prosecuting claims before the patent office that unreasonable delay prudes an extreme delay in presenting the claims in the end each of the applications here in all four of them considered together and across four hundred dollars similarly situated applications it also includes uncooperative and on and obstructive conduct during that examination in these cases as well as three specific examples of what i would call agree just misconduct across the cases the st of those examples of his tendency to put the identical pavley in distinct claims in different applications are also been writing to the doctor and the prosecution left as quickly one was be shown in order for that to acquire an unreasonable and unexplained delay in among other things presentation presentation of claims to the patent office or to supreme court cases the provide the foundation for the doctrine that the woodbridge case and the webster case both from the one thousand nine hundred and twenty s in woodbridge the delay was nine a half years webster eight years and the purpose behind it is twofold it's one somebody invents something they're supposed to follow a pat so the public is aware of the invention and then that patent term is supposed to begin as soon as possible after the invention so that eventually in order for the doctrine to apply does or have to be a violation of a specific regulation or or statute there does not it's an equable doctrine that was put in place to essentially police conduct that is within the letter of the statute so we see that in the lemelson case and we see it in this case although by as a but p t o presented no testimony or evidence that those parents disclose any invention claimed in the subject applications or they hired even contend so i want to answer that for you i believe the contention is in his priority claims themsel apparently thought it was an isolated instance but that's the sort of thing that's occurring across these patent applications even apart from the delay which alone on the woodbridge and webster would be enough to find latches the delays in presentation where they look at the earliest priority date claim previously lost and interference proceeding and they say you can prove it ok and and then i have my answer to that i want your answer it's in our blue brief we responded to that directly in our reply brief also of page twenty six rejections were begging for mr hyatt to provide to the administrative proceedings twenty years later when i mean they were begging form examiners in each of these cases were frustrated by mr high its refusal to provide written description support for these later added claims there's an m p provision which was in effect of the time b b two thousand one hundred and sixty three point four which says that for later added claims up in a supposed to show support in the specification it only makes sense especially of these unusual claims that don't find direct support in the specification to provide that long with the claims mr hyatt litigated his right not to provide that information and that culminated in this court's finding in two thousand and seven the high of the do this case where this course specifically said yes it is applicants responsibility to show written history of support for the later added claims which he did not and so that's part of the prosecution has he misconduct that we're talking about and of so it's ok has he today potentially challenge the research apartments and target the challenge those multiple times in the last that this court has specifically said the requirement was reasonable it wasn't in connection with a direct challenge to what i think he would say he still has the opportunity to challenge it in connection with the prosecutions in these cases i will say he is continuing to submit amendments even for the claims that he didn't select so he's he's operating as though all one hundred and fifteen thousand claims forty five pounds so and  applied the wrong legal framework or could you be specific about what you think was legal error here that's correct there are at least three separate legal errors i would say the st one is the district court although acknowledging that mr hyatt had filleted and presentation of the claims completely failed to analyze that the claims here were presented at least twelve years as much as twenty eight years from the earliest priority date under either of those supreme court cases that you know should be prosecution latches once you have that in there and limiting the scope of time that the district court was looking at or was it just disappeared just not giving that evidence so much weight i think that's one of them's a legal issue and one of them sounds like an abuse of address it at all and i think the way you just put it is accurate he limited the time the scope of the time that he would consider to the time period that these claims were in active prosecution but that neglects the history of mr hyatt not presenting those to the office the entire period and not just a part of it not just pages yes he was retired he was required to review from the time that mr hyatt st claims to have invented these inventions the priority date to the time that he submitted them to the patent office and then he should also consider what happened at the patent office and as i argue that there was some sort of delay or unreasonable conduct during that time during during which time during from the time that the the application  yes during the time so as there's an unreasonable delay and present the claims to begin with that's twelve to twenty eight years but then when it gets to prosecuting in the patent office there are two different kinds of several different kinds of  is he and maybe he has his counsel ken can explain what he's asking more but it seems like he's asking if he prevails here that you all have to issue patents not only on the ones he want on  trial but all the ones