FILED

UNITED STATES DISTRICT coURT AUG 2 3 2015

FOR THE DISTRICT OF COLUMBIA
C|¢rk, U.S. Dlstrlct & Bankruptcy

Counls for the Dlstrlct of Columb|a

GILBERT P. HYATT,
Plaintiff,
v. Civil Action No. 05-2310 (RCL)
MICH.ELLE K. LEE,
Under Secretary of Commerce
for Intellectual Property and
Director of the United States
Patent and Trademark Offlce,

Defendant.

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MEMORANDUM OPINION AND ORDER

This case relates to U.S. patent application 08/457,2ll (the ’2ll application) and is brought
under 35 U.S.C. § 145. This case is similar to several other § 145 claims filed by the same plaintiff
The related cases in front of this Court include 03-cv-90l, 09-cv-l864, and O9-cv-l869, and 09-
l872. This opinion should be read in conjunction with the memorandum opinions filed in those
cases as._the arguments and legal positions taken by the parties often overlap or are variants of each
other. In this case the parties have filed cross motions for summary judgment.

Defendant moves for summary judgment in large part based on a waiver-type argument.
Specifically, they argue Mr. Hyatt may not raise the issue of how most of his claims satisfy the
written description requirement. Def.’s Mot. Summ. J. l, ECF No. 2310. As the Court noted in
O9-cv-l872, this argument is unpersuasive as it runs contrary to the Supreme Court holding in

Kappos v. Hyatt. Mem. Op. at _Hyatt v. Lee (No. 09-cv-l872), ECF No. _.

In Kappos v. Hyatt, the Court allowed for new evidence in § 145 proceedings, and thus
logically allowed for-at a minimum_the attendant arguments. The Court noted however, that
district courts have "broad discretion over the weight to be given to evidence newly adduced in
the § 145 proceedings." Kappos v. Hyatt, 132 S. Ct. 1690, 1700 (2012). Here, the parties present
competing experts that dispute both facts presented to the United States Patent and Trademark
Office (USPTO) in prior administrative proceedings as well as facts not presented to the USPTO.
Given the dispute over material facts, including how one of normal skill in the art would have
understood the claims in question at the time of the claimed invention-a key issue in this case-
as well as the Supreme Court’s holding that evidence may be weighed by the district court rather
than excluded as a matter of course, the Court finds the claims in this case are best resolved at

trial.l Both plaintiff and defendant’s motions for summary judgment are DENIED.

The Court will schedule a status conference to set a schedule for further proceedings herein.

J\
Signed this 13 llay of August, 2016.

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ROY E C. LAMBERTH

United States District Judge

1 The Court notes that defendant moved for summary judgment on "product claims” in 09-cv-l864, 09~cv-l869, and
09-cv-l872. While there are very similar claims at issue here, defendant did not move for summary judgment on the
basis that the product claims in 05-cv-2310 were overly broad.

