“Sometimes, anomalous results are merely a result of unusual ‘inputs’ or a result of noise. Other times, anomalous results are due to (inadvertent or intentional) bias at an institutional or individual level.”
Gilbert Hyatt filed hundreds of patent applications across fields such as machine control, audio and image processing, and computer technology. While many such applicants can similarly claim to have filed at least so many applications in these areas, Hyatt is perhaps somewhat unique in that: (1) he is a pro-se inventor; (2) he filed the vast majority of the applications shortly before the 1995 General Agreement on Tariffs and Trade (GATT) transition date when patent terms transitioned from 17 years from issuance to 20 years from filing; and (3) his applications are long with complex and extended priority chains. Hyatt has been characterized by some (e.g., Judge TS Ellis) as a “prolific inventor”. For others, Hyatt brings “submarine patents” to mind.
The Hyatt Cases
Regardless, the fact remains that Hyatt filed and paid for many patent applications decades ago, and nearly all of them are still pending. Hyatt asserts that the USPTO is to blame for the delay, and the agency asserts that Hyatt is to blame for at least some of the delay. Hyatt v. Hirshfeld (CAFC, June 1, 2020).
In Hyatt v. Iancu, No 1:20-cv-00990 (E.D. Va.), Hyatt’s legal team (from Baker & Hostetler LLP) filed multiple Declarations and Affidavits from former employees of the USPTO. These former employees included (for example) a former Assistant Secretary of Commerce and Commissioner, former Directors of Technology Centers, former Supervisory Patent Examiners (SPEs), and a former Director of Patent Publications.
Content from these Declarations and Affidavits is quoted or summarized below, as are responses from the USPTO.
Procedures are at the heart of all of the documents. The Declarations and Affidavits include allegations that the USPTO followed improper procedures while examining Hyatt’s applications, while the USPTO’s response refute the allegations and assert that procedures should have prevented the former USPTO employees from ever having provided such statements.
Edward Kazenske was employed at the USPTO from 1972 until 2005. Kazenske was the Deputy Assistant Commissioner for Patents from 1994 until 1997. He served Bruce Lehman (who was the Assistant Secretary of Commerce and Commissioner of Patents and Trademarks) from 1995 until 1998. From 1998-2005, Kazenske was a Deputy Assistant Commissioner for Patent Resources and Planning and was responsible for all patent budget and financial management, operations, and business technology utilization.
According to Kazenske’s Declaration:
- “Commissioner Lehman and [Kezenske] decided that no patents should issue to Mr. Hyatt while [the HR 400] legislation was pending and until all of Mr. Hyatt[‘s] patent applications could be consolidated for further examination.” (Page 4.)
- “In 1994 through 1998, I was Commissioner Lehman’s Chief conduit to the entire PTO. … During this time, I was aware Mr. Hyatt had won Board reversals at the Board of Patent Appeals and Interferences … and I ordered PTO Group Directors to ‘defer’ issuing Mr. Hyatt patents on the appealed applications with these reversal. I was concerned about issuing submarine patents during the debate over important patent legislation in Congress where, among other things, submarine patents were to be addressed.” (Page 5; emphasis added.)
- “In order to make sure that patents would not be issued to Mr. Hyatt inadvertently, I made sure that Board decisions favoring Mr. Hyatt would be deferred from issuing and I arranged for Group Director Nicholas Godici and Mr. Rolla to detect any of Mr. Hyatt’s issuing patents that reached the Office of Patent Publication to be withdrawn from issuance.” (Page 6.)
- “In early 1997, I briefed then-Commissioner Lehman about my plan [not to issue any patents to Mr. Hyatt until all of his patent applications were consolidated and until all issues could be fully coordinated and resolved]. He liked the idea. … With Commissioner Lehman’s consent, I ordered the Examining Corps not to issue any more patents to Mr. Hyatt without my approval. … I never approved issuing any of Mr. Hyatt’s patent applications and I never rescinded that order to the Examining Corps.” (Page 9; emphasis added.)
- “I did not and do not know of even a single allowable claim that Mr. Hyatt has received since 1998. I find that striking, given that I was aware of Board reversals and briefings on allowable subject matter in Mr. Hyatt’s patent applications.” (Page 12.)
