DCT

1:21-cv-01305

Gilbert P Hyatt v. Andrew Hirshfeld

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:21-cv-01305, E.D. Va., 11/26/2021
  • Venue Allegations: Venue is alleged as proper in the Eastern District of Virginia pursuant to 28 U.S.C. § 1391(e) and 35 U.S.C. § 145, as the U.S. Patent and Trademark Office (PTO) is located within the district.
  • Core Dispute: Plaintiff seeks a court order under 35 U.S.C. § 145 compelling the USPTO to issue a patent for claims in a long-pending application, following a final decision by the Patent Trial and Appeal Board (PTAB) affirming the examiner's rejections.
  • Technical Context: The technology concerns computer-instructed pattern recognition systems that integrate data from various sources, such as inertial navigation units and cameras, for applications in robotics, vehicle control, and image processing.
  • Key Procedural History: This action follows an unusually protracted prosecution history for the subject patent application, spanning over 25 years. The complaint alleges significant delays attributable to the PTO. The lawsuit directly challenges the PTAB's September 2021 decision, which affirmed rejections based on multiple grounds, including the equitable doctrine of prosecution laches, lack of written description, undue multiplicity, and obviousness over prior art.

Case Timeline

Date Event
1984-10-19 Priority Date (Filing of U.S. Patent Application 06/663,094)
1995-06-05 '199 Application Filing Date
1995-09-01 Plaintiff files preliminary amendment
1995-11-01 PTO sends non-final office action rejecting all claims
1996-04-01 Plaintiff responds to non-final office action
1996-06-01 PTO sends final office action rejecting all claims
2007-04-25 PTO suspends prosecution (first of six listed suspensions)
2020-02-01 PTO files Examiner's Answer, adding prosecution laches as new ground of rejection
2021-09-24 PTAB issues decision affirming rejections of Subject Claims
2021-11-26 Complaint Filing Date

II. Technology and Application-in-Suit Analysis

This case concerns U.S. Patent Application Serial No. 08/465,199 ("the '199 Application"), not an issued patent.

U.S. Patent Application No. 08/465,199 - Pattern Recognition Systems

  • Application Identification: U.S. Patent Application No. 08/465,199, titled “Pattern Recognition Systems,” filed June 5, 1995.

The Invention Explained

  • Problem Addressed: The application addresses the technical challenge of enabling a machine (such as a robot, vehicle, or other automated system) to navigate and interact with its environment by processing and integrating data from multiple, disparate sensor types (Compl. ¶14).
  • The Patented Solution: The invention, as described in the complaint, is a set of computer-instructed processes that fuse different data streams to create a more comprehensive and actionable representation of an environment. Specific claims are directed to processes that generate inertial navigation information, use camera and radar information for registration and location, generate temporally interpolated or zoomed image data, and use this synthesized information to issue commands to a machine (Compl. ¶14). The solution combines raw sensor data into a higher-level understanding for automated control.
  • Technical Importance: The described methods are foundational concepts for modern automated and autