[00:00:00] Speaker 00:
Five, nine, six, Hyatt versus Lee.

[00:00:53] Speaker 00:
Please proceed, Mr. Panner.

[00:01:08] Speaker 03:
Judge Moran, may it please the court.

[00:01:09] Speaker 03:
The relief that we seek in this case is quite narrow, actually.

[00:01:13] Speaker 03:
We seek to prevent the immediate publication of confidential information that the PTO intends to place in the files of five

[00:01:22] Speaker 03:
patent applications that are currently available to the public.

[00:01:26] Speaker 03:
But the principle that's at issue here is of much broader importance.

[00:01:29] Speaker 00:
And I just want to be clear about something regarding the confidentiality.

[00:01:33] Speaker 00:
Arguably, even the existence of filed pending applications is subject to 122.

[00:01:42] Speaker 00:
But if I understand it, because I had my clerk go back and look, the only thing that you've deemed confidential is the requirements

[00:01:51] Speaker 00:
And it seems to be just the claim language, because the district court opinion, the briefs, lots of non-confidential parts, for example, talk about the number of pending applications, a little bit about priority chains, number of claims.

[00:02:03] Speaker 00:
Am I correct?

[00:02:04] Speaker 00:
I don't want to reveal something that is otherwise confidential, but it's my understanding that that's all fair game.

[00:02:10] Speaker 03:
I appreciate that, Your Honor.

[00:02:11] Speaker 03:
The answer to that is that many of the things to which you refer have been treated as confidential, however,

[00:02:19] Speaker 03:
They have been published, Committee of Congress actually published some information concerning these applications.

[00:02:25] Speaker 03:
I think it's discussed in our brief.

[00:02:27] Speaker 00:
Well, your brief doesn't have that stuff designated confidential.

[00:02:31] Speaker 03:
And because it is in fact public.

[00:02:33] Speaker 00:
I just want to make sure that I don't tread on anything improper, so I'll steer clear of

[00:02:38] Speaker 00:
discussing particular amendments that may have occurred and or claim language.

[00:02:42] Speaker 00:
And is that about what I need to steer clear of?

[00:02:46] Speaker 03:
I think that will be fine, Your Honor.

[00:02:47] Speaker 03:
And as you say, our briefs, I think, do cue to that line.

[00:02:56] Speaker 03:
We have tried to avoid having the briefs be confidential because it's inconvenient.

[00:02:59] Speaker 00:
Restart his time at 15 minutes, just because I wanted to clarify the confidentiality.

[00:03:03] Speaker 00:
It shouldn't cut off against his time.

[00:03:04] Speaker 00:
Thank you.

[00:03:06] Speaker 03:
Thank you, Your Honor.

[00:03:08] Speaker 03:
So, as I say, the principle that is at issue in this case is of much broader importance.

[00:03:15] Speaker 03:
Section 122 grants patent applicants an affirmative right to maintain their applications and confidence unless one of two statutory exceptions applies.

[00:03:26] Speaker 03:
And consistent with principles of statutory construction that the government has really not disputed, those exceptions must be construed narrowly, consistent with the core statutory purpose of protecting

[00:03:37] Speaker 03:
confidential information.

[00:03:39] Speaker 03:
Under the district court's ruling, however, the PTO has unreviewable discretion to publish patent applications whenever it considers a circumstance to be special, no matter how disconnected that special circumstance is.

[00:03:52] Speaker 00:
I was surprised that you could get a 28-J letter from you on Judge Kagan's opinion last week, the EEOC opinion.

[00:04:00] Speaker 00:
Are you familiar with it?

[00:04:02] Speaker 03:
Only I know the holding of that case, Your Honor, and obviously it does.

[00:04:07] Speaker 03:
reinforce the notion that in a case like this one, the presumption of judicial review certainly favors a reading of the statute that would not confer a reviewable discretion.

[00:04:19] Speaker 00:
There is a quote strong presumption favoring judicial review and it fails when a statute's language or structure demonstrates Congress wanted an agency to police its own conduct, but the agency bears a quote heavy burden in attempting to establish that.

[00:04:34] Speaker 00:
I thought maybe you would find that language helpful.

[00:04:37] Speaker 03:
It's extremely helpful, Your Honor, and I appreciate Your Honors pointing it out, because I do think that it reinforces the point that existed in the prior law, including cases like Bowen that we cited.

[00:04:48] Speaker 03:
I do think that the reviewability issue actually is quite plain, that this is not a matter that was conferred to the agency's discretion by law.

[00:05:00] Speaker 03:
And unless the court has questions about that,

[00:05:03] Speaker 00:
uh... review ability to issue i'd be happy to go to the matter well no i'd like to pick it up for a second what are the criteria i ought to be used to it that whether they properly determined special-circumstances except before that in your mind because i feel like there's some uh... morphing of what i consider to be too discreet exceptions to confidentiality number one being necessary to carry out an act of congress

[00:05:28] Speaker 00:
totally separate from that, such special circumstances as may be determined by the commissioner.

[00:05:33] Speaker 00:
So as you know, what the law on reviewability suggests is there has to be some delineatable set of standards that I can use to judge whether or not they've complied with what Congress intended.

[00:05:45] Speaker 03:
Absolutely.

[00:05:46] Speaker 03:
And let me first try to articulate a general standard and then provide a couple of illustrations that are based on the office's historical practice with regard to

[00:05:55] Speaker 03:
disclosure of otherwise confidential information.

[00:05:59] Speaker 03:
And the general standard is that a special circumstance must be one where disclosure of the information serves a significant statutory purpose under the Patent Act.

[00:06:09] Speaker 03:
So in other words, why is that the appropriate standard?

[00:06:13] Speaker 00:
I mean, it says special circumstances may be determined by the commissioner.

[00:06:17] Speaker 00:
Why does it have to serve a

[00:06:20] Speaker 00:
important purpose under the statute.

[00:06:21] Speaker 03:
I think that the statutory analysis that the Seventh Circuit has in the city in the Village of Palatine case helps to illustrate why that is so.

[00:06:33] Speaker 03:
Because the basic purpose of Section 122 is to establish the right of the patent applicant to maintain an application in confidence.

[00:06:42] Speaker 03:
And so then the question is,

[00:06:43] Speaker 03:
when would the Patent Office appropriately create an exception to that?

[00:06:48] Speaker 03:
It is when the disclosure itself is required to serve some significant statutory purpose.

[00:06:55] Speaker 00:
And so, for example... But Congress said that in the very preceding example, and they set this one out as a different example.

[00:07:03] Speaker 00:
They say unless necessary to carry out an act of Congress or

[00:07:10] Speaker 00:
special circumstances a commissioner might determine.

[00:07:13] Speaker 00:
So I feel like that's what I'm complaining about your morphing in the brief of what feels to me like you're morphing two completely discrete and separate exceptions into a single one.

[00:07:23] Speaker 03:
I don't think so, Your Honor.

[00:07:24] Speaker 03:
First of all, I don't think it's necessary that they be completely discrete.

