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.
G. SULLIVAN UNITED STATES DISTRICT JUDGE.
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.
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. 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.
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. 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. Id.
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).
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.
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.
Federal Rule of Civil Procedure 41(b)
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).
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).
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 ...