Hyatt v. United States Patent & Trademark Office , 797 F.3d 1374 ( 2015 )

United States Court of Appeals
for the Federal Circuit
______________________
GILBERT P. HYATT,
Plaintiff-Appellant
v.
UNITED STATES PATENT AND TRADEMARK
OFFICE, MICHELLE K. LEE, DIRECTOR, U.S.
PATENT AND TRADEMARK OFFICE, IN HER
OFFICIAL CAPACITY,
Defendants-Appellees
______________________
2014-1596
______________________
Appeal from the United States District Court for the
Eastern District of Virginia in No. 1:13-cv-01535-CMH-
TRJ, Senior Judge Claude M. Hilton.
______________________
Decided: August 20, 2015
______________________
AARON M. PANNER, Kellogg, Huber, Hansen, Todd,
Evans & Figel, PLLC, Washington, DC, argued for plain-
tiff-appellant. Also represented by MELANIE L. BOSTWICK.
MARK R. FREEMAN, Appellate Staff, Civil Division,
United States Department of Justice, Washington, DC,
argued for defendants-appellees. Also represented by
SCOTT R. MCINTOSH, JOYCE R. BRANDA; NATHAN K.
KELLEY, BRIAN THOMAS RACILLA, MOLLY R. SILFEN, Office
2 HYATT v. LEE
of the Solicitor, United States Patent and Trademark
Office, Alexandria, VA; DANA J. BOENTE, ANTONIA
KONKOLY, Office of the United States Attorney for the
Eastern District of Virginia, Alexandria, VA.
______________________
Before MOORE, MAYER, and LINN, Circuit Judges.
MOORE, Circuit Judge.
Gilbert P. Hyatt appeals from the district court’s deci-
sion that it lacked subject matter jurisdiction over his
Administrative Procedure Act (“APA”) claims against the
Patent and Trademark Office (“PTO”) and its acting
Director under 5 U.S.C. § 701(a)(2) and, alternatively,
that the PTO would have been entitled to summary
judgment for these claims. For the reasons discussed
below, we affirm the district court’s alternative holding
that the PTO would have been entitled to summary
judgment.
BACKGROUND
Mr. Hyatt is the named inventor on at least 75 issued
patents and nearly 400 pending patent applications, all of
which were filed on or before June 8, 1995. 1 Because
1 The number and filing dates of Mr. Hyatt’s appli-
cations and the total number of his pending claims are
publicly available. See Hyatt v. U.S. Patent & Trademark
Office, No. 1:13-CV-1535, 2014 WL 2446176, at *1 (E.D.
Va. May 29, 2014); see also Innovation Act: Hearing
Before H. Comm. on the Judiciary, 113th Cong. 231–44
(2014), available at http://judiciary.house.gov/_cache/files/
dbb6055f-dffd-4b88-ab5e-20fc7767ed06/113-58-a85281.pdf
(letter published by the House Judiciary Committee
identifying by inventor name, filing date, and serial
HYATT v. LEE 3
Mr. Hyatt’s pending applications were filed before the
effective date of the Uruguay Round Agreements Act, any
patent issuing from the pending applications will have a
term of seventeen years from the date of issuance. See 35
U.S.C. § 154 (1994); see also Uruguay Round Agreements
Act, Pub. L. No. 103-465, § 532(a), 108 Stat. 4809, 4983–
85 (1994). Each of Mr. Hyatt’s pending applications
incorporates by reference, and claims the benefit of priori-
ty from, a network of earlier-filed applications dating back
to the 1970s.
Mr. Hyatt’s pending applications feature extremely
large claim sets, containing, on average, 116 independent
claims and 299 total claims. The PTO estimated that
these applications include 45,000 independent claims and
115,000 total claims when combined. Despite the re-
markable number of claims, these applications consist of
only 12 distinct specifications. Application number
05/849,812 illustrates the complexity of Mr. Hyatt’s web
of pending applications. The ’812 application claims
priority from 20 earlier-filed applications, and is itself the
parent of 112 continuing applications. It contains 130
independent claims and 315 total claims, and is one of 18
applications sharing a common specification, which to-
gether contain 2,160 independent claims.
In August 2013, the PTO began to issue formal office
actions, called “Requirements,” corresponding to
Mr. Hyatt’s “families” of applications having a common
specification. Each Requirement addresses one family
and is copied into the file of each application within the
family. Generally, each Requirement requires Mr. Hyatt
to: 1) select a number of claims from that family for
prosecution, not to exceed 600 absent a showing that more
number the 482 pending patent applications filed before
June 8, 1995).