[00:07:28] Speaker 03:
I think that certainly the special circumstances exception is intended to be something of a safety valve to ensure that if circumstances arise that have not been

[00:07:37] Speaker 03:
that don't fall within the first one, that they will be covered.

[00:07:40] Speaker 03:
But let me try to explain the difference.

[00:07:43] Speaker 03:
The first exception is talking about a circumstance where the director, for the director to carry out an act of Congress, it's necessary to disclose.

[00:07:54] Speaker 03:
That's the language of Section 122.

[00:07:56] Speaker 03:
The second exception talks about a circumstance where it may have nothing to do with what the director is doing.

[00:08:02] Speaker 03:
The director's not carrying out an act of Congress.

[00:08:04] Speaker 03:
But there's a statutory interest.

[00:08:06] Speaker 03:
So that's where I think the examples are so helpful.

[00:08:08] Speaker 03:
And they're the very examples that the PTO has cited in its brief as being historical examples of appropriate disclosure.

[00:08:16] Speaker 03:
And those were situations where there was a defendant in a patent infringement case.

[00:08:21] Speaker 03:
And they came to the office and said, I really need to see what's in that application, because I think it's going to show

[00:08:28] Speaker 03:
that this, you know, the scope of the patent is different from what's being claimed over in the infringement suit.

[00:08:32] Speaker 03:
Now, it's not necessary to carry out an act of Congress for the PTO to disclose in that circumstance, but it is a special circumstance in which that otherwise confidential information ought to be disclosed to ensure that the patentee doesn't have a right to exclude that's broader than what the... You, of course, are going to agree that the statute puts the PTO in charge of setting out procedures for

[00:08:58] Speaker 00:
processing and examining applications, right?

[00:09:01] Speaker 00:
It does.

[00:09:01] Speaker 00:
At a minimum, procedures.

[00:09:03] Speaker 00:
It won't touch substantive rulemaking.

[00:09:05] Speaker 00:
But procedures, well one such procedure that has existed since the 1960 is articulated in 37 CFR 1.75 and it was cited at least by the Office, I believe maybe in your reply brief, but I don't remember for sure.

[00:09:20] Speaker 00:
And what it expressly says is more than one claim may be presented, this isn't an application

[00:09:26] Speaker 00:
I was shocked to see this, quite frankly.

[00:09:28] Speaker 00:
It kind of blew me away, because it's not the way I think of patent practice normally.

[00:09:32] Speaker 00:
But this has been consistently, without a single amendment, the rule since 1960 regulation.

[00:09:37] Speaker 00:
More than one claim may be presented, provided they differ substantially from each other and are not unduly multiplied.

[00:09:47] Speaker 00:
Yes, Your Honor.

[00:09:49] Speaker 00:
Okay.

[00:09:49] Speaker 00:
Why wouldn't the PTOs need to continue to comply

[00:09:54] Speaker 00:
with this regulation be a special circumstance that could warrant breaching confidentiality?

[00:10:02] Speaker 03:
Well, Your Honor, and I think that this goes really to the core of the merits of the case.

[00:10:07] Speaker 03:
And I think that in fairness, the most powerful argument that the government has been able to articulate, and it's one that has, I think, I would concede it has a certain surface appeal, is that they say, well, look, we're just doing our job trying to examine these

[00:10:22] Speaker 03:
applications which present challenges for us.

[00:10:25] Speaker 03:
We're trying to do an examination here, and it just so happens that as a result of going through this process and the operation of our regulations as they exist, some information about confidential applications is going to get out there.

[00:10:41] Speaker 03:
And so that ought to justify it.

[00:10:44] Speaker 03:
I think the answer to that is that Section 122

[00:10:49] Speaker 03:
And this is where I think the standard that we're talking about has bite and ought to be applied by this court.

[00:10:55] Speaker 03:
Section 122 says you don't disclose it, you don't give it out unless there are special circumstances that by implication justify that disclosure.

[00:11:06] Speaker 00:
So nobody's saying... But why wouldn't the special circumstances in this case be precisely what the PTO has articulated in the requirement?

[00:11:16] Speaker 00:
Because one of the things I looked closely at, Mr. Panner, was is it possible that the PTO went too far in the requirements?

[00:11:23] Speaker 00:
Is it possible that some of the information they disclosed might be justifiable and yet they went too far and other bits of it is not?

[00:11:32] Speaker 00:
But, you know, I went through every single piece of the one requirement we have in front of us and why aren't

[00:11:39] Speaker 00:
why isn't the disclosure of each piece of that information justified by special circumstances?

[00:11:44] Speaker 00:
Mr. Hyatt has, and this is all stuff you say I can say, 115,000 pending claims all filed before 95.

[00:11:52] Speaker 00:
Don't even get me started on how that could possibly be, but he does.

[00:11:58] Speaker 00:
And so given the volume of the claims and the fact that the PTO has a reg, by the way, and that 115,000 claims,

[00:12:05] Speaker 00:
in only 399 applications.

[00:12:07] Speaker 00:
And wait, the PTO has a reg that says more than one claim can be provided in an application, more than one.

[00:12:15] Speaker 00:
Well, I think that means he's got, what, more than 114,700 more than what this regulation starts at the premise with.

[00:12:23] Speaker 00:
More than one can be provided provided they substantially differ from each other and are not unduly multiplied.

[00:12:31] Speaker 03:
Your Honor, I guess, let me,

[00:12:35] Speaker 03:
I really do want to try to go right to the heart of Your Honor's question, and let me do that by saying, let's assume for present purposes that for all of the reasons that the PTO says, we don't obviously agree with that, and there are reasons why the claims are so numerous.

[00:12:54] Speaker 03:
But leaving that and there's a reason why.

[00:12:58] Speaker 00:
That's the whole thing about the requirements and that's why I thought, at first I thought, well maybe they don't need to disclose the claim language.

[00:13:04] Speaker 00:
Maybe they can disclose sort of the volume and they can turn some of the burden on him to prove stuff, but maybe they don't need all the specific information.

[00:13:11] Speaker 00:
But what they showed us in this one requirement, I assume the others parallel this, is that lots of different claims in different applications are actually verbatim.

[00:13:22] Speaker 03:
There are a couple examples like that, Your Honor, but the point that I'm trying not very effectively to get to is that whether those requirements had to be exactly as they were and whether that was 100% legitimate, which is not at issue in this case, the question is whether they need to be disclosed.

[00:13:41] Speaker 03:
What Mr. Hyatt is asking for in terms of relief is not that the requirements be withdrawn, not that they be edited, not that they be put in a different, that they say anything different from what they say.

[00:13:52] Speaker 03:
but that they not be published.

[00:13:54] Speaker 03:
And it is absolutely the very normal course of examination.

[00:13:59] Speaker 03:
Of course, every office action is loaded with confidential information.

[00:14:05] Speaker 03:
But the basic rule of Section 122 is you don't publish anything in a non-public application.

[00:14:12] Speaker 03:
What happened in this case, and the reason why we are here now, is that there were five applications that were already on public pair

[00:14:21] Speaker 03:
as a result of their relationship to issue patents.

[00:14:25] Speaker 00:
But here's the problem.

[00:14:26] Speaker 00:
If I have to put the requirement into this particular case, one case, one patent that I'm examining, I have to turn the burden on Mr. Hyatt to come forward with information and all of that.

[00:14:41] Speaker 00:
And then that patent issues.

[00:14:46] Speaker 00:
And then Mr. Hyatt, who's a third party, maybe me, for infringement.

[00:14:51] Speaker 00:
Holy cow, don't you think that third party needs to know what the PTO said in that requirement to properly understand the scope of his claims?

[00:15:01] Speaker 00:
Because maybe the examiner made statements about claim scope.

[00:15:04] Speaker 00:
We all know that would absolutely affect the claim scope that Mr. Hyatt ought to be able to enforce.

[00:15:10] Speaker 00:
And so doesn't the public have an absolute right once that patent issues to have everything that formed part of its allowance?

[00:15:19] Speaker 03:
And Judge Moore, the answer to that is that case is not yet before you.

[00:15:24] Speaker 03:
That's exactly the case before you.

[00:15:27] Speaker 03:
It isn't.

[00:15:28] Speaker 03:
And we tried to explain this because the PTO obviously relies heavily on the language of disclosure and the importance for potential infringers to know the scope of patents.

[00:15:41] Speaker 03:
There's no issued extant patent to which this relates.

[00:15:48] Speaker 03:
There are five applications that are public, not because those patents have been issued, but because they were parent applications of issued patents.

[00:15:58] Speaker 03:
That's the only reason that they were made public pursuant to a rather recent PTO regulation.

[00:16:04] Speaker 01:
If the normal process and those applications and everything contained within them become public, why so that the public will understand the full scope of the record

[00:16:18] Speaker 01:
and will understand why the Patent Office did whatever the Patent Office did, right?

[00:16:23] Speaker 03:
Your Honor, again, I think this does go right to the heart of the merits of this case and why the court ought to, in recognition of the significance of the statutory right and the breadth of the statutory right granted in Section 122, reverse what happened below and

[00:16:43] Speaker 03:
order relief granted because there is no such interest in this case.

[00:16:49] Speaker 03:
There is no extant patent to which this information relates.

[00:16:53] Speaker 03:
If later a patent issues and this information is in that file history, that presents a different case.

[00:17:04] Speaker 00:
But what's going on here is... Let me just be clear so I understand because I don't know that I fully appreciated the facts the way that you're explaining them.

[00:17:11] Speaker 00:
Are you saying that this requirement was not only put into the file of the pending applications that were subject to examination, but it was somehow put into the file of applications that have already resulted in patents and has somehow become public?

[00:17:31] Speaker 00:
Stop shaking your head.

[00:17:32] Speaker 00:
You're driving me crazy.

[00:17:34] Speaker 03:
No, Your Honor.

[00:17:36] Speaker 03:
Let me try again, because it's complicated and obviously part of that is due to the number of different applications and the relationships, and I appreciate that.

[00:17:44] Speaker 03:
And we didn't do a good job of clarifying this in our reply brief, so let me try to back up.

[00:17:50] Speaker 03:
Mr. Hyatt has applications that are pending that are parent applications to issued patents.

[00:18:00] Speaker 03:
All of those issued patents are expired.

[00:18:04] Speaker 03:
So there is an application that is pursuant to a PTO regulation that we haven't directly challenged in this case, but that was, it's actually a rather recent vintage, or at least vintage post his filing of these applications, that says, if you are a parent application, this isn't the way it used to work, but if you are a parent application to an issued patent, we're gonna make you available

[00:18:33] Speaker 03:
if somebody asks for it and pays a fee.

[00:18:37] Speaker 03:
It's a little bit different from we're going to just make it public.

[00:18:39] Speaker 03:
But it says, if you want to get a parent application.

[00:18:44] Speaker 00:
OK, but if somebody asks for it and pays a fee, they can pop it up on the internet themselves at that point.

[00:18:48] Speaker 00:
There is no rule anywhere that says that.

[00:18:53] Speaker 00:
Which is why you don't have a harm argument.

[00:18:56] Speaker 03:
We do.

[00:18:58] Speaker 03:
Because the issue here is, was the PTO

[00:19:03] Speaker 03:
Was it okay for the PTO to take this information from other applications, put it into the requirement document, publish it in that file?

[00:19:16] Speaker 03:
When we said to the PTO, look, we're not directly challenging your authority to make us provide you this information.

[00:19:25] Speaker 03:
There may be other challenges to that.

[00:19:27] Speaker 03:
But for present purposes, the issue is we are asking you not to publish information about other applications in this application file.

[00:19:39] Speaker 03:
And there's no reason for you to do that.

[00:19:41] Speaker 03:
No circumstance justifies that disclosure.

[00:19:44] Speaker 03:
In other words, Section 122

[00:19:47] Speaker 03:
What we are trying to do is enforce the right that is granted under Section 122 to say, let's take this seriously.

[00:19:53] Speaker 03:
It says that information, and it's always been taken seriously.

[00:19:58] Speaker 03:
And there's never been a case like this one that I'm aware of or that the PTO cites, where the PTO takes information about a large number of applications and threatens to publish it on the internet.

[00:20:09] Speaker 00:
There's probably never been another inventor like Mr. Hyatt either, or at least an applicant.

[00:20:14] Speaker 03:
I understand your honor's point, but it's a question of degree.

[00:20:18] Speaker 03:
And the point is there certainly have been many other circumstances where there have been related applications.

[00:20:24] Speaker 03:
Continuation practice is a common thing.

[00:20:27] Speaker 00:
Your way of your rebuttal time.

[00:20:31] Speaker 01:
Just one question.

[00:20:33] Speaker 01:
But the information we're talking about here is publicly available.

[00:20:37] Speaker 01:
No, it's not, your honor.

[00:20:38] Speaker 01:
I thought you said it's in an application that is the parent.

[00:20:43] Speaker 01:
of an issued patent, the patent may now be expired, that's fine, and therefore is available if somebody asks for it.

[00:20:58] Speaker 03:
the agreement that we had reached in order to avoid the need to seek any sort of preliminary relief.

[00:21:04] Speaker 03:
And frankly, it was a courtesy that the PTO granted to ensure that this court and the lower court would have an opportunity.

[00:21:10] Speaker 01:
I know where you're going.

[00:21:11] Speaker 01:
Yeah.

[00:21:11] Speaker 01:
It's not there.

[00:21:12] Speaker 01:
I may have misspoke.

[00:21:14] Speaker 01:
It's not publicly available, but it would be but for this arrangement.

[00:21:19] Speaker 01:
It would be but for this arrangement.

[00:21:20] Speaker 01:
Because the rules would normally make that available.

[00:21:23] Speaker 03:
Right.

[00:21:23] Speaker 03:
What this case is about is to say this cannot go

[00:21:28] Speaker 03:
this in this form cannot go into this file because that would be a disclosure that would violate 122.

[00:21:32] Speaker 03:
Thank you Mr. Freeman.

[00:21:39] Speaker 00:
Mr. Freeman, if you need extra time, we certainly let Mr. Panner have a little extra time.

[00:21:45] Speaker 02:
Thank you Your Honor.

[00:21:45] Speaker 02:
I may please court Mark Freeman for the government.

[00:21:47] Speaker 02:
Let me just begin with the factual point on which we ended with Mr. Panner.

[00:21:51] Speaker 02:
Mr. Hyatt had at least nine issued United States patents that although expired,

[00:21:58] Speaker 02:
expired within the last six years.

[00:22:00] Speaker 02:
Indeed, one of them was still alive and kicking when the complaint in this case was filed that expired in August last year.

[00:22:07] Speaker 02:
That means that as the court is well aware, Mr. Hyatt could bring suit under those patents for retroactive retrospective damages against persons in the United States.

[00:22:17] Speaker 02:
That is the reason why we have a rule that if you have said things in the prosecution history of a parent application,

[00:22:25] Speaker 02:
that the people get to know that information so that they can understand the scope of the claims and correctly construe the scope of the patentee's exclusive rights.

[00:22:37] Speaker 02:
The requirements here, among other things, discuss why these claims violate the regulation that Judge Moore cited, which incidentally tracks the reasoning of the CCPA in the Inray Chandler case and in other cases.

[00:22:52] Speaker 00:
And indeed, as this court knows... That regulation shocked me.

[00:22:56] Speaker 00:
I mean, I don't know how much you are involved in actual patent prosecution, but I've never seen a one-claim patent, and the regulation almost makes it seem like each patent gets a claim, and if you want more than that, you've got to justify it.

[00:23:11] Speaker 00:
I don't see the PTO generally asking people to justify it either, if you file.

[00:23:16] Speaker 02:
I think we think that most

[00:23:18] Speaker 02:
most patent prosecutors, most patent attorneys submit claims.

[00:23:22] Speaker 02:
You know, you've got a meansful function claim, you've got a process claim, you've got an apparatus claim, you vary the claims.

[00:23:27] Speaker 02:
What you don't do is submit, you know, 9,500 claims for a given specification that are virtually identical.

[00:23:35] Speaker 02:
And this court, the requirements themselves point this out as at page 212 of the joint appendix in the discussion in the requirements of the legal justification for the rule.

[00:23:45] Speaker 02:
The requirements point out, look, this court and its predecessor, the CCPA... Here's one question I have from you about logistics.

[00:23:52] Speaker 00:
It doesn't go to the merits of this case.

[00:23:54] Speaker 00:
So the PTO charges by claim, correct?

[00:23:57] Speaker 00:
Yes.

[00:23:58] Speaker 00:
So Mr. Hyatt has paid big fat application fees when he submitted 9,500 claims in a particular spec.

[00:24:05] Speaker 00:
If you're now going to limit him to 600, are you going to refund that money since you are now not going to be prosecuting

[00:24:11] Speaker 00:
the other 8,000, whatever.

[00:24:14] Speaker 02:
Your Honor, I don't know the answer to the refund question directly.

[00:24:17] Speaker 02:
I'd be surprised, though, if we did.

[00:24:18] Speaker 00:
And I'll tell you why.

[00:24:20] Speaker 02:
Yeah, me too.

[00:24:20] Speaker 02:
Me too.

[00:24:21] Speaker 02:
But I'll tell you why.

[00:24:22] Speaker 02:
I mean, look, that regulation, as Your Honor pointed out, has been on the books since long before even the earliest possible application parity.

[00:24:29] Speaker 00:
The whole reason for making people pay for extra claims is the time that it'll take the office to prosecute them.

[00:24:33] Speaker 00:
And if you're going to, I'm not saying you haven't spent lots of time on this trial.

[00:24:38] Speaker 00:
But if you're going to refuse to prosecute the claims, shouldn't the man get his money back?

[00:24:42] Speaker 02:
I don't think so.

[00:24:43] Speaker 02:
And let me tell you why.

[00:24:44] Speaker 02:
I mean, if you just take a typical double patent rejection.

[00:24:47] Speaker 00:
If I walk into McDonald's and order two burgers and I hand them the money for two burgers and they hand me one, do you think I'm going to walk out without the other half of the money that I gave them?

[00:24:56] Speaker 02:
I don't think so, Your Honor.

[00:24:57] Speaker 00:
No.

[00:24:57] Speaker 00:
So why should Mr. Hyatt?

[00:24:59] Speaker 02:
Because when you have a rule that says you may not present unduly multiplicitous claims,

[00:25:07] Speaker 02:
And you come in and submit this many claims, you have broken the rule, and we may enforce that rule.

[00:25:14] Speaker 02:
No one here, including Mr. Hyatt, is challenging the validity of that principle.

[00:25:18] Speaker 02:
And the issue in front of us is whether the government, whether the PTO... So your argument to me is we did prosecute these.

[00:25:27] Speaker 00:
We decided they were unduly multiplicative.

[00:25:30] Speaker 02:
Well, we haven't even decided that, to be fair, Your Honor.

[00:25:32] Speaker 02:
What the requirements say is

[00:25:33] Speaker 02:
These sure appear to us to be identical or nearly so.

[00:25:36] Speaker 02:
Tell us why we're wrong.

[00:25:38] Speaker 02:
And incidentally, that underscores our point that if he comes back, imagine how he responds to this.

[00:25:44] Speaker 02:
In his petition to the agency, he said section 122 encompasses his response to the requirement as well.

[00:25:49] Speaker 02:
If he comes back and says, no, no, you're wrong.

[00:25:51] Speaker 02:
You say claim 300 here is identical or similar to claim 287 over here, but actually you misunderstand.

[00:25:57] Speaker 02:
When I use this word, I meant a different thing and that's patentably distinct.

[00:26:01] Speaker 02:
Of course, the public has entitled that information.

[00:26:03] Speaker 02:
And all that we're saying in this case is that PTO gets to treat these office actions like any other office action.

[00:26:10] Speaker 02:
And Mr. Pattern just stood here.

[00:26:11] Speaker 00:
But these aren't called an office action.

[00:26:13] Speaker 02:
No, requirements.

[00:26:14] Speaker 02:
And requirements, as this court held in a case not coincidentally called Hyatt v. Dudas, is the sort of thing that an examiner can issue and that a patent applicant is required to respond to.

[00:26:26] Speaker 02:
Now, there's no doubt, we think, that the agency is entitled to do this, but that's not this case.

[00:26:32] Speaker 02:
What this case is, as Mr. Panner said, is about whether the agency can treat what is for purposes of this appeal a concededly valid agency action, like every other requirement or office action, and put it in the file of patent applications, and under long-standing, unchallenged PTO rules, make them available to the public in the ordinary course.

[00:26:51] Speaker 02:
if Mr. Hyatt wants to challenge the validity of those requirements, which he has done incidentally.

[00:26:56] Speaker 00:
Well, but this isn't about ordinary course because your entire right to do this is under your special circumstances exception.