that were in his complaint that weren't actually litigated that that judge lambert and look at and i don't know how does a one party five actually work when you get the two rejections in a board decision and come to  were only the subject of the board decision what's the effect of the district or not i'm looking at those others are our positions those still need to be valued by the agency there are some where the board reversed rejection so there are actual rejections i  to the district court i think this is the only case where it has occurred one hundred and forty five actions are relatively rare again i just think applying normal patent principles they have to come back to the office for further consideration the district  correct so if if mr hyatt has conduct is shown to have comply with agency regulations and here procedures and apparently all prosecution latches by the supreme court i should at least create some kind of presumption of latches but then the nd thing is you violated our procedure when he came to the patent office and failed to provide written description support for later added claims we only saw that complaint that support  in two thousand and fourteen when he started to make these arguments in connection with when he's district court actions so there are certain things he certainly has the right to do we've learned from the supreme court that he has the right to introduce written description support much much later but that doesn't necessarily mean he complied with reasonable conduct during the patent application process and in this case he essentially rendered that entire examination time and nobody by by introducing new evidence into the government's position tha an insufficient submission legally insufficient submission and support for exam is inherently untimely or are they two different things even unsupported by the by the written description i think they're probably two different things you know there's a debate we think the vast majority of the claims he's been submitting are not supported by the written description we only see the tip of the iceberg in this case these may be the best case for which there is a written description support case but even that falls apart because as you saw the district court felt the need but you're not saying they're on time or you're saying they're timely but invalid they're on time when the latches so written description support is another instance of that latches where you have an obligation to move the prosecution along ok i think that gets right to the heart of the issue in this campaign i'm a lot of questions for you on page twenty of the blue brief the government says one of the suits that you took an action took that you took on adding that it in action was the litigation minutes even if we can extend that on fifty one dollars fifty two cents of the blueberry the government says the five claims the district court found that the specification described are indistinguishable from the rest of the u sixty nine claims how are they distinguishable oh i believe these are the cache memory type claims with respect to each of those different claims that was issued everybody agreed that the specification disclose quick cash memory what was different between the claims was each one concern the combination of cache memory with other limitations and so the limitation with respect to the claim there was just a different combination of elements and if you look at the district court decision with respect to the cache memory written descriptions of court portions of it each one of those focused on different thousand and twelve based on the p t o s stipulation that affect how is that a valid analysis by the district court i mean the p t o repeatedly stipulated that it was not charged at that time against mr hyde because the p effectively blocked prosecution of his applications for that decade long period but because you were a litigator subsidiary issues that might have affected all of those cases and the way it was conducted in  examination there was a lot of back and forth evidence on that we wanted to argue that we argued in our findings of fact it's inclusions of law based on the testimony that it at the time periods didn't really line up and that's not really what was going on and that was before we even put on our case the p t o at as the district court not to consider any of that in other words we made these fact arguments the p t s of don't consider those fact arguments they were relevant we are not citing that time period in support of our latches argument and so the district court didn't make any factual findings on that point because the p t o said it's not relevant to latch case on page twenty five of the red brief footnote one you say the three hundred and ninety eight application was one of nearly one hundred of hyatt's applications assigned to a single examiner with a full docket of other applications do you deny the blue briefs statement of the number of full time examiners assigned hyatt's applications if i recall correctly that statement concerns a much later time period during the time period when this particular application i was being examined there were in fact approximately one hundred examiners i'm sorry applications assigned to brian werner and he had a full time docket of other applications that he applications the p t o turned to continuation in part relationships what record evidence you have that shows the p t o was inflating the numbers if you're talking about inflating at the the the time periods at issue here the number of claims and applications oh i apologize your honor i misunderstood your question what if i want to know what record evidence you have we were not able to put on our case but in evidence there was the prosecution say there's something afoot something is going on and it it it seems to me that although mr hyde may have been within the confines of agency regulations