4 HYATT v. LEE
claims are necessary; 2) identify the earliest applicable
priority date and supporting disclosure for each selected
claim; and 3) present a copy of the selected claims to the
PTO. Although each Requirement is entered in the
prosecution history of a particular patent application, it
also contains information about other patent applications
in that family. Much of this information is included in the
context of explaining the PTO’s decision to impose on
Mr. Hyatt the obligations outlined in the Requirements.
For example, the Requirement for the ’812 application
contains information about pending patent applications
from the same family as the ’812 application. It identifies
the filing date and serial number of many other pending
applications, including all of the applications in the same
family as the ’812 application. It describes the priority
relationships between the applications in the family and
with other patent applications. It lists the number of
total claims and independent claims of every application
in the family, as well as the total estimated number of
claims in all of Mr. Hyatt’s applications. It describes the
prosecution history of other applications in the family,
including information about the substance of several
amendments to the applications. And, in a table that
spans 18 pages, it quotes the full text of dozens of claims
from applications in the family.
The prosecution histories of most of Mr. Hyatt’s pend-
ing applications include a Requirement corresponding to
that application’s family. In the ordinary course of exam-
ination, the prosecution history of an application remains
confidential until the application itself issues as a patent
or an issued patent claims priority from the application. 2
2 35 U.S.C. § 122(b)(1)(A), which provides for the
publication of certain patent applications 18 months after
filing, was enacted by Congress in 1999 and only applies
HYATT v. LEE 5
See 37 C.F.R. § 1.11(a) (“Rule 11(a)”) (covering the publi-
cation of PTO records and files); id. § 1.14(a)(1)(v) (“Rule
14(a)(1)(v)”) (covering the disclosure of parent applica-
tions). Thus, the Requirements attached to pending
applications that are not parents to issued patents will
remain confidential. However, in a few cases, including
the ’812 application, an issued patent claims priority from
one of Mr. Hyatt’s pending applications. 3 Requirements
copied into the prosecution history of these applications
will become publicly available in the ordinary course of
examination, pursuant to Rule 14(a)(1)(v). 4 The disclo-
sure of these Requirements will result in the disclosure of
otherwise-confidential information about other, non-
public applications.
In response to the PTO’s issuance of the Require-
ments, Mr. Hyatt filed a series of petitions at the PTO
seeking to expunge the confidential information in the
Requirements. In these petitions, Mr. Hyatt relies on 35
U.S.C. § 122(a), 5 which provides that the PTO shall 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 Mr. Hyatt’s petitions, declaring it
“necessary for proper examination of [Mr. Hyatt’s] appli-
to patent applications filed on or after November 9, 2000.
The parties agree that this section is inapplicable to
Mr. Hyatt’s pending patent applications, which were all
filed before June 8, 1995.
3 Other examples include application numbers
06/848,017; 07/493,061; 07/763,395; and 08/285,669.
4 At Mr. Hyatt’s request, the PTO has agreed to
keep these Requirements confidential pending the out-
come of this litigation.
5 As discussed supra note 2, § 122(b)(1)(A) is inap-
plicable to Mr. Hyatt’s pending patent applications.
6 HYATT v. LEE
cations under 35 U.S.C. § 131” to include the otherwise-
confidential information in the Requirements. J.A. 234.
She also stated that “the circumstances surrounding these
applications, including the number of related applications
filed, the number of claims filed, and the number of
applications to which benefit of priority is claimed, qualify
as ‘special circumstances’ under section 122.” Id. She
wrote that the Requirements attached to already-
published applications that were parents to issued pa-
tents (including the ’812 application) would be made
public within 60 days.
Shortly afterwards, Mr. Hyatt filed claims in the
Eastern District of Virginia against the PTO and its
acting Director, in her official capacity, under the APA,
5 U.S.C. §§ 702, 706. Mr. Hyatt alleged that disclosure of
the Requirements would violate § 122(a) by disclosing
confidential information about Mr. Hyatt’s non-public
patent applications.