[00:27:03] Speaker 00:
And so this is an ordinary course.

[00:27:05] Speaker 00:
And so wouldn't one of the special circumstances, for example, be what is the relevant harm?

[00:27:10] Speaker 00:
Now, Mr. Hyatt might not be harmed because quite frankly, at least one

[00:27:14] Speaker 00:
in all of these chains has already been disclosed and he can't claim broader than the spec and you might have just all the harm on your favor in this case.

[00:27:24] Speaker 00:
But wouldn't one of the relevant factors be the extent of what you're seeking to disclose and whether those

[00:27:33] Speaker 00:
that information is or is not sort of already publicly available in some other way.

[00:27:37] Speaker 02:
Those are the things that the director took into account, Your Honor, but we don't think they're judicially reviewable.

[00:27:41] Speaker 00:
Well, yeah, okay, but suppose I think special circumstances is judicially reviewable, wouldn't that be the sort of thing that would be part of the relevant inquiry?

[00:27:54] Speaker 00:
Since there is a general rule, you can't disclose it, you can in special circumstances, wouldn't, if you're able to show that there really isn't

[00:28:02] Speaker 00:
any sort of generalized harm here, because everything is already disclosed or otherwise available.

[00:28:07] Speaker 00:
But that would be the kind of thing to support your decision.

[00:28:09] Speaker 02:
Certainly in this case, the director thought those things were relevant and made exactly that point in her decision, which appears at page 233 of the Joint Appendix.

[00:28:18] Speaker 02:
But I want to go back just to the statutory point.

[00:28:19] Speaker 02:
I'm sensing the skepticism, but give me a chance here.

[00:28:24] Speaker 02:
One thing, Mr. Hyatt treats the statute on the special circumstances point as though it says,

[00:28:30] Speaker 02:
Information in patent applications may be disclosed if it's necessary to carry out the provisions of an act of Congress or in special circumstances.

[00:28:37] Speaker 02:
But that's not what it says.

[00:28:38] Speaker 02:
It says, or in, such special circumstances as may be determined by the director.

[00:28:44] Speaker 00:
Isn't that possibly just an articulation of who ought to be the one to figure out the special circumstances?

[00:28:52] Speaker 00:
Your Honor, I think there's lots of things in the PTO statute.

[00:28:54] Speaker 00:
For example, if you want an exception to some sort of rule, who do you petition?

[00:28:59] Speaker 00:
The statute says petition the director for a special exception.

[00:29:02] Speaker 00:
That's true.

[00:29:02] Speaker 00:
And stuff like that.

[00:29:03] Speaker 02:
Right.

[00:29:04] Speaker 02:
And there are many places in the statute where Congress has given the director discretionary authority.

[00:29:09] Speaker 02:
among other things, how to treat a patent application.

[00:29:11] Speaker 00:
And do you think all of those are unreviewable?

[00:29:14] Speaker 00:
No.

[00:29:14] Speaker 00:
Just because it was specified who has the authority to think them up?

[00:29:18] Speaker 02:
Your Honor, this particular locution has a long historical pedigree.

[00:29:21] Speaker 02:
And we cite in our brief the George S. Bush case from 1940.

[00:29:24] Speaker 02:
That's the case cited in the attorney general's manual that's been understood to be informative and construing the APA.

[00:29:32] Speaker 02:
What the paragraph in that case, that critical Supreme Court case explains, is that there is a difference.

[00:29:37] Speaker 02:
The Supreme Court recognized it in Webster versus Dale as well.

[00:29:40] Speaker 02:
between saying a circumstance is objectively present or Congress saying when a particular officer believed in that officer's discretion that that particular circumstance is present.

[00:29:50] Speaker 02:
That is a long, I think the DC Circuit has called that distinction one of ancient and historical lineage.

[00:29:55] Speaker 00:
And in neither of those cases was there a general rule and then an exception.

[00:30:01] Speaker 00:
That really changes the dynamic of this case as compared to these.

[00:30:05] Speaker 00:
Congress expressed

[00:30:07] Speaker 00:
a very clear intent in the form of 122 that applications be maintained in confidence, and then carved out exceptions which feel to me like they're meant to be quite narrow, necessary for an act of Congress.

[00:30:20] Speaker 00:
And then in special circumstances, it seems to me ought not to be like this unwieldy, really broad thing.

[00:30:26] Speaker 02:
And it has not been construed or applied that way, Your Honor.

[00:30:29] Speaker 00:
But if it were, you're suggesting nobody could stop her.

[00:30:33] Speaker 00:
She's got free reign.

[00:30:34] Speaker 02:
At least not on a non-constitutional basis.

[00:30:37] Speaker 02:
And let me just point to this court's precedent, for example.

[00:30:40] Speaker 00:
But do you recognize the distinction that I'm drawing, which I think is significant, between the two cases you cited, which I grant you conveyed authority to a particular person to set out circumstances, and this case where Congress expressed a general rule and then set out two narrow exceptions, one of which it gave authority to somebody to articulate?

[00:31:00] Speaker 02:
I don't agree.

[00:31:00] Speaker 02:
Let me explain why.

[00:31:01] Speaker 02:
First, let me point to this court's decision, the only one I could find recently applying 701A to

[00:31:07] Speaker 02:
That's the Allman Brothers case concerning a statute that allowed the U.S.

[00:31:12] Speaker 02:
Trade Representative to enter into certain agreements concerning softwood lumber with Canada.

[00:31:17] Speaker 02:
And in that statute, if you just look at the case, the statute laid out a number of requirements that any such agreement had to comply with.

[00:31:24] Speaker 02:
Some of them were justiciable.

[00:31:26] Speaker 02:
In fact, the court in the Allman Brothers case went ahead and addressed the party's, the challenger's arguments to some of them.

[00:31:31] Speaker 02:
But one of them was that the requirement, that the agreement be satisfactory to the U.S.

[00:31:35] Speaker 02:
Trade Representative.

[00:31:36] Speaker 02:
And the argument in the case was very much like the argument Mr. Panner made this morning.

[00:31:40] Speaker 02:
The applicant said, look, what is the purpose of this?

[00:31:43] Speaker 02:
It is to provide remedies to injure US industry.

[00:31:46] Speaker 02:
I know that it says satisfactory, but it must mean satisfactory in a way that accomplishes the purposes of the statute.

[00:31:52] Speaker 02:
And this court said, we're happy to talk about your argument on the other score, because we agree with you that that was meant to be reviewable.

[00:31:59] Speaker 02:
But that part is committed to agency discretion by law.

[00:32:02] Speaker 02:
And that follows from the text of section 701 of the APA.

[00:32:06] Speaker 02:
Section 701 of the APA says this chapter in the APA applies, except to the extent that agency action is committed to agency discretion by law.

[00:32:16] Speaker 00:
So the Congress contemplated in the APA... Doesn't the ABA also afford a strong presumption of reviewability and didn't Justice Kagan really reinforce this last week?

[00:32:27] Speaker 02:
Yeah, I saw the mock mining case, Your Honor, and I'm happy to address it.