or procedures that there was a significant delay and some of it appears to have been intentional this failure to cite the specification for a  number four for an extended period of time and i don't know if you would say i disagree with the judge or no delay here this is not unusual but a but i think it is it's i that he invented which have multiple inventive features and that's what's claimed in its applications if you look at the individual claims the claims tend to be very narrow these are not broad covered the world claims they tend to describe the tickler uses a particular function of these and so on with many limitations i think that by and large describes you know why there are so many claims in terms of you know whether there is in terms of the issue of delay i will know that we're talking about four applications here my friend mr president that the problem in the in the lodges analysis that the district court allowed you to focus in on for single applications from this basque universe and then limited the time frame for consideration to a much narrower time frame than the entirety of the conduct here and the problem the patent office doesn't have is not just with these poor applications it's with the way since one thousand nine hundred and seventy that mr hyatt has prosecuted all the topic a shipped and isn't that legal air when he limited the scope of what he was going to review your honor the district court did not limit the scope i want to be very clear about this let's assume i disagree with your reading of that may i have the opportunity to explain why   this court said in symbol that simply that the passage of time or the word merely the mere use of continuation applications is not itself platies there has to be something more this court has a half dozen cases that bad state that proposition will show with respect to prosecution lychee specifically to show something more i will note the prosecution histories of the parents and grandparents applications here the p t o didn't even offer those in the evidence they were not before the district court the p t o didn't have an expert testified that this was unreasonable this was unreasonable this should have been done mr hyatt testified at his deposition that he that he prosecuted the parent applications to resolve common issues in other words issues that might involve multiple claims and then at that point proceeded to file child applications this court recognized in civil that there was a perfectly legitimate use of continuing applications my friends did not put in mr lay out his failure to to when the examiners asked for written description support for the multiple claims on these different specifications what about his refusal to do that mr hyatt won many reversals on written description issues before the door had funny answering my question he refused even if he was within his right  refuse when you have this extraordinary group of patent claims its best patients across all these different things at the examiner in order to figure out where there is written description support for certain claim and a six hundred page specification ask isn't it unreasonable to not respond and if you do that bulteel times over the course of multiple your years doesn't that some point and up and prosecution might just you know your honor it might but that's not what happened here  these applications were perceived were prosecuted bristly mr hyatt did put forward written descriptions of her which is why he was able to reverse examiner rejections for lack of ridge description before the board these issues were before the board they were briefed before the board as dr prevailed on many claims  and then ultimately the evidence that mr hype and forward in court was the kind of evidence that one puts in court including expert testimony that detail has never required that somebody have the testimony of one skilled in the art to present opinion evidence before the agency that would transform the way that the agency deals with written descriptions all together it would make the prosecution process farmer burdensome but at the end of the day i would still get back to you and i think the court ought to focus on where mr kraus began which is talking about the individual here this is highly unusual the delays here compared to the normal course of the life of a patton going through an application process this is highly unusual and i would like to know it's not an reasonable well again noting that we did not put on our defense what i would say was i think the district court properly looked at the different periods of time that issue i mean let's just stop but just go through the different they're as the party asserting your prosecution latches defense the p t o put on basically no evidence with respect to the prosecution of the parent or grandparent applications your expert testimony nothing they simply had the dates and that's it and the court's cases ma the process of argumentation and to the prosecution of these four applications that is it i think you can draw a conclusion from that and indeed the p t o s expert was unable to say that anything mr hyde did or didn't do during the prosecution  how it takes great umbrage with and disputes the lawfulness of p p o s recent air efforts to disparage him in office actions and to push his applications into a van and why do you need that kind of language in an eighty nine page brief you know that's a lot of reading for us to do i read everything three times appears to me that you're writing for your client and not for the court and you know you're an attorney explain it to me i apologize your honor if it was taken step disputing that it stipulated anything and argue that high it was really to blame for the agencies this delay is stunning think and i'll keep in mind i'm keeping in mind that the government says in a footnote that where they say they offered stipulate that they do not argue