is rife with material issues of fact, and because the administrative record has not been adequately developed, the Court will DENY the pending motions and REMAND the case to the PTO for further proceedings.
One seeking to patent an invention must file a written application with the PTO. An application must include a "specification" consisting of a written description of the invention (which may include drawings) and concluding with one or more "claims" that particularly and distinctly define the subject matter the inventor regards as his or her invention. See 35 U.S.C. § 112. The claims are technically drafted and set the legal boundaries for the patent owner's exclusive rights. Claims are typically composed of multiple "elements," or physical components, and "limitations," which usually describe the claim's restrictions or interactions between features of the claim's elements.
A patent specification must contain a
written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
35 U.S.C. § 112 (emphasis added). The written description requirement serves to "ensure that the inventor had possession, as of the filing date of the application relied on, of the specific subject matter later claimed by him." In re Wertheim, 541 F.2d 257, 262 (CCPA 1976). This requirement is especially relevant when, as in this case, claims are amended or added after the date of the original application. The issue then becomes whether or not the original disclosure adequately describes what is in the new claims. See, e.g., In re Wilder, 736 F.2d 1516 (Fed. Cir. 1984). This is a question of fact that must be determined on a case-by-case basis. See Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000).
After an application is properly filed, a PTO examiner evaluates the application and may allow, reject, or object to the claims. See 37 C.F.R. § 1.104. At this initial step, the examiner bears the burden of producing a prima facie showing of the factual basis for a rejection of an application. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Following an initial rejection, the applicant may amend the claims or file an argument in reply. See 35 U.S.C. § 132. Thus, the patent applicant is generally afforded two examiner reviews of the invention proposed for patenting. If the examiner ultimately denies the application in a "Final Office Action," the applicant can appeal to the PTO's Board of Patent Appeals and Interferences ("Board"). 35 U.S.C. § 134; 37 C.F.R. § 1.191. Upon completion of the briefing process, the Board may affirm or reverse the decision of the examiner or remand the application to the examiner for further consideration. See 37 C.F.R. § 41.50. Finally, if the claims are rejected by the Board, the applicant can directly appeal the decision to the United States Court of Appeals for the Federal Circuit, 35 U.S.C. § 141, or, as plaintiff has done here, file a civil action in the United States District Court for the District of Columbia against the Director of the PTO. See 35 U.S.C. § 145.
The procedural history of the instant case tracks the general patent application process outlined above. Plaintiff filed five patent applications in May and June 1995.*fn1 Each application shares the same original 517-page disclosure and contains numerous claims that are "generally related to an improved memory system for storing information" in a computer system. Pl.'s Mot. for Summ. J. at 3. At various times between January 1996 and February 1999, Hyatt cancelled all of his originally-filed claims and substituted a total of 1,120 new claims. Thus, if Hyatt can show that the later-added claims are described in his earlier-filed disclosure--that is, if Hyatt was "in possession" of these claimed inventions when the applications were filed--he is entitled to patents that relate back to the date of the original disclosures in May or early June of 1995. This is significant, as several significant changes to U.S. patent law became effective on June 8, 1995 as a result of the implementing legislation to the Uruguay Round Agreements of the General Agreement on Tariffs and Trade ("GATT"). See Uruguay Round Agreements Act, Pub. L. No. 103-465 (1994). Specifically, patents issuing from applications filed before this date receive a term of 17 years from the date of issuance, while applications filed on or after that date receive a term of 20 years from the date of filing. See Final Rule, Changes to Implement 20-Year Patent Term and Provisional Applications, 60 Fed. Reg. 20195 (Apr. 25, 1995); 35 U.S.C. § 154(a)(2).*fn2
At various times between 1997 and 1999, the PTO rejected the claims in each of the five applications, primarily for lack of sufficient written description under Section 112.*fn3 The examiner concluded that Hyatt did not demonstrate "possession" of the claimed inventions at the time of the original filing date because he failed to point to a description in his specification that discloses how the individual components listed in the original specification could be linked to form the particular claimed devices in his amended claims. See, e.g., '852 Application, Office Action, 108-F-1,147 ("it is not enough that applicant show where each claimed element resides in the earliest filed application but must also provide support for the linkage of the claimed elements creating the embodiment")(emphasis in original).*fn4
Hyatt objected to the PTO's approach, arguing primarily that the examiner failed to establish a prima facie case of unpatentability. However, the Board of Patent Appeals affirmed the examiner's written description rejections for each application.*fn5 The Board subsequently granted plaintiffs' requests for rehearing in '852, '084, and '269, but no modifications were made to the decisions. Plaintiff then filed, pursuant to 35 U.S.C. § 145, four separate civil actions against the PTO, which were consolidated into the instant case.*fn6
This case is before the Court on the parties' cross motions for summary judgment. Pursuant to Federal Rule of Civil Procedure 56, summary judgment should be granted only if the moving party has shown that there are no genuine issues of material fact and that the moving party is entitled to judgment as a matter of law. See Fed. R. Civ. P. 56; Celotex Corp. v. Catrett, 477 U.S. 317, 325 (1986); Waterhouse v. District of Columbia, 298 F.3d 989, 991 (D.C. Cir. 2002). Likewise, in ruling on cross-motions for summary judgment, the court shall grant summary judgment only if one of the moving parties is entitled to judgment as a matter of law upon material facts that are not genuinely disputed. See Rhoads v. McFerran, 517 F.2d 66, 67 (2d Cir. 1975).
Finally, the "PTO is an agency subject to the Administrative Procedure Act" ("APA"), and therefore "a reviewing court must apply the APA's court/agency review standards." Mazzari v. Rogan, 323 F.3d 1000, 1004 (Fed. Cir. 2003). Accordingly, the Court will set aside legal actions of the Board that are "arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law," and set aside factual findings that are "unsupported by substantial evidence." 5 U.S.C. § 706 (2000); Mazzari, 323 F.3d at 1005; In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000). If the parties present additional evidence to the Court, which they may on a Section 145 review, the court must make "de novo factual findings if the evidence is conflicting." Mazzari, 323 F.3d at 1004; see also Gould v. Quigg, 822 F.2d 1074, 1077 (Fed. Cir. 1987).*fn7
Both parties raise technical legal challenges to the other's compliance with the rules of the patent review process outlined above. For example, the parties dispute whether the PTO met its obligation to establish a prima facie case of unpatentability before denying Hyatt's claims. They also dispute whether Hyatt preserved his rights to argue all 1,120 claims before this Court or whether he acquiesced in litigating only five "representative" claims before the Board of Patent Appeals. Because these issues are essentially procedural in nature, the Court need not reach the merits of Hyatt's applications or the ultimate patentability of his ...