[00:32:30] Speaker 02:
I actually also expected a 20-year jailer.

[00:32:35] Speaker 02:
That case, I think, reinforces the reasons why we're correct here.

[00:32:38] Speaker 02:
That involved, as you know, the power of the obligation on the EEOC to conduct conciliation before suing an employer on behalf of an employee.

[00:32:48] Speaker 02:
It didn't say conduct such conciliation as the administrator of the EEOC deems appropriate.

[00:32:53] Speaker 02:
What it said was, you must conciliate.

[00:32:55] Speaker 02:
And the Supreme Court said, that is justiciable.

[00:33:00] Speaker 02:
Justice Kagan also went on to say, though,

[00:33:03] Speaker 02:
Even that, because there is no standard in the statute for understanding what conciliation means, just like there's nothing here about what is special.

[00:33:12] Speaker 02:
All the court was willing to do was to say, did the fact of conciliation occur?

[00:33:18] Speaker 02:
And the court stresses, as Your Honor is aware, that it would not look at the underlying substance.

[00:33:23] Speaker 02:
It was just going to check the box to make sure it happened.

[00:33:25] Speaker 02:
So even there, where the court said, we agree it's justiciable, the statutory language was different.

[00:33:32] Speaker 02:
The court emphasized even there how deferential the review was going to be, and they were not going to look at the content.

[00:33:37] Speaker 02:
So I think the most that Mr. Panner gets, or Mr. Hyatt, excuse me, gets out of that decision, even if the court were to read it for all that it is worth, is that if the special circumstances determination is subject to review in an APA action, it is only to make sure that the director has, for example, not decreed that all patents are special circumstances, but has identified a discrete subset and will not look

[00:33:59] Speaker 02:
at the underlying contents of that determination.

[00:34:02] Speaker 01:
And you're saying that the director can select any set of circumstances whatsoever?

[00:34:08] Speaker 02:
Well, I think that follows from the committed agency discretion by law, Your Honor.

[00:34:13] Speaker 02:
That is our principal submission.

[00:34:15] Speaker 01:
Doesn't that, in effect, totally negate the first part of the statute which says that the Attenborough shall maintain these things incompetent?

[00:34:27] Speaker 01:
I don't think it would, Your Honor, in the same way that the statute in... It opens up every applicant to what that applicant would certainly argue is arbitrary action by simply by virtue of the fact that the director just selects

[00:34:44] Speaker 01:
On a whim, some class of cases that will be published or some such thing.

[00:34:50] Speaker 02:
Your Honor, on a whim might raise a constitutional question and the Webster versus Doe made clear the constitutional claims are not foreclosed, but let me answer your question.

[00:34:59] Speaker 02:
That sort of hypothetical, of course, comes up in every committed agency discretion by law case.

[00:35:04] Speaker 02:
I mean, there were arguments in Webster versus Doe that this would mean that the director of the CIA could fire any person for any reason with unavailable discretion.

[00:35:11] Speaker 00:
And you know what?

[00:35:12] Speaker 00:
I'd be okay with that, right?

[00:35:13] Speaker 00:
It's the CIA.

[00:35:14] Speaker 00:
It's like you just cannot analogize that Congress intended the PTO to have unfettered discretion when it comes to rejecting patents and analogize that to the CIA and Homeland Security's decision about what is in the interest of national security.

[00:35:28] Speaker 02:
You can't make that analysis.

[00:35:30] Speaker 00:
Please withdraw the analogy.

[00:35:34] Speaker 02:
I appreciate the point, but if I may make what I think is the subsidiary point, which is valid.

[00:35:40] Speaker 02:
The court in that case said,

[00:35:41] Speaker 02:
There is a difference between saying that firing a person, a person may be fired when it is necessary and advisable in the interest of the United States, or what the statute actually said, which is when the director deemed it necessary and advisable in the interest of the United States.

[00:35:56] Speaker 02:
And in so holding, the court invoked the longstanding tradition that we have cited here that is not limited to national security cases.

[00:36:04] Speaker 02:
And furthermore, we don't need to equate

[00:36:08] Speaker 02:
the PTO with the National Security Agency, which, let me be clear, I am not equating the PTO with the National Security Agency.

[00:36:13] Speaker 02:
We don't need to equate the PTO with the National Security Agency to recognize that Congress used in Section 122 a particular locution that it does not use, to my knowledge, anywhere else in the Patent Act and which has a historical tradition attached to it.

[00:36:26] Speaker 00:
Just to be clear, is there any case that you have cited or can point me to which didn't just have a

[00:36:33] Speaker 00:
to the director kind of discretionary allocation, but which had as a predicate a general rule against that.

[00:36:43] Speaker 00:
Because you see for me it's about the structure of the statute and how the structure of this statute does differ quite substantially from every single case I could find where anyone analyzed it and decided it was unreviewable.

[00:36:54] Speaker 00:
In none of those cases could I find an example

[00:36:57] Speaker 00:
where the exception was part of a general rule.

[00:37:01] Speaker 02:
Let me say two quick things on that, and then I'll just move off that point.

[00:37:05] Speaker 02:
The first is, I think the Allman Brothers case from this court does do that, because it provided that the agreements entered by the U.S.

[00:37:12] Speaker 02:
Trade Representative were reviewable, anticipated that they would be reviewed, but provided that a particular determination under that statute was not reviewable.

[00:37:20] Speaker 00:
Secondly, I just think that... No, no, no, no, no.

[00:37:22] Speaker 00:
That's not the same.

[00:37:24] Speaker 00:
that's not an exception to the general rule, that is an exception to reviewability, but that has nothing to do with the merits here.

[00:37:32] Speaker 00:
You see the difference.

[00:37:33] Speaker 02:
Well, I do see the difference, but again, perhaps we're not going to see eye to eye in this, but I think the contemplation of Congress in Section 701 of the APA is that the APA applies, except to the extent that particular questions have been withdrawn from judicial cognizance.

[00:37:49] Speaker 02:
So here, we're not arguing that although the district court, and we've

[00:37:52] Speaker 02:
The district court gave us more than we asked for and said the necessary to effectuate an act of Congress provision was not subject to review either.

[00:38:00] Speaker 02:
We didn't make that argument below and we're not making it here.

[00:38:02] Speaker 02:
The special circumstances provision though is one that is withdrawn from judicial cognizance in our view.

[00:38:08] Speaker 02:
But let me leave that and say, if you think it is subject to review, then I think you ought to apply a filter much like Justice Kagan just did last week and say,

[00:38:16] Speaker 02:
Look, if it is subject to review, it is subject to very deferential review to make sure that the basic... Well, if it is subject to review, wouldn't the APA counsel that the appropriate standard is arbitrary and capricious?

[00:38:27] Speaker 00:
If you want me to follow the APA, shouldn't I go all in on it?

[00:38:31] Speaker 02:
Well, I think that when we ask what is arbitrary or capricious, we still have to apply a substantive filter to decide what makes something arbitrary and what makes it capricious.