the period in which the p t o stated examination from two thousand and three t finding prosecution lashes based on anything other than a gracious abuse of continuations that delays the prosecution of specific conventions i think my brother and i asked this question how as  high as four pattern of behavior before the p d p t o not an egregious abuse of its procedures your honor mr high it began as an independent inventor writing and prosecuting his own sides as to the conduct of the parties and i will simply note that those issues that set of issues is being litigated now in the eastern district of virginia where we overcame the p t s motion to dismiss on a claim that the p t o has a de facto policy  i'm confused your honor my point is is that i think if you look at some of what's happened here in a vacuum you can say there's been a lot of time that's passed and that seems awfully unusual and we don't disagree with that ok but the question you know the rules claims without any analysis of their substance the subject matter they concern their relationships or structure the nature of the inventions at issue or even how they compared other applicants claim claims do you agree that multiplicity that too many claims is does not really any type of argument under the patent act you have to look at the individual claims themselves and you have to determine whether their meaningfully distinctive whether they helped to clarify the invention that's the point which is at the p t o is going to argue to of the read brief you say the u s p t o takes hiatt statements out of context by mixing them with unattributed quotes from castle one equating those terms to g o i where the unattributed quotes you know and when you say that of those particular claims and there are other quotes in that section where that are actually quotes from mr castle if i recall correctly who is the p t s expert i understand but i didn't find anything that wasn't cited i'll claims resigning cache memory did you do to dispute this dispute the district court's conclusion not with respect to there was an issue of whether buffered memory whether the term buffered memory was sufficient to encompass cache memory in the district  on page eighteen of that of the yellow brief the government says the agency has to know about these identical sets of claims to examine them consistently and the claims in two of the applications at issue  analytically indistinct and identical how are they patently distinct the particular claims issue i mean i'm not sure which claims the government was referring to that instance i don't know that the government did not raise any double patenting issue in this particular case and it could have under this court's decision travers sandstone and in fact it did raise that ground of rejection as a defense with respect to latches on page twenty seven of the yellow braid you know i'm trying to move me with you long as i have a lot of the government states that while mr hyatt a search on page one of the red brief that the u s p t o routinely disparaged him and his applications in court filings and congress going so far as to announce that it would never allow any of them to issue asked you where is that evidence in the record i have on some volumes here i can try to lift the others it's a big record where is it in the record i don't want supplemental authority on what contrary to mr hiatt statement that cancer research addressed bogeys and held that intervening right is required for any application of prosecution latches cancer research did not overturn bogeys in any respect why do you believe it did we do not believe it overturned if you look at cancer research technology discussion of ok has it made clear that intervening rights was proven before the lord the p t o did in fact prove that the board ruled against the applicant on that issue and the applicant did not raise that issue in his appeal to this court ok one last question for you and i don't know what others on page fifty six of the yellow brave the government says that you quote cite your own proposed findings of fact and they give  findings of fact where those findings of fact compiled pieces of testimony that it was useful to have in one place and so it simply for the sake of convenience where we quoted the actual testimony at issue and i think in many of those instances perhaps not all of them we paire tool levon case the only thing that remains alive are these written description rejections of the words if you uphold our position on written description that application if we send this back to the district court and say look at the l provides clear instructions to the district court on how to deal with the latches question maybe we can avoid the written description questions entirely but we would ask that based on this record the court simply agree with us the prosecution understand that you might think that there's a reason to remain but but again when the government says we don't see what he could possible he'd say it doesn't mean made he doesn't see what a big part well again the delays here happen even before you know there's latches occurring before you presented that claim to the agency at the agency despite the fact that he just said these were normal prosecution times they were not normal prosecutions because we emerged from prosecution from the examiner with no sense of where the written description support was but he says counsel suggests that they may have good reasons for that and they weren't allowed to present them whether they do or not it's a different story but it seems to me that if we we'll preview without giving him that opportunity our judgment would be very  circumstances is the actual you know overall test and that's one of the errors that just took or committed by not considering these application of that in the context of the other four hundred dollars applications at issue but there are also some guidelines