The outcome:
Following decades of patent-related litigation, patent
applicant Gilbert P. Hyatt submitted significant claim
amendments for his U.S. Patent Application
No. 08/435,938 (“the ’938 application”) in August 2015. A
Patent and Trademark Office (“PTO”) examiner then issued a restriction requirement
for seven of eight claims
that Mr. Hyatt had selected for examination. Mr. Hyatt
filed a complaint in the Eastern District of Virginia alleging, among other things,
that the restriction requirement
was improper, such that the PTO violated 5 U.S.C. § 706.
The district court disagreed; it determined that 37 C.F.R.
§ 1.129 (“Rule 129”) permitted the restriction requirement
for Mr. Hyatt’s ’938 application. The district court accordingly granted
the PTO’s motion for summary judgment and
denied Mr. Hyatt’s competing motion. Mr. Hyatt appeals.
We affirm.
The law:
We review the district court’s grant of summary judgment de novo. Star Fruits S.N.C. v. United States, 393 F.3d
1277, 1281 (Fed. Cir. 2005). Summary judgment is appropriate where “there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter
of law.” Fed. R. Civ. P. 56(a). The APA provides that
agency actions are unlawful if they are “arbitrary, capricious, an abuse of discretion, or otherwise not in accordance
with law.” 5 U.S.C. § 706(2)(A).
The issues
Mr. Hyatt contests the application of Rule 129(b)(1)(ii)
to his ’938 patent application. He argues that the applicant-action exception to the general ban on restriction requirements cannot apply to the ’938 application for two
primary reasons: (I) he argues that the applicant-action exception cannot apply based on the text of Rule 129(b)(1)(ii);
and (II) he asserts that applying the applicant-action exception in this case contradicts Rule 129(a) and
Rule 129(b)(2). Addressing each in turn, we find neither
persuasive.
AND
As a threshold matter, we first note that Mr. Hyatt’s
failure to disclose his species-altering amendments can
also be accurately characterized as an act of withholding.
See id. (“[Mr. Hyatt] failed to disclose claims to a separate
invention . . . . Withholding these claims is an action by
the applicant . . . .”). And whether Mr. 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.
In any case, as the PTO observes, the Manual of Patent
Examining Procedure (“MPEP”) section 803.03 provides
examples of inaction—including delays—that it categorizes as falling under the “actions by the applicant”
exception.3 “Although the MPEP does not have the force of
law, it is entitled to judicial notice so far as it is an official
interpretation of statutes or regulations with which it is
not in conflict.” Airbus S.A.S. v. Firepass Corp., 793 F.3d
1376, 1380 (Fed. Cir. 2015) (cleaned up). And here, the
MPEP demonstrates that “the public has been on clear notice of the [PTO]’s interpretation” of the applicant-action
exception. Appellees’ Br. 21. In light of the circumstances
of this case, we fail to see how the application of
Rule 129(b)(1)(ii) due to Mr. Hyatt’s so-called inaction was
arbitrary, capricious, an abuse of discretion, or contrary to
law.
This also does away with Mr. Hyatt’s cause-and-effect
argument because there is no cause after an effect here. As
the PTO describes, and Mr. Hyatt does not rebut, Mr. Hyatt “did act prior to April 8, 1995 to actively withhold” his
claim amendments.4 Id. at 24. So Mr. Hyatt’s action preceded (and resulted in) a lack of restriction requirement before April 8, 1995, making the applicant-action exception
applicable.
In this regard, Mr. Hyatt makes two primary arguments that Rule 129’s “actions” cannot include “inactions.”
Both are unpersuasive. First, he cites cases like Defenders
of Wildlife v. Andrus, 627 F.2d 1238 (D.C. Cir. 1980), and
Western Watersheds Project v. Matejko, 468 F.3d 1099
(9th Cir. 2006), in an attempt to distinguish action from inaction. Appellant’s Br. 22. But, as the PTO observes, these
cases are not only not binding, but they also address materially different statutory contexts. Appellees’ Br. 25–26;
see Defs. of Wildlife, 627 F.2d at 1243–44 (interpreting
“agency action” as used in 42 U.S.C. § 4332(C)); W. Watersheds, 468 F.3d at 1106–08 (interpreting “agency action” as
used in 16 U.S.C. § 1536(a)(2)).
Second, Mr. Hyatt seemingly contends that applying
the applicant-action exception to the ’938 application contradicts the SAA.5 Although Mr. Hyatt fails to explicitly
direct us to the SAA language he refers to, he appears to
rely on the SAA’s statement that the general ban on
restriction requirements for transitional applications does
not apply “if there has not been at least one [PTO] action
due to actions by the applicant.” H.R. Doc. No. 103-316,
at 1006. His argument seems to depend on reading this
SAA language as saying that the applicant-action exception applies only when the applicant’s actions “prevent
[the] PTO from taking any action in a given application.”
Appellant’s Br. 22–23 (emphasis in original). And under
this reading, in Mr. Hyatt’s view, the applicant-action exception cannot apply here because the PTO issued several
actions in examining Mr. Hyatt’s ’938 application prior to
making the restriction requirement. See Oral Arg.
at 24:04–30.
Mr. Hyatt’s reading of that SAA language, though, restricts it beyond its plain terms. The SAA does not say that
the general ban on restriction requirements for transitional applications does not apply only if there has been no
PTO action due to actions by the applicant. The SAA
simply says that the general ban does not apply if the applicant’s actions prevent “at least one [PTO] action.” H.R.
Doc. No. 103-316, at 1006. And like the PTO, we see no
inconsistency between the applicant-action exception and
the SAA.6 That the PTO “has not made a requirement for
restriction,” as described in the applicant-action exception,
is an example of “one [PTO] action” that has not been
taken, as stated in the SAA.
Indeed, rather than point to an inconsistency, the portion of the SAA that Mr. Hyatt seemingly relies on appears
to mirror Rule 129. Rule 129(b)(1)(ii) states that the applicant-action exception applies when “[t]he examiner has not
made a requirement for restriction . . . due to actions by the
applicant.” 37 C.F.R. § 1.129(b)(1)(ii) (emphasis added).
The SAA similarly instructs that that same general ban on
restriction requirements “does not apply if . . . there has
not been at least one [PTO] action due to actions by the applicant.” H.R. Doc. No. 103-316, at 1006 (emphasis added).
And as previously discussed, the Examiner was unable to
issue a restriction requirement for the ’938 application
within the relevant time frame “due to” Mr. Hyatt’s “actions.”