[00:38:41] Speaker 02:
The State Farm case, which sets out the basic meaning of arbitrary and capricious review in the Supreme Court, says that the question is whether you've considered the relevant statutory factors and considered the relevant facts.

[00:38:52] Speaker 02:
Well, we don't have any relevant statutory factors.

[00:38:54] Speaker 02:
That's part of our point.

[00:38:56] Speaker 02:
What is special is not a term of art in the Patent Act.

[00:38:59] Speaker 02:
It's nowhere defined by Congress.

[00:39:01] Speaker 02:
And one thing it doesn't say is the standard that Mr. Panner wants us to discuss this morning.

[00:39:05] Speaker 02:
It doesn't say balance the needs for disclosure against the needs for

[00:39:08] Speaker 02:
confidentiality, it doesn't say it has to fulfill some particular statutory requirement, it just says special.

[00:39:14] Speaker 02:
And if we're going to review, of course our principal submission is that partly for that reason it's not subject to review, but if we're going to review special circumstances, we should be doing it like Justice Kagan just explained in the mock mining case, applying the question, did the director identify something called special circumstances that is perhaps smaller than the whole?

[00:39:34] Speaker 02:
Beyond that, there isn't really a basis in the act for asking anything more.

[00:39:39] Speaker 02:
On the merits, just as I may, I don't think Mr. Hyatt has explained that his prosecution history practices, his prosecution practices are, I think the phrase he uses in his brief is unusual.

[00:39:53] Speaker 02:
We can debate whether that's an understatement.

[00:39:55] Speaker 02:
It certainly is within the discretion of the director to deem them special and make sure that the public has access to

[00:40:03] Speaker 02:
the basis on which the agency examines his applications and his responses there too.

[00:40:07] Speaker 00:
Can I ask you another, I know you want to sit down, but let me ask you another question.

[00:40:11] Speaker 00:
How could there be 115,000 claims that were filed prior to June 8th of 95?

[00:40:19] Speaker 00:
They're still kicking around.

[00:40:21] Speaker 00:
I don't understand.

[00:40:23] Speaker 02:
Your Honor, I would welcome the chance to litigate that question in open court.

[00:40:27] Speaker 02:
I am constrained in what I can say on that score.

[00:40:30] Speaker 00:
I can tell the court... Well, the record suggests that some of the applications may have been stayed while others went through board or federal circuit review.

[00:40:37] Speaker 00:
As far as I know, we're not that slow.

[00:40:39] Speaker 00:
20 years is not my fault, right?

[00:40:42] Speaker 02:
No, no.

[00:40:43] Speaker 02:
We don't suggest it's the court's fault.

[00:40:44] Speaker 02:
And I don't suggest that PTO is entirely blameless on this, but I think that if you

[00:40:48] Speaker 02:
look at the requirements, one of which, as Your Honor noted, appears at page 162 of the appendix.

[00:40:52] Speaker 00:
Well, Mr. Hyatt is responsible, and there is some suggestion, and I won't go into details, but there is some suggestion of requirements that there were some amendments and other things that may have been a bit of a moving target.

[00:41:03] Speaker 00:
So why aren't you nailing him to the wall with prosecution latches?

[00:41:07] Speaker 00:
We handed it to you.

[00:41:09] Speaker 00:
Why aren't you using it?

[00:41:10] Speaker 00:
Why aren't we seeing those cases?

[00:41:12] Speaker 00:
Why are you still kicking around over this procedural stuff?

[00:41:15] Speaker 00:
And why don't you just knock these things out so we don't have to deal with all these procedural things?

[00:41:18] Speaker 02:
No one wants to more than we do, Your Honor.

[00:41:20] Speaker 02:
We also are aware that we have a need to justify under this court's precedence the actions that we take.

[00:41:25] Speaker 02:
That's part of the reason the requirements are so extensive and detailed in this case.

[00:41:28] Speaker 00:
Do you think you couldn't justify

[00:41:32] Speaker 00:
The fact that the net location was pending from June of 95 and had 115,000 claims and moving targets.

[00:41:40] Speaker 00:
Are you suggesting to me you don't think you could justify a case for prosecution?

[00:41:43] Speaker 02:
Your Honor, whatever you read in the case, please do not say that we don't think that is true.

[00:41:48] Speaker 02:
We'll take whatever steps we can.

[00:41:51] Speaker 02:
We have assigned 14 full-time examiners to deal with Mr. Hyatt's applications.

[00:41:55] Speaker 02:
And we are, I think if you look... Poor 14 people.

[00:41:57] Speaker 00:
How could 14 people do 115,000 claims?

[00:42:01] Speaker 00:
This is why they're going to get a big bummer.

[00:42:03] Speaker 00:
This is... I have to meet whatever quota they've got set for like the next 10 years.

[00:42:09] Speaker 02:
I fully support that, Your Honor.

[00:42:10] Speaker 01:
The office for some reason, the office for some reason shies away from the undue multiplicity

[00:42:19] Speaker 01:
rejection.

[00:42:19] Speaker 01:
And thank you for raising this point, your honor.

[00:42:21] Speaker 01:
Because I can remember 50 years ago when I was an examiner, long time, undue multiplicity was a rather frequently used rejection.

[00:42:32] Speaker 01:
Somebody came in with 30, 40, 50 claims and they were very much alike.

[00:42:39] Speaker 01:
They would be rejected as unduly multiplied and at least there would be some interaction.

[00:42:44] Speaker 01:
I agree with you, your honor.

[00:42:46] Speaker 02:
Without committing the PTO to anything,

[00:42:48] Speaker 02:
part of the point of the requirements is to make that sort of rejection possible.

[00:42:51] Speaker 02:
If you look at the page 212 of the Joint Appendix, the agency explains, citing cases like Flint and others, where this court and its predecessor have said that the agency didn't adequately justify an undue multiplicity rejection.

[00:43:07] Speaker 02:
Here we are saying, these sure seem unduly multiplicitous to us.

[00:43:12] Speaker 02:
Explain why we're wrong.

[00:43:13] Speaker 02:
And we obviously have the power to ask for that,

[00:43:16] Speaker 02:
And if the answer is unsatisfactory and I don't want to prejudge it, then it may well be that the PTO chooses to reject on that ground.

[00:43:23] Speaker 02:
But what Mr. Hyatt can't do is say, you know, you can't include the claims from copending applications to make out your undue multiplicity objection because that violates section 122.

[00:43:33] Speaker 00:
Okay, so indulge me.

[00:43:34] Speaker 00:
Judge Learned at Hand in 1915, nobody cited this to me, but it's one of my favorite quotes and I don't get to use it very often, but boy, it actually applies here.

[00:43:42] Speaker 00:
The court should discourage practice which permits 48 claims on a simple and perfectly obvious machine like this.

[00:43:49] Speaker 00:
Such claims violate the very purpose of any claims at all, which is to define the forbidden field.

[00:43:54] Speaker 00:
In such a waste of abstract verbiage, it is quite impossible to find any guide.

[00:43:58] Speaker 00:
Here's my favorite part.