Michael Razavi was employed at the USPTO from 1985 until 2018. Some of the roles held by Razavi included: SPE between 1992 until 2010 and Administration Manager from 2010 until 2014.
According to Razavi’s Declaration:
- He and SPE Richard Hjerpe managed examination of Hyatt’s applications from 1997 until 2010. (Page 2.)
- “In 1997, [Group Director Nicholas] Godici told Mr. Hjerpe and me that we would not be issuing any more patents to Mr. Hyatt until all issues within each Hyatt family of patent applications was resolved. However, we at the PTO never resolved these issues and in fact did not even try to resolve these issues, we let Mr. Hyatt’s patent applications sit ‘on hold’ for the majority of the times throughout the 2000s and beyond.” (Page 2; emphasis added.)
- “The PTO policy not to issue any more patents to Mr. Hyatt grew to be an even stricter ‘no patents’ policy throughout at least 2010 when my involvement … ended. … We often placed Mr. Hyatt’s applications on hold meaning no examination for years at a time, we stopped issuing examiner answers to his many appeal briefs so that Mr. Hyatt could not get to the Board of Appeals, and we dismissed his many petitions to provide examination so that he could not get to court to question a petition denial.” (Pages 2-3.)
- “It is a fact that the PTO had Mr. Hyatt trapped.” (Page 3; emphasis added.)
Peter Wong was employed at the USPTO from 1977 until 2007. Some of the roles held by Wong include: SPE in Technology Center 2800 from 1995 until 2000; SPE in Technology Center 2100 from 2000 until 2002; and Director of Technology Center 2100 from 2002 until 2007.
According to Wong’s Affidavit:
- “There were meetings, memos, training, and much information about reporting patent applications for SAWS evaluation. SAWS was part of the PTO internal culture and it involved the whole PTO for decades. … The SAWS program main objective was not to issue any controversial patents that would create embarrassment to the PTO.” (Page 2.)
- “The SAWS program was at times being abused and used as a political process that secretly delayed and poisoned-the-well for perceived undesirable patent applications. It gave the PTO upper senior staff the ability to prevent patentable patent applications from issuing …. It appeared to be arbitrary and at the discretion of the PTO upper senior staff ….” (Page 3.)
- “These SAWS-flagged applications were repeatedly re-examined [causing] significant delays and examiner prejudice.” (Page 3.)
- “Mr. Hyatt’s name was on the applicant Look-Out list. Patent applications of applicants whose names were on the applicant Look-Out list were taken out of the normal prosecution stream, which resulted in significant delays and examiner prejudice.” (Page 5.)
- “[T]he Commissioner’s Office would not allow ‘the Hyatt cases’ to issue simply because it had an ad hoc rule that – no more patents were to issue to Mr. Hyatt.” (Page 6; emphasis added.)
John LeGuyader was employed at the USPTO from 1990 until 2020. Some of the roles held by LeGuyader included: Chief of Staff to John Doll (who was the Commissioner of Patents) in 2005, Director of Technology Center 2600 from 2009-2020, and managing the USPTO’s Sensitive Application Warning System (SAWS) program from 2006-2015.
LeGuyder’s Declaration is not part of the case history, though the USPTO’s response (in its Opposition to Plaintiff’s Motion for Leave to File a Supplemental Memorandum and Declaration) is. This response includes quotations from LeGuyader’s Declaration.
According to the Motion:
- “Mr. LeGuyader contends that the USPTO’s Solicitor’s Office is the real mastermind behind the USPTO’s supposed ‘no patents-for-Hyatt’ policy. However, even if that were true (it is not), there is nothing improper about the Solicitor’s Office providing legal advice to the patent examiners about proper course of conduct in a given situation.” (Page 5, citation omitted.)
- “While Mr. LeGuyader admits that he signed ‘suspension in some of Mr. Hyatt’s applications,’ he conveniently omits that he signed suspensions of prosecution in both the ‘213 and ‘173 applications. Whether he was ‘uneasy about doing so’ or not, while convenient, is beside the point.” (Pages 8-9, citation omitted.)