On the PTO’s motion, the district court dismissed
Mr. Hyatt’s complaint for lack of subject matter jurisdic-
tion under 5 U.S.C. § 701(a)(2), holding that there was no
“judicially manageable standard of review” under which it
could assess the PTO’s decision to issue the Require-
ments. Hyatt, 2014 WL 2446176, at *3. In the alterna-
tive, the district court held that § 122 did not prohibit the
disclosure of the Requirements, such that the PTO would
be entitled to summary judgment. First, it reasoned that
the information in the Requirements was necessary to
carry out the provisions of an Act of Congress, particular-
ly § 131, which provides that the Director “shall cause an
examination to be made” of properly filed patent applica-
tions. Id. at *5–6. Second, it found that there was no
genuine dispute that the “extraordinary” nature and
prosecution history of Mr. Hyatt’s applications constituted
“special circumstances,” warranting publication of the
HYATT v. LEE 7
Requirements. Id. at *6. Mr. Hyatt appealed. We have
jurisdiction under 28 U.S.C. § 1295(a)(1).
DISCUSSION
We review a district court’s decision to dismiss for
lack of subject matter jurisdiction de novo. Pennington
Seed, Inc. v. Produce Exch. No. 299, 457 F.3d 1334, 1338
(Fed. Cir. 2006). We review a district court’s grant of
summary judgment de novo, under the same standards
applied by the district court. Star Fruits S.N.C. v. United
States, 393 F.3d 1277, 1281 (Fed. Cir. 2005). In an APA
challenge, we consider whether the PTO’s actions were
arbitrary, capricious, an abuse of discretion, or otherwise
not in accordance with law. Id. (citing 5 U.S.C. § 706(2)).
Mr. Hyatt argues that the PTO’s publication of the
Requirements would violate § 122(a), because it would
result in the disclosure of confidential information about
his non-public pending applications. The PTO argues
that § 122(a), which allows the Director to disclose infor-
mation concerning pending patent applications where
“necessary to carry out the provisions of an Act of Con-
gress or in such special circumstances as may be deter-
mined by the Director,” commits to the Director’s
discretion the authority to determine whether “special
circumstances” exist. The PTO asserts that agency de-
terminations of this type lie outside of the scope of the
APA. Alternatively, it argues that the Director correctly
determined that “special circumstances” exist and that
the disclosure of the Requirements is necessary to carry
out the provisions of an Act of Congress.
I. Reviewability of Director’s “Special Circumstances”
Determination
There is a “strong presumption” favoring judicial re-
view of agency actions. Bowen v. Mich. Acad. of Family
Physicians, 476 U.S. 667, 670 (1986). However, this
8 HYATT v. LEE
presumption can be rebutted if “a statute’s language or
structure demonstrates that Congress wanted [the] agen-
cy to police its own conduct.” Mach Mining, LLC v.
E.E.O.C., 135 S. Ct. 1645, 1651 (2015) (citing Block v.
Cmty. Nutrition Inst., 467 U.S. 340, 349 (1984)). For
example, § 701(a)(2) of the APA precludes judicial review
where “agency action is committed to agency discretion by
law.” 5 U.S.C. § 701(a)(2). This “very narrow exception”
to the presumption of judicial review is applicable only “in
those rare instances where ‘statutes are drawn in such
broad terms that in a given case there is no law to apply.’”
Citizens to Pres. Overton Park, Inc. v. Volpe, 401 U.S. 402,
410 (1971) (quoting S. Rep. No. 79-752, at 26 (1945)).
Section 122(a) lays out a broad rule prohibiting the
disclosure of patent applications, subject to two excep-
tions:
Applications for patents shall be kept in confi-
dence by the [PTO] and no information concerning
the same given without authority of the applicant
or owner unless necessary to carry out the provi-
sions of an Act of Congress or in such special cir-
cumstances as may be determined by the Director.
Thus, applications may be disclosed only if (1) the disclo-
sure is “necessary to carry out the provisions of an Act of
Congress” or (2) there are “such special circumstances as
may be determined by the Director.” § 122(a).
The PTO argues that Congress vested consideration of
the second of these two exceptions—the “special circum-
stances” inquiry—in the Director alone, thereby commit-
ting it to agency discretion by law. According to the PTO,
this statutory language “fairly exudes deference” and
“foreclose[s] the application of any meaningful judicial
standard of review.” Appellees’ Br. 23 (quoting Webster v.
Doe, 486 U.S. 592, 600 (1988) (alterations in Appellees’
Br.)). The PTO also argues that there is no meaningful
HYATT v. LEE 9
standard for reviewing the Director’s determination that
particular circumstances qualify as special. It notes, for
example, that § 122(a) does not require the Director to
consider particular factors, find specific facts, or create an
evidentiary record. Thus, the PTO concludes that
§ 701(a)(2) of the APA precludes judicial review of the
Director’s determination that “special circumstances”
justify the disclosure of certain Requirements.
