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Hyatt v. Lee

United States District Court, District of Columbia

February 3, 2017

GILBERT P. HYATT, Plaintiff,
v.
MICHELLE K. LEE, Under Secretary Of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, Defendant.[1]

          MEMORANDUM OPINION

          EMMET G. SULLIVAN UNITED STATES DISTRICT JUDGE.

         Currently pending before the court is defendant the United States Patent and Trademark Office's ("PTO") motion to dismiss for failure to prosecute and prosecution laches, plaintiff Gilbert Hyatt's motion for leave to file a notice of additional authority and a supplemental memorandum in opposition to the motion to dismiss, and Mr. Hyatt's motion to remand the patent applications at issue in this case to the PTO. Upon consideration of the motions, the responses and replies thereto, the applicable law, and the entire record, Mr. Hyatt's motion for leave to file is GRANTED, and the PTO's motion to dismiss is GRANTED. Because dismissal is warranted, Mr. Hyatt's motion to remand is DENIED AS MOOT.

         I. Background

         Legislation enacted to implement the Uruguay Round Agreements of the General Agreement on Tariffs and Trade ("GATT") made several significant changes to United States patent law effective June 8, 1995. Hyatt v. Dudas ("Hyatt I"), 393 F.Supp.2d 1, 5 (D.D.C. 2005) (citing Uruguay Round Agreements Act, Pub. L. No. 103-465, 108 Stat. 4809 (1994)). One of those changes is that patents issuing from patent applications filed with the PTO before June 8, 1995 can receive a term of 17 years from the date of issuance, whereas patents issuing from applications filed on or after June 8, 1995 receive a term of 20 years from the date of filing. Id. (citing 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)); see also 35 U.S.C. § 154(c) (1) . Just prior to June 8, 1995, Mr. Hyatt filed 400 patent applications. See Pl.'s Opp. to Def.'s Mot. to Dismiss, ECF No. 112 at 8. Five of those applications are at issue in this case.[2] See Id. at 3; Def.'s Mem. in Supp. of Mot. to Dismiss, ECF No. 110-1 at 8. Each of these applications is a continuation of an application filed on December 2, 1988 and a continuation-in-part of applications filed earlier still. Def.'s Mem. in Supp. of Mot. to Dismiss, ECF No. 110-1 at 8. In addition, between filing these applications in 1995 and mid-1998, Mr. Hyatt amended the claims they contained numerous times. Id. at 16.

         The patent examiners tasked with reviewing the applications rejected them, finding that, among other defects plaguing certain of the applications, all of them lacked written description support under 35 U.S.C. § 112. Pl.'s Opp. to Def.'s Mot. to Dismiss, ECF No. 112 at 4. Mr. Hyatt contested the examiners' conclusions, arguing primarily that the examiners had failed to establish a prima facie case of unpatentability. Hyatt I, 393 F.Supp.2d at 6. But the Patent Trial and Appeal Board affirmed the examiners' written description rejections for each application.[3] Id. Mr. Hyatt then filed, pursuant to 35 U.S.C. § 145, four civil actions-which have been consolidated into this case-challenging the Board's decisions.[4] Id.

         Upon consideration of the parties' cross-motions for summary judgment, this Court concluded that the Board erred in determining that the examiners' rejections established a prima facie case and remanded the case back to the PTO. Id. at 9-13. The PTO, however, appealed to the United States Court of Appeals for the Federal Circuit, which reversed and remanded, finding that the examiners had set forth a sufficient prima facie basis for rejecting the applications due to a lack of written description support. Hyatt v. Dudas ("Hyatt II"), 492 F.3d 1365, 1371-72 (Fed. Cir. 2007).

         For the next eight years this case languished on this Court's docket without any action until the PTO filed its motion to dismiss for failure to prosecute and prosecution laches on February 2, 2016. See Def.'s Mot. to Dismiss, ECF No. 110-1. Mr. Hyatt has opposed that motion to dismiss and, on March 1, 2016, filed a motion to remand the applications at issue here to the PTO. See Pl.'s Mot. to Remand, ECF No. 116. The PTO has, in turn, opposed that motion to remand. See Def.'s Opp. to Pl.'s Mot. to Remand, ECF No. 122. Then, on July 18, 2016, Mr. Hyatt filed a motion for leave to file a notice of additional authority and a supplemental memorandum in opposition to the motion to dismiss. See Pl.'s Mot. for Leave to File, ECF No. 129. That motion seeks to bring to the Court's attention the decision of another court in this District granting the PTO's motion to dismiss in another of Mr. Hyatt's Section 145 cases, Hyatt v. Lee, Civil Action No. 03-901 (D.D.C. June 6, 2016) (hereinafter "Civil Action No. 03-901"), based on Mr. Hyatt's failure to take any action in that case for an approximately three-year period. See Pl.'s Notice of Additional Authority and Suppl. Mem. in Opp. to Mot. to Dismiss ("Pl.'s Suppl. Mem."), ECF No. 129-1 at 1-2. That motion also seeks to have this Court consider the argument that if Mr. Hyatt's dilatory conduct in this case warrants sanction, the sanction should be terminal disclaimer-a requirement that Mr. Hyatt disclaim the portion of the patent term that corresponds to any unreasonable delay-as a less severe alternative to the sanction of dismissal. See Id. at 2-3. The court in Civil Action No. 03-901 had concluded that it was unaware of any less severe alternative sanction to dismissal that would be appropriate as a sanction for Mr. Hyatt's failure to prosecute. Civil Action No. 03-901 at 10.