“[Mr. LeGuyader testified that]: … In addition to personal bias against Mr. Hyatt, the USPTO’s policies evidence a kind of institutional bias against Mr. Hyatt.” (Pages 9-10, citations omitted.)
The USPTO has objected to each of these Declarations/Affidavits. According to these objections, the USPTO asserted that:
- The party signing the Declaration or Affidavit did not have the right to do so. Specifically, the USPTO asserts that such testimony implicates privilege (of USPTO attorney-client privilege and of federal law prohibiting certain testimony by former federal employees.) (LeGuyader, page 6.) Further, the USPTO submits that while each Declarant is “certainly entitled to [his/her] opinions, [he/she] is not permitted to offer them in a matter in which [he/she] was directly involved, particularly not in an effort to undermine the same actions he endorsed while at the agency.” (USPTO’s Opposition to Plaintiff’s Motion for Leave to File Supplemental Memorandum and Declaration filed on 5/19/21 – hereafter referred to as the “May 2021 Declaration Opposition” – page 10, citing 18 U.S.C. 207(j)(6)(A); USPTO’s Opposition to Plaintiff’s Motion for Leave to File a Supplemental Memorandum and Declaration filed on 3/23/21 – hereinafter referred to as the “Mar. 2021 Declaration Opposition” – pages 1, 18-19, 24).
- Hyatt is barred from obtaining information that indicates the intentions of the USPTO. (Others, page 17.)
- Actual or potential payment to the signors of the Declarations/Affidavits was improper, citing United States v. Anty, 203 F.3d 305, 311–12 (4th Cir. 2000) (“Legitimizing the payment of money to witnesses can be a risky business, particularly when the payment greatly outstrips any anticipated expense.”); see also 18 U.S.C. § 201. (May 2021 Declaration Opposition, page 11. Mar. 2021 Declaration Opposition, page 4.)
- A previous district court decision that that USPTO had no de facto policy of denying patents to Hyatt (Mar. 2021 Declaration Opposition pages 8, 14)
In response to Kazenske’s Declaration specifically, the USPTO asserted:
- “It should come as no surprise that the ‘politicals’ within the USPTO were concerned about the optics of issuing a patent with a 1970s priority date given all of the talk of ‘submarine patents’” (Mar. 2021 Declaration Opposition, page 24.)
In response to Razavi’s Declaration specifically, the USPTO asserted:
- During previous testimonies from past depositions, Razavi contended that the USPTO “wanted to make sure we can … do the best possible examination”.
- “Even if the Court fully credits Mr. Razavi’s current recollection of events, … it … merely confirms [that] … the USPTO was not in a position to handle Mr. Hyatt’s unprecedented filings.” (Mar. 2021 Declaration Opposition, page 26.)
- It was “not surprising that additional checks or approvals were necessary in Mr. Hyatt’s cases” and suspensions were a “perfectly reasonable administrative decision”. (Mar. 2021 Declaration Opposition, page 27.) The agency referred to the number of applications that faced written-description rejections and the overlap of issues facing Hyatt’s applications to exemplify the complexity of the applications. (Mar. 2021 Declaration Opposition, pages 27-28.)
In response to LeGuyader’s Declaration specifically, the USPTO asserted:
- It “defies logic to think the Solicitor’s Office would not be involved in Mr. Hyatt’s case given his litigious history” and that communications between the Solicitor’s Office and the USPTO are protected via privileged. (May 2021 Declaration Opposition, page 6.)
- LeGuyader bases his opinions on the specialized knowledge, training and experience he acquired working at the USPTO on these very applications. While he is certainly entitled to those opinions, he is not permitted to offer them in a matter in which he was directly involved, particularly not in an effort to undermine the same actions he endorsed while at the agency.” (May 2021 Declaration Opposition, page 10.)
Sometimes, anomalous results are merely a result of unusual “inputs” or a result of noise. Other times, anomalous results are due to (inadvertent or intentional) bias at an institutional or individual level. Our judicial system is now tasked with evaluating the above circumstances (and additional evidence and argument) to opine as to whether the delays of Hyatt’s cases is due to unusual circumstances or institutional prejudice.
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