A. Language and Structure of § 122(a)
The structure of § 122(a) reflects Congress’ intent to
protect the confidentiality of patent applications. The
statute begins by stating that “[a]pplications for patents
shall be kept in confidence by the [PTO] and no infor-
mation concerning the same given . . . .” § 122(a). The
“shall” makes this language mandatory, not discretionary.
Mach Mining, 135 S. Ct. at 1651; Nat’l R.R. Passenger
Corp. v. Morgan, 536 U.S. 101, 109 (2002). The statute
then lays out only two exceptions to its general bar on
disclosure. The first exception permits disclosure only
when it is “necessary to carry out the provisions of an Act
of Congress.” § 122(a). Because this exception is limited
to disclosures that are “necessary” to carry out a Congres-
sional mandate, it is narrow and affords no agency discre-
tion. In light of this statutory structure, it would be odd if
the second exception was broad, sweeping, or unbounded.
The language of the second exception supports our conclu-
sion that the PTO’s determination is reviewable. The
PTO is not free to disclose confidential information when-
ever it chooses, or at its discretion; rather, it may disclose
confidential information only in “such special circum-
stances as may be determined by the Director.” Id. We
conclude that the structure and language of this statutory
section indicate that Congress intended the exceptions to
confidentiality to be narrow and reviewable.
10 HYATT v. LEE
Where courts have previously held laws unreviewable
under § 701(a)(2), those laws differed from § 122(a) in
important ways. While the language of the statute at
issue in Webster is close to the language of § 122(a), there
are significant distinctions. In Webster, the Supreme
Court considered § 102(c) of the National Security Act
(“NSA”), which permitted the CIA Director, “in his discre-
tion,” to terminate an employee “whenever he shall deem
such termination necessary or advisable in the interests
of the United States.” 486 U.S. at 600 (quoting 50 U.S.C.
§ 403(c) (1982)). Unlike § 102(c) of the NSA, § 122(a) does
not implicate the nation’s security. Cf. id. at 601 (noting
that the overall history and structure of the NSA exhibit
its “extraordinary deference to the Director,” and that
“the [CIA’s] efficacy, and the Nation’s security, depend in
large measure on the reliability and trustworthiness of
the Agency’s employees”). Congress often grants an
agency acting in the interest of national security more
discretion, so that decision-makers at the agency are able
to act in ways that will best protect the safety of the
public. Moreover, unlike the statute at issue in Webster,
§ 122(a) does not “exude[] deference.” 486 U.S. at 600.
Rather, § 122(a) lays out a broad and mandatory prohibi-
tion on the disclosure of patent applications, subject to
narrow exceptions. And the “special circumstances”
exception does not permit the Director to disclose applica-
tions whenever she deems such disclosure “advisable,” as
with the statute in Webster, but only if she determines
that there are “special circumstances.”
In other cases, the laws found unreviewable have also
lacked the express prohibition so key to the structure of
§ 122(a). In Almond Bros. Lumber Co. v. United States,
we found the United States Trade Representative’s
(“USTR”) determination that certain trade benefits were
“satisfactory” was not reviewable under § 701(a)(2). 721
F.3d 1320, 1325–27 (Fed. Cir. 2013). 19 U.S.C. § 2411
HYATT v. LEE 11
authorized the USTR to enter into agreements with
foreign countries that, inter alia, “provide[d] the United
States with compensatory trade benefits that . . . are
satisfactory to the [USTR].” 19 U.S.C. § 2411(c)(1)(D).
Section 2411 is not structured such that the USTR is
expressly prohibited from entering agreements with
foreign countries, subject to certain exceptions, as § 122(a)
is with respect to the disclosure of patent applications.
Similarly, § 122(a) differs from the regulation at issue in
Tamenut v. Mukasey, which provided that the Board of
Immigration Appeals (“BIA”) “may at any time reopen or
reconsider on its own motion any [appeal] in which it has
rendered a decision. . . . The decision to grant or deny a
motion to reopen or reconsider is within the discretion of
the [BIA], subject to the restrictions of this section.” 521
F.3d 1000, 1002 (8th Cir. 2008) (en banc) (quoting
8 C.F.R. § 1003.2(a)). This regulation committed the
decision to reopen an appeal entirely to the BIA’s discre-
tion; it did not lay out an affirmative rule with a discre-
tionary exception, as § 122(a) does. Id. And the language
of the regulation—which permits the BIA to reopen an
appeal “at any time,” and expressly states that such a
decision is “within the discretion of the [BIA],” is more
discretionary on its face than § 122(a). 6 Id.