[00:44:00] Speaker 00:
It takes the scholastic ingenuity of a St.

[00:44:03] Speaker 00:
Thomas with the patience of a yogi to decipher their meaning.

[00:44:07] Speaker 02:
I would love to have the opportunity to file a brief in which I quoted that case in the mirror.

[00:44:10] Speaker 02:
It is regrettably for me not this case, but I sympathize with the sentiment, and it is the reason why we are taking what we think are very appropriate examination steps to bring this arduous process to a close.

[00:44:24] Speaker 01:
We've got to bring this argument to a close.

[00:44:25] Speaker 01:
I realize that some of our decisions may have discouraged the Patent Office from making these undue multiplicity rejections, but I think it's something that certainly should be revisited.

[00:44:39] Speaker 02:
And the agencies.

[00:44:40] Speaker 02:
requirements and responses there to that end should be available to the public.

[00:44:45] Speaker 00:
Mr. Panner, you have some rebuttal time.

[00:44:47] Speaker 00:
We'll definitely give him this full five minutes and if you really feel the need to go over, I'll certainly let you do that because we did this with your opposing counsel.

[00:44:59] Speaker 03:
I'm grateful, Your Honor.

[00:45:02] Speaker 03:
Let me start out by suggesting that Mr. Freeman's attempt to

[00:45:10] Speaker 03:
portray the prosecution practices here in a way that is unfavorable, and I understand that he has ample fodder in the record for doing that, actually underscores exactly why this court should be careful in this case to ensure that the PTO has justified the disclosure that it threatens here.

[00:45:33] Speaker 03:
Mr. Hyatt appears to be in the office a disfavored applicant for whatever set of reasons, his fault, not his fault.

[00:45:42] Speaker 03:
He would violently disagree with the idea that the delay in these applications can be laid at his door.

[00:45:52] Speaker 03:
An applicant is required by the office to respond to office actions within three months

[00:45:59] Speaker 03:
These applications have been suspended 2,000 times for a total of 1,000 years by the office.

[00:46:07] Speaker 03:
So the idea that this is to be laid at his door, and that's exactly why the PTO could not do what Your Honor suggested, because the PTO, it's been Mr. Hyatt's consistent effort to get applications adjudicated

[00:46:24] Speaker 03:
that is demonstrated by the record that will eventually emerge.

[00:46:29] Speaker 01:
But you have to agree that the fact that he is filing hundreds and hundreds of claims, many of which are seemingly identical, is not aiding the Patent Office in getting these things examined.

[00:46:46] Speaker 03:
I understand that, Your Honor.

[00:46:47] Speaker 03:
I don't think that I would gainsay the idea that this is a challenge for the office and that there may be, it is certainly

[00:46:54] Speaker 03:
to be hoped that a process can get underway that will lead to resolution of this because that's in Mr. Hyatt's interest and the government says that it's in its interest as well.

[00:47:06] Speaker 01:
Part of the problem is the fact that the Patent Office, as I see it, is trying in these requirements that they issued, is trying to sort of inform Mr. Hyatt why they're having such a problem and why they need to sort this all out.

[00:47:25] Speaker 01:
And, you know, maybe from Mr. Hyatt's point of view and this confidentiality issue, it would have been better not to put all these claims in these requirements.

[00:47:35] Speaker 01:
But I think the Patent Office was doing that only because they felt if they didn't spell out what the problem is and what the Patent Office is facing,

[00:47:46] Speaker 01:
that they wouldn't get any kind of, they wouldn't make any progress with Mr. Hyatt.

[00:47:51] Speaker 03:
And I absolutely appreciate that, Your Honor, and we have not taken issue with the requirements, the form of the requirements, what is being, in this case.

[00:48:02] Speaker 03:
We assume that the requirements are going to be there.

[00:48:05] Speaker 03:
The issue that we have

[00:48:08] Speaker 03:
is simply that by virtue of operation of a regulation that is expressly subject to the statutory duty, there is information, none of this information is about an issue patent, okay?

[00:48:21] Speaker 03:
I do want to emphasize that the error, I think that in the, well, Mr. Freeman said two things that really

[00:48:34] Speaker 03:
made my ears prick up.

[00:48:36] Speaker 03:
Because one of them was when he was discussing, Your Honor, with Judge Moore about this question of there's a right and then exceptions.

[00:48:46] Speaker 03:
And he said, well, the statute says that information may be disclosed.

[00:48:51] Speaker 03:
The statute doesn't say it's not an authorization to the office to disclose information.

[00:48:57] Speaker 03:
It's a grant of a right with limited exceptions.

[00:49:00] Speaker 03:
But that then goes over to the second

[00:49:03] Speaker 03:
what I believe to be misstatement in his argument that I think really should give the court pause.

[00:49:09] Speaker 00:
He said, the public is entitled to that information to see how Mr. Hyatt... Well, to be clear, I understood his argument as being the public is entitled to the information, meaning if there is a patent out there,

[00:49:25] Speaker 00:
that Mr. Hyatt may assert against someone, that the public is entitled to the entire chain of the prosecution of that patent, including the parent and anything that happened in that parent.

[00:49:36] Speaker 00:
And I think that that is true.

[00:49:37] Speaker 00:
It is unequivocal, and I don't think that you would disagree with that.

[00:49:42] Speaker 03:
There is no assertion, Your Honor, in this circumstance, the assertion by Mr. Freeman that there was

[00:49:52] Speaker 03:
that there is a potential infringement claim out there is a new one.

[00:49:55] Speaker 03:
It wasn't asserted in the brief.

[00:49:56] Speaker 03:
We didn't have an opportunity to respond to it.

[00:49:58] Speaker 03:
But the point is that there is a regulation, after all, which says that in a circumstance where there's a parent application, someone can pay a fee and get the application file.

[00:50:14] Speaker 03:
That is, in fact, what 1.14

[00:50:19] Speaker 03:
Romanette 5 says, I'm going to forget all the different Romanettes, but the point is the regulation that they rely on, which says that the parent should be made available, says it's made available if someone comes and pays a fee.

[00:50:32] Speaker 03:
So anybody who says, hey, I'm being sued for infringement, they can pay a fee.

[00:50:40] Speaker 03:
But what the government cannot plausibly claim is that there's a patent out there that is not expired.

[00:50:48] Speaker 03:
as to which this information has any relevance at all.

[00:50:52] Speaker 03:
And there's none of the claims that are at issue have issued in a patent.

[00:50:59] Speaker 03:
And so that's why what the court ought to be doing, I agree with your honor, that the arbitrary and capricious standard in light of the statutory purpose and what has been in other statutory contexts is adopted as a plain reading of these sorts of exceptions.

[00:51:18] Speaker 03:
is to require the office to make a showing that the disclosure that is contemplated is tailored to address, I've used the word tailored, which isn't quite the word that I want, but that the disclosure that's contemplated is intended and reasonably will serve an interest under the statute, which I submit that when you peel away

[00:51:47] Speaker 03:
The generality about the importance of disclosure with regard to the scope of issue patents is not satisfied here.