United States District Court, District of Columbia
GILBERT P. HYATT, Plaintiff,
MICHELLE K. LEE, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, Defendant.
GILBERT P. HYATT, Plaintiff, represented by Aaron Martin
Panner, KELLOGG, HUBER, HANSEN, TODD, EVANS & FIGEL, PLLC &
Thomas Baldrige Bennett, KELLOGG, HUBER, HANSEN, TODD, EVANS
& FIGEL, PLLC.
MICHELLE K. LEE, Defendant, represented by John G.
Interrante, U.S. ATTORNEY'S OFFICE FOR THE DISTRICT OF
COLUMBIA, Robert Ernest McBride, OFFICE OF THE UNITED STATES
ATTORNEY & Thomas W. Krause, SPECIAL ASSISTANT U.S. ATTORNEY,
U.S. ATTORNEY OFFICE.
C. LAMBERTH, District Judge.
the Court is defendant's motion to dismiss the case.
Defendant argues plaintiff's delays in both federal
courts and before the United States Patent and Trademark
Office (USPTO) justify dismissal on one or both of the
following grounds: first, pursuant to Rule 41(b) of the
Federal Rules of Civil Procedure for failure to prosecute and
second, for prosecution laches. For the following reasons the
motion to dismiss will be granted.
1995, Mr. Hyatt filed Patent Application No. 08/471, 702
("the 702 application"), "Improved Memory
Architecture Having A Multiple Buffer Output
Arrangement." The 702 application is in part a
continuation of other applications dating back to the 1980s.
In 1997, after multiple amendments, the patent examiner
rejected the 702 application. Mr. Hyatt appealed this
decision to the Patent Trial and Appeal Board in 1998. The
Board rejected many of Mr. Hyatt's claims and in 2003 he
filed an action against the director of the USPTO pursuant to
35 U.S.C. Â§ 145.
court granted the USPTO's motion for summary judgment
while declining to review evidence Mr. Hyatt had not
previously presented to the USPTO. The question of
considering new evidence was appealed to the Federal Circuit,
reheard en banc, and ultimately appealed to the
Supreme Court. In 2012, the Supreme Court held that the
district court abused its discretion by excluding Mr.
Hyatt's new evidence and remanded the case to the Federal
Circuit. Hyatt v. Dudas, No. 03-0901, 2005 WL
5569663 (D.D.C. Sept. 30, 2005), aff'd sub nom.,
Hyatt v. Doll, 576 F.3d 1246 (Fed. Cir. 2009),
rev'd en banc sub nom., Hyatt v.
Kappos, 625 F.3d 1320 (Fed. Cir. 2010), aff'd
and remanded, 132 S.Ct. 1690 (2012).
next three years there was no action in the case. In 2015,
plaintiff filed an unopposed motion in the Federal Circuit to
remand to the district court, noting the "docket sheet
reflects no activity in this case after May 21, 2012."
Appellant's Unopposed Mot. Remand Hyatt v.
Kappos, 625 F.3d 1320 (Fed. Cir. 2010) (No. 2007-1066),
ECF No. 3. Shortly after the case was remanded to this Court,
defendant filed the present motion to dismiss.
identifies two bases for the motion to dismiss, Rule 41(b) of
the Federal Rules of Civil Procedure and prosecution laches.
The legal standards for these doctrines are addressed below.
FEDERAL RULE OF CIVIL PROCEDURE 41(B)
Circuit law regarding Rule 41(b) is applicable in this case.
Bd. of Tr.s of Leland Stanford Junior Univ. v. Motorola,
Inc., 314 F.Appx. 284, 287 (Fed. Cir. 2008) ("A
dismissal under Federal Rule of Civil Procedure 41(b) is a
procedural issue not unique to patent law, which we review
under regional circuit law." (citing Mitutoyo Corp.
v. Cent. Purchasing, LLC, 499 F.3d 1284, 1290 (Fed. Cir.
2007); Bowling v. Hasbro, Inc., 403 F.3d 1373, 1375
(Fed. Cir. 2005))).
D.C. Circuit has articulated three justifications for
dismissal under 41(b): (1) prejudice to the other party; (2)
failure of alternative sanctions to mitigate the severe
burden that the misconduct has placed on the judicial system;
and (3) deterrence of future misconduct. Gardner v.
United States,211 F.3d 1305, 1309 (D.C. Cir. 2000).
Dismissal under Rule 41(b) is a "harsh sanction"
that must be "necessary under the circumstances of th[e]
case." English-Speaking Union v. Johnson, 353
F.3d 1013, 1016 (D.C. Cir. 2004). It is "ordinarily
limited to cases involving egregious conduct by particularly
dilatory plaintiffs, after less dire alternatives' have
been tried ...