Finally, § 122(a) is distinguishable from 49 U.S.C.
§ 44702(d) (1997), which was found unreviewable in
Steenholdt v. FAA, 314 F.3d 633, 638 (D.C. Cir. 2003).
Section 44702(d)(2) permits the FAA Administrator to
revoke an aircraft inspector’s designation “at any time for
any reason the Administrator considers appropriate.”
6 The BIA’s decision to limit its power to grant mo-
tions to reopen appeals to “exceptional situations” does
not make the language of the regulation irrelevant.
Tamenut, 521 F.3d at 1004–05.
12 HYATT v. LEE
There is no express statutory bar on revoking an aircraft
inspector’s designation, as exists in § 122(a). Further-
more, the language of § 44702(d)(2) is broad and does not
require any specific finding or determination, unlike
§ 122(a), which requires a determination that “special
circumstances” exist. Finally, like the statute at issue in
Webster, granting the FAA broad discretion to revoke an
aircraft inspector’s designation promotes the safety of the
public; there is no similar public safety interest at play
here.
Were we to accept the PTO’s argument, the PTO could
shield virtually any disclosure from judicial review, so
long as the PTO claimed there were “special circumstanc-
es.” Indeed, the PTO conceded at oral argument that if
§ 122(a) was unreviewable the PTO could disclose essen-
tially any information about any patent application, with
no review and no recourse, so long as there was no consti-
tutional violation. See Oral Argument at 30:30–37,
34:40–57, available at http://oralarguments.cafc.
uscourts.gov/default.aspx?fl=2014-1596.mp3. “We need
not doubt the [PTO’s] trustworthiness, or its fidelity to
law, to shy away from that result. We need only know—
and know that Congress knows—that legal lapses and
violations occur, and especially so when they have no
consequence.” Mach Mining, 135 S. Ct. at 1652–53.
Congress did not intend for the exception to swallow the
rule.
B. Statutory Standard for Reviewing the Director’s
Determination
The PTO also argues that § 122(a) is not reviewable
because it contains no meaningful standard for reviewing
the Director’s determination that particular circumstanc-
es qualify as special. It is true that § 122(a) does not lay
out a specific process or outline specific considerations for
determining the existence of “special circumstances.”
HYATT v. LEE 13
However, we do not think this means “there is no law to
apply,” such that the statute is unreviewable. Overton
Park, 401 U.S. at 410. The second exception to § 122(a)
permits review “in such special circumstances as may be
determined by the Director.” § 122(a). At the minimum,
not taking into account the rest of § 122(a), this language
indicates there is one concrete, reviewable requirement:
the Director must determine that there are “special
circumstances.” The lack of specific factors outlined in
the statute does not mean that the Director can disclose
information without such a finding being reviewable. See
Mach Mining, 135 S. Ct. at 1652. We reject the PTO’s
argument that the lack of enumerated factors means that
the statute is unreviewable.
C. Scope of Review
Having found the PTO’s “special circumstances” de-
termination reviewable, we must next consider the scope
of that review. Unsurprisingly, the PTO and Mr. Hyatt
dispute the extent of our review. At oral argument, the
PTO relied on Mach Mining to argue that our review
should be limited to the bare minimum required by
§ 122(a)—“that the Director has, for example, not decreed
that all patents are special circumstances, but has identi-
fied a discrete subset,” without any consideration of the
merits of the Director’s determination. Oral Argument at
33:53–34:03. Mr. Hyatt disagrees, arguing instead that
the PTO must show that “disclosure is necessary to serve
an important statutory or public interest.” Appellant’s
Br. 33. We hold that the proper scope of review lies
somewhere between these two extremes. The PTO must
not only determine that special circumstances exist, but
also that the special circumstances justify the specific
content to be disclosed. We review this determination for
abuse of discretion.