you could provide as far as how long is a reasonable amount of time to wait before presenting claims what constitutes reasonable conduct i'm not working here we can do that as much as we can say how long is not a reasonable amount of time that's another way of formulating and i think that would be except to bill as well i will just back up on this the prosecution time opposing counsel did say it was a normal prosecution time again it was not a normal prosecution he mentioned that they prevailed at the noting that this is the very st time mr hyatt offered support description support for a certain claim and even then the board in these cases mostly on the reversals went off of it on its own without a whole lot of help from mr hyatt to reverse the written description exam wasn't a focus of our case but part of our case we did mention though nine for application which is a grandparent to the two hundred and eleven and three hundred and ninety eight applications here in that application he received an allowance back in one thousand nine hundred and eighty on certain claims and then allowed and then didn't take the claims allow them to go out of band and which in itself wouldn't necessarily be wrong let's say not doing the things wouldn't be a self wrong because he might want to present two prior art but then he allowed the claims to go only to reduce reintroduce them ten years later adding a ten year to late to these previously allowed claims so that's the discussion the grantor in applications i think if we do look at the grandparent applications will find that they don't justify the conduct stipulation by the government we are not trying to count those that ten year period from two thousand to two thousand quote against this trial we don't need to we have up till two thousand and three worth of delay that's over thirty years with respect to some these patents but we do believe the conduct during that period underscores that there's something more going on here than trying to get claims so as the conduct was all to vindicate his right not to present information not to engage the agency in the normal prosecution process and it all confirms in fact he did not because in the supreme court case he was actually asking for the ability to introduce evidence relating to a written description but he had with help the issue is whether sexual reporting five applies to claims in which the board reversed all injections we think that whatever the court decides on latches or the other issues it would be useful to reach the cross appeal issue and decided as well so that the district court should there be every man and knows what to do and creates a sufficient article three injury to satisfy the constitution's case or controversy requirement if we agree with you i find this procedure unusual because we don't see very often if we agree with you that there was article three  exactly what he refused to address them so they're not he had there is no decision on the patent office camp lose by default when he refused to specifically address that your honor i think this might be the unusual case where the p t o can lose by default let me explain why the supreme court held in couples versus hiatt that the ordinary federal rules of civil procedure govern section one hundred and forty five proceedings when a party does not raise any defense to a claim that party defaults on the claim that simply the way the federal rules work the statute is quite clear that those claims were properly before the district court and it was a district court if the district court body had at the ready to hear them and if the patent office failed to provide a defense that might be one thing the district court clearly said i can't hear these cases because i don't know whether it was correct or not it seems to me like you know he operates in the district of columbia and he if used to it and exhaustion of administrative remedies and that may be what he was looking at frankly i thought that was probably right too until i looked at this but since it's in to no action if he has improperly failed to address these claims i don't see how is a decision can be seen as a judgment on the merits at all it's an to those claims in its amended answer in each of these cases so it did assert one defense that even more problematic for you because they have not waive their right they asserted he refused to hear that defense all together with regards to those cases because or those claims because he said he didn't have authority to hear them jurisdiction hear them your honor that happened at the end of the case never attempted to obtain judgment on those on those claims the people the district court did not decide that it lacked article three jurisdiction over them lead until the very end of this case because they were addressed in the party's conclusions i don't know how that helps you i mean i don't know how you can argue that it's somehow default judgment when the district court's judgment explicitly doesn't cover that the error you may be right that there was an error there but it seems that the i mean that i've been but i'm but i'm just saying that i think everyone would agree that that ship has sailed at this point i mean you know the party has to offer its defenses in its answer at this point you know those answers have been out there for years and the party has to seek judgment or to you know to challenge a claim in this case the p t o simply never did that that's just under the normal federal rules of civil procedure the p t o adopted a litigation strategy by the author of that the p t o s response is going to be and probably correctly so that you can't  fault the government i am not aware that that is a rule your honor i mean the government may not defend itself with respect to every claim in every case the ordinary rules of civil procedure apply the court is no further questions thank you thank you thank you very much