Fresh From the Bench: Latest Federal Circuit Court Cases
CASE OF THE WEEK
Gilbert P. Hyatt v. Andrew Hirshfeld, Appeal Nos. 2018-2390, -2391, -2392, 2019-1038, -1039, -1049, -1070 (Fed. Cir. June 1, 2021)
This week’s Case of the Week explores a long-running dispute between controversial inventor Gilbert Hyatt and the Patent Office concerning patent applications filed in 1995 that claim priority to applications filed in the 1970s and 1980s. They can be fairly described as submarine patents. After his applications were rejected, Hyatt sued the Patent Office to have the patents issued. At trial, the Patent Office asserted the doctrine of prosecution laches. The district court rejected the Patent Office’s position and ordered the patents to issue. The Patent Office appealed. In a 42-page opinion issued this week, the Federal Circuit explored the history of submarine patents related to the 1995 “GATT Bubble” and provided a lengthy discussion on the doctrine of prosecution laches.
The case makes a great read for students of patent law. It explains an important historical chapter in the law that led to substantial changes in 1995 that continue to this day—an era that struggled with the proliferation of submarine patents and led to the practice of patent trolling. Our summary and analysis are provided below.
SpeedTrack, Inc. v. Amazon. com, Inc., Appeal Nos. 2020-1573, -1660 (Fed. Cir. June 3, 2021)
In this appeal from a final judgment of noninfringement, the Federal Circuit affirmed, finding the district court’s claim construction was correct based on the doctrine of prosecution disclaimer. The patent at issue discloses a “computer filing system for accessing files and data according to user-designated criteria.” The district court adopted SpeedTrack’s proposed claim construction and included reference to “disclaimers made during prosecution.” Subsequently, the parties presented a further dispute regarding the scope of the claim term. The district court entered a second claim construction order clarifying that “[c]ategory descriptions based on predefined hierarchical field-and-value relationships are disclaimed.” The district court explained that SpeedTrack’s prosecution statements demonstrated a “clear and unambiguous disavowal” of the same. Because of the second construction order, SpeedTrack stipulated to noninfringement and the district court entered final judgment of noninfringement. On appeal, the Federal Circuit held that the district court’s claim construction was correct, explaining that “the doctrine of prosecution disclaimer ensures that claims are not construed one way in order to obtain their allowance and in a different way against accused infringers.” Thus, the Court affirmed the district court’s final judgment of noninfringement.