The applicant had pending numerous applications claiming priority to one or more of numerous applications. In all, there were 45,000 independent claims and 115,000 total claims filed, based on only 12 specifications. During prosecution, the PTO imposed the requirement that, for each family of applications, the applicant select no more than 600 claims to prosecute from any family, identify the earliest priority date and supporting disclosure for each selected claim, and provide a copy of the selected claims. Each “requirement” document would be placed on the prosecution history of each application, and thus, when any one of the applications issues, certain information pertaining to pending claims will be publicly disclosed. Hyatt argued that making the “requirements” public would violate 35 U.S.C. § 122(a) which requires that patent applications be kept confidential, except where necessary to carry out the provisions of an act of Congress or in special circumstances as determined by the Director. The court held that the act of Congress exception did not apply, held that determinations of “special circumstances” are reviewable, held that, under this exception, the PTO must not only determine that special circumstances exist, but also that the special circumstances justify disclosure, held that this determination would be reviewed for abuse of discretion, and held that, in this case, the Director had not abused her discretion, because 37 CFR §1.75(b) requires that claims differ substantially from each other and not be unduly multiplied, disclosure was necessary for the public to understand the scope of the claims, and the specifications themselves had already been disclosed.
Hyatt v. Lee, Case No. 2014-1596 (August 20, 2015); Opinion by: Moore, joined by Mayer and Linn; Appealed From: District Court for the Eastern District of Virginia, Hilton, J. Read the full opinion here.