Hyatt v. Lee, No. 14-1596 (Fed. Cir. 2015)
Annotate this CaseHyatt is the named inventor on at least 75 issued patents and nearly 400 pending applications, all filed before June 8, 1995. Each pending application incorporates by reference, and claims the benefit of priority from, a network of applications dating back to the 1970s. The PTO estimated that the applications include 45,000 independent claims and 115,000 total claims when combined, but consist of only 12 distinct specifications. In 2013, the PTO began to issue “Requirements,” corresponding to Hyatt’s “families” of applications having a common specification, requiring Hyatt to select claims from that family for prosecution, not to exceed 600, absent a showing that more are necessary, and identify the earliest applicable priority date and supporting disclosure for each selected claim. Each Requirement is entered in the prosecution history of a particular application, but also contains information about other applications in that family. Requirements attached to pending applications that are not parents to issued patents will remain confidential. A few issued patents claim priority from a pending application, so that Requirements in their history will become publicly available, disclosing otherwise-confidential information. Hyatt sought to expunge the confidential information, citing 35 U.S.C. 122(a), which provides that the PTO keep applications confidential unless “necessary to carry out the provisions of an Act of Congress or in such special circumstances as may be determined by the Director.” The Director denied the petitions. The Federal Circuit affirmed summary judgment in favor of the PTO, agreeing there was no genuine dispute that the “extraordinary” nature and prosecution history of Hyatt’s applications constituted “special circumstances.”
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