The Applicant-Action (or Inaction) Exception
In Gilbert P. Hyatt v. United States Patent And Trademark Office, Appeal No. 21-2324, the Federal Circuit held that for a patent application filed but not yet granted before the Uruguay Rounds Agreement Act (which changed patent terms to be 20 years from the effective filing date instead of 17 years from the grant date), a patentee’s failure to disclose species-altering amendments for decades triggered the applicant-action exception. Therefore, the Examiner was within his authority to impose a restriction requirement under that exception.
The term for U.S. patent protection was amended to 20 years from the effective filing date instead of 17 years from the grant date by the Uruguay Rounds Agreement Act (URAA). The change in law left a gap for “transitional” applications – those filed but not yet granted before the URAA took effect on June 8, 1995. USPTO Rule 129 addresses that situation, and in particular, states that no restriction requirements may be made or maintained for transitional applications after June 8, 1995, “except where … the examiner has not made a requirement for restriction in the present or parent application prior to April 8, 1995, due to actions by the applicant.” (emphasis added).
Hyatt’s application was transitional. The PTO completed an initial examination of the application’s claims in 2003, but stayed examination until 2012, due to pending litigation. When examination resumed, the Examiner issued a non-final rejection. Hyatt responded with significant claim amendments, in some instances, rewriting the entire claim apart from the preambular “A” and “comprising.” The examiner determined that the amendments shifted claims to a different species and issued a restriction requirement.
Hyatt filed a complaint in the Eastern District of Virginia protesting this restriction requirement, arguing that it violated the Administrative Procedures Act since restriction requirements are generally not permitted for transitional applications under Rule 129. The district court granted the PTO’s motion for summary judgment, determining that Hyatt’s withholding of claims to a separate invention that was not disclosed prior to the April 8, 1995 cut-off date constituted an action that brought the Application under the applicant-action exception to Rule 129.
On appeal, Hyatt argued that his withholding was not an “action” for purposes of the applicant-action exception, but an “inaction.” The Federal Circuit rejected this argument and affirmed the district court’s decision that the restriction requirement was appropriate. It held that the applicant-action exception was applicable because “whether Hyatt’s actions are characterized as a failure to disclose or an act of withholding an entirely new species, it was that conduct of Mr. Hyatt that prevented the Examiner from entering a restriction requirement.”
Vacated Vacatur Terminates Termination
In Polaris Innovations Limited v. Brent, Appeal No. 19-1483, the Federal Circuit affirmed the Board’s decision not to terminate a case remanded under Arthrex I and upheld the Board’s claim construction.
Polaris Innovations Limited (“Polaris”) appealed the Patent Trial and Appeal Board’s finding of unpatentability regarding two petitions brought by NVIDIA Corporation. However, the Federal Circuit vacated and remanded in view of its decision in Arthrex I. On remand, Polaris and NVIDIA jointly moved for termination. While the motion was pending, the Supreme Court decided Arthrex II, vacating the Federal Circuit’s vacatur. In view of this, the Board denied the motion to terminate. With the Board’s initial determinations of unpatentability now before the Federal Circuit again, Polaris added an appeal of the denied motion to terminate.
On appeal, the Federal Circuit affirmed the PTAB’s decisions. Reviewing the Board’s decision not to terminate de novo, the Federal Circuit found because the Supreme Court’s decision in Arthrex II vacated the Federal Circuit’s vacatur, the Board had reached a final decision. Termination was, therefore, not required under Section 317 of Title 35. Moreover, Section 317(a) only requires termination with respect to the petitioner (NVIDIA). The Federal Circuit noted even if there was no final decision, the Board would have been within its discretion to proceed to a final written decision without a petitioner.
The Federal Circuit also affirmed the PTAB’s construction of terms from each of the two patents at issue. Reviewing claim construction de novo and underlying facts for substantial evidence, the Federal Circuit agreed “memory chips” could encompass both packaged and unpackaged dies. Likewise, the Federal Circuit agreed the broadest reasonable interpretation of “resource tag buffer” was “single buffer.” Finally, reviewing the Board’s findings regarding the scope and content of the prior art for substantial evidence, the Federal Circuit found the Board’s conclusion that the prior art disclosed a “single buffer” adequately supported.
Judicial Review: The PTAB Must Offer Reasonably Discernible Logic
In Provisur Technologies, Inc. v. Weber, Inc., Appeal No. 21-1942, the Federal Circuit held that the PTAB has an obligation to ensure the PTAB’s logic is reasonably discernible from the record.
Weber petitioned for inter partes review of Provisur’s patent, arguing that the claims were invalid as obvious over multiple references. In its reply brief, Weber also submitted evidence that the digital camera disclosed in Weber’s references was the same type of camera claimed by Provisur’ patent.
Provisur asked the Board to exclude this evidence as untimely. In the Final Written Decision, the PTAB found that Weber’s reply evidence was properly submitted rebuttal evidence and found that the digital camera limitation was disclosed by Weber’s references. The PTAB also found that Provisur Technologies did not dispute that Weber’s references taught all the other limitations of the claims. Rather than providing its own analysis on these limitations, however, the PTAB simply adopted Weber’s arguments and evidence as its own.
On appeal, the Federal Circuit found that Provisur Technologies had argued that the references did not teach an additional limitation of the independent claims and that the PTAB erred by not addressing Provisur’s other arguments. The Federal Circuit also found that the PTAB’s adoption of Weber’s arguments and evidence precluded the Federal Circuit from engaging in meaningful appellate review. However, the Federal Circuit affirmed the PTAB’s decision that Weber’s reply evidence was properly submitted, explaining that reply evidence did not change Weber’s invalidity theories or fill any holes in Weber’s petition. The Federal Circuit then remanded back to the PTAB for the PTAB to consider Provisur’s remaining arguments.