         II. Legal Standards

         The PTO moves to dismiss here on the same two grounds on which it based its motion to dismiss in Civil Action No. 03-901, see Id. at 1: failure to prosecute pursuant to Federal Rule of Civil Procedure 41(b), see Def.'s Mem. in Supp. of Mot. to Dismiss, ECF No. 110-1 at 13-17, and prosecution laches. See Id. at 18-33. The relevant legal standards for these two doctrines are set forth as follows.

         A. Federal Rule of Civil Procedure 41(b)

         Federal Rule of Civil Procedure 41(b) permits a court to dismiss an action for failure "to prosecute or to comply with [the Federal Rules] or a court order." Fed.R.Civ.P. 41(b). The three basic justifications for dismissal under this Rule are: "(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." See Gardner v. United States, 211 F.3d 1305, 1309 (D.C. Cir. 2000) (citing Shea v. Donohoe Constr. Co., 795 F.2d 1071, 1074 (D.C. Cir. 1986)). With respect to the first justification, although the prejudice sufficient for dismissal must be "so severe[ ] as to make it unfair to require the other party to proceed with the case, " Shea, 795 F.2d at 1074, when a party's delay in a case is unreasonably protracted, prejudice to an opposing party can be presumed. Id. at 1075. When the delay is not unreasonably protracted, "'the need to show actual prejudice is proportionally greater.'" Id. (quoting Lyell Theatre Corp. v. Loews Corp., 682 F.2d 37, 43 (2d Cir. 1982)). With respect to the second justification, "a malfeasant party places a severe burden on the judicial system if 'the court [is required] to expend considerable judicial resources in the future in addition to those it has already wasted, thereby inconveniencing many other innocent litigants in the presentation of their cases." Gardner, 211 F.3d at 1309 (quoting id. at 1075-76). And with respect to the third justification, deterrence justifies dismissal "when there is some indication that the client or attorney consciously fails to comply with a court order cognizant of the drastic ramifications." Id. (citing Shea, 795 F.2d at 1078).

         Regardless of which rationale for dismissal under Rule 41(b) is contemplated, because disposition of cases on the merits is preferred, dismissal as a sanction should "be applied only after less dire alternatives have been explored without success." Trakas v. Quality Brands, Inc., 759 F.2d 185, 186-87 (D.C. Cir. 1985). This exploration of alternatives to dismissal requires a court to either "try less dire alternatives before resorting to dismissal, " Peterson v. Archstone Cmtys. LLC, 637 F.3d 416, 419 (D.C. Cir. 2011) (internal quotation marks omitted), or conclude that alternative sanctions are futile because they "would not serve the interest of justice." Bristol Petroleum Corp. v. Harris, 901 F.2d 165, 167 (D.C. Cir. 1990); see also Id. (citing Bristol Petroleum, 901 F.2d at 167); Shea, 795 F.2d at 1075. In short, the court must "explain why the harsh sanction of dismissal [is] necessary under the circumstances of th[e] case." English-Speaking Union v. Johnson, 353 F.3d 1013, 1016 (D.C. Cir. 2004).

         B. Prosecution Laches

         The Supreme Court has recognized the doctrine of prosecution laches. In re Bogese,303 F.3d 1362, 1367 (Fed. Cir. 2002) (citing General Talking Pictures Corp. v. W. Elec. Co.,304 U.S. 175 (1938); Crown Cork & Seal v. Ferdinand Gutmann Co.,304 U.S. 159 (1938); Webster Elec. Co. v. Splitdorf Elec. Co.,264 U.S. 463 (1924); Woodbridge v. United States,263 U.S. 50 (1923)). This doctrine is an equitable defense, and it "may render a patent unenforceable when it has issued only after an unreasonable and unexplained delay in prosecution." Symbol Techs., Inc. v. lemelson Med., Educ. & Research Found., IP,422 F.3d 1378, 1384-85 (Fed. Cir. 2005). To determine whether a delay is unreasonable and unexplained, courts conduct "an examination of the totality of the circumstances, including the prosecution history of all of a series of related patents and overall delay in issuing claims." Id. at 1386. Moreover, prosecution laches' requirement of an unreasonable and unexplained delay in turn ...


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