14 HYATT v. LEE
In Mach Mining, the Supreme Court considered the
extent to which courts could review the EEOC’s informal
conciliation process. 135 S. Ct. at 1653–56. In certain
circumstances, the EEOC is required to “endeavor” to
resolve employment discrimination complaints through
“informal methods of conference, conciliation, and persua-
sion.” 42 U.S.C. § 2000e-5(b). Only if the EEOC is “una-
ble to secure from the respondent a conciliation
agreement acceptable to the [EEOC]” itself may it sue the
employer. Id. § 2000e-5(f)(1). Noting that the EEOC has
extensive deference in how it conducts the conciliation
process, including discretion over “the pace and duration
of conciliation efforts, the plasticity or firmness of its
negotiating positions, and the content of its demands for
relief,” the Supreme Court held that judicial review over
these considerations “is not to enforce the law Congress
wrote, but to impose extra procedural requirements. Such
judicial review extends too far.” Mach Mining, 135 S. Ct.
at 1654–55. Mach Mining stands for the proposition that,
when a statute provides an agency with “wide latitude” in
an action, the scope of review over that action may be
narrower. Id. at 1652.
The scope of review proposed by the PTO at oral ar-
gument—that our review of the PTO’s “special circum-
stances” determination is limited to ensuring that the
PTO has disclosed only a subset of all pending applica-
tions—is too narrow. See Oral Argument at 33:53–34:03.
We do not think § 122(a), with its mandatory bar on
disclosure and its two narrow exceptions, exudes discre-
tion, as the PTO argues. Under the PTO’s proposed
standard, we would be required to affirm any disclosure
by the PTO without considering the merits of the PTO’s
determination, so long as there was no constitutional
violation and so long as the PTO disclosed only a subset of
all pending applications. Under this standard, the PTO
can easily evade § 122(a)’s affirmative bar on disclosure.
HYATT v. LEE 15
We will not interpret the PTO’s discretion to determine
that special circumstances exist so broadly as to make the
rest of § 122(a) irrelevant. And, unlike in Mach Mining,
further review does not conflict with or contradict other
statutory requirements. See 135 S. Ct. at 1655.
Mr. Hyatt, by contrast, seeks too much when he ar-
gues the disclosure of the confidential material must be
necessary to serve an important statutory or public inter-
est. Nothing in the text of § 122(a) indicates that the
Director’s “special circumstances” determination must be
driven by some statutory or public interest. To the con-
trary, the first statutory exception in § 122(a)—that
disclosure is “necessary to carry out the provisions of an
Act of Congress”—would be rendered superfluous under
this interpretation.
Section 122(a) lays out a general prohibition against
disclosure; any determination by the Director that special
circumstances exist must be made in light of this bar
against disclosure. The special circumstances must
justify the otherwise-prohibited disclosure of confidential
information. This means that the information that is
disclosed must be linked to the “special circumstances”
justifying the disclosure. We review for abuse of discre-
tion the Director’s determination that special circum-
stances exist, and that such special circumstances justify
the disclosure of otherwise-confidential information. See
5 U.S.C. § 706(2); Star Fruits, 393 F.3d at 1281.
II. “Special Circumstances” Determination
Having found the Director’s “special circumstances”
determination reviewable under the APA, we next consid-
er whether the Director abused her discretion under the
standard discussed above. We agree with the district
court that the Director did not abuse her discretion when
she found that special circumstances justified the PTO’s
16 HYATT v. LEE
disclosure of confidential information in the Require-
ments.
The PTO issued the Requirements because of Mr. Hy-
att’s “unusually large number of duplicative and overlap-
ping applications, with such a large number of redundant
claims.” J.A. 236. With more than 115,000 total claims
spread out among only 12 distinct specifications, each
family of applications has an average of 9,583 pending
claims. The asserted priority relationships between
Mr. Hyatt’s applications are complex, with numerous
overlapping applications. As the district court wrote,
“[t]he Administrative Record confirms that the circum-
stances of [Mr. Hyatt’s] patent applications and his prose-
cution history are extraordinary.” Hyatt, 2014 WL
2446176, at *6. These circumstances are not just spe-
cial—they are unique. We are aware of no other applicant
with the same volume of claims as Mr. Hyatt, where those
claims were filed before June 8, 1995, and where any
patent stemming from those claims will have a term of 17
years, beginning from the date of issuance of the patent.
The PTO’s determination that special circumstances exist
in Mr. Hyatt’s applications is a narrow one, unlikely to
affect other cases.
In light of the nature of Mr. Hyatt’s applications, long-
standing PTO rules justify the issuance of the Require-
ments. 37 C.F.R. § 1.75(b) provides that, in a patent
application, “[m]ore than one claim may be presented
provided they differ substantially from each other and are
not unduly multiplied” (emphasis added). The PTO
issued the Requirements to ensure that Mr. Hyatt’s
applications complied with § 1.75(b). Given the extraor-
dinary number and duplicative nature of Mr. Hyatt’s
various pending applications, all drawn from the same 12
specifications, it was reasonable for the PTO to be con-
cerned that the claims did not “differ substantially from
each other,” and that some claims were “unduly multi-
HYATT v. LEE 17
plied.” § 1.75(b). In fact, in the Requirements the PTO
demonstrates that across these applications, Mr. Hyatt
has in numerous cases filed identical or nearly identical
claims. This sort of redundant, repetitive claiming is
inconsistent with § 1.75(b).
These special circumstances, which justify issuing the
Requirements, also justify the disclosure of the confiden-
tial information contained in them. The Requirements
are part of the prosecution history of the applications to
which they are attached. As a result, certain Require-
ments are now part of the prosecution history of applica-
tions that are parents to issued patents, and therefore are
publicly available. Rule 14(a)(1)(v). 7 The publication of
the prosecution history of issued patents under Rule 11(a)
and the prosecution history of pending parent applica-
tions to issued patents under Rule 14(a)(1)(v) will allow
the public to understand the scope of the issued claims.
This reasoning applies not just to the Requirements
generally, but also to the specific confidential information
disclosed by the Requirements. Although the Require-
ments contain significant amounts of information typical-
ly kept confidential, Mr. Hyatt only challenges the PTO’s
disclosure of the full text of claim language from un-
published applications and the discussions of the nature
7 Rule 14(a)(1)(v) authorizes the PTO to make par-
ent applications to issued patents available to the public
upon written request for a fee. It does not speak to
whether the PTO may publish this information for free on
the PTO internet portal. Nonetheless, it authorizes public
disclosure of the information. Once disclosed, we do not
think wider publication of the information will greatly
harm the applicant. In this context, we see little distinc-
tion between making material publicly available for a fee
and making that material available online for free.
18 HYATT v. LEE
of certain amendments to the pending applications in the
Requirements. This is because much of the normally-
confidential information is not confidential in Mr. Hyatt’s
case. The relevant specifications here have already been
disclosed as part of the published prosecution history.
Hyatt, 2014 WL 2446176, at *7; see also Appellees’ Br. 15
n.9. Information about the filing dates, the serial num-
bers, and the number of claims in Mr. Hyatt’s pending
applications has also already been disclosed.
The special circumstances of Mr. Hyatt’s case, and the
volume and interwoven nature of his claims, also justify
the disclosure of the substance of certain amendments to
the pending applications in the Requirements. For exam-
ple, the Requirement corresponding to the ’812 applica-
tion describes the prosecution history of other
applications in the family, including specific information
about several amendments to these applications. The
PTO included this information to explain its suspicion
that Mr. Hyatt’s claims were “unduly multiplied.” The
specific nature of the amendments to the applications
demonstrates how the number of Mr. Hyatt’s claims has
multiplied over the course of prosecution. Again, the
disclosure of this information may help the public under-
stand the claimed scope of the ’812 application, as well as
explain the requirements the PTO imposed upon
Mr. Hyatt and any further constraints it places upon his
applications. The PTO did not abuse its discretion when
it found that the special circumstances of Mr. Hyatt’s
situation justify the disclosure of the substance of many of
Mr. Hyatt’s amendments to his applications.
We also note that given the large number of claims at
issue, the newly disclosed information is minimal; the
specifications have already been disclosed, as have the
filing dates, the serial numbers, and the number of claims
in Mr. Hyatt’s pending applications. The PTO did not
simply publish the applications in their entirety. It
HYATT v. LEE 19
identified certain confidential information as necessary to
establish how Mr. Hyatt’s applications were in conflict
with § 1.75(b) and to justify the Requirements it was
imposing on him. We hold that the Director did not abuse
her discretion when she found that the “special circum-
stances” exception justified the otherwise-prohibited
disclosure of the Requirements. Because we hold that
§ 122(a)’s “special circumstances” exception permits the
PTO to disclose certain Requirements, we need not con-
sider whether the disclosure of the Requirements is
“necessary to carry out the provisions of an Act of Con-
gress.”
CONCLUSION
We affirm the district court’s grant of summary judg-
ment.
AFFIRMED
We award costs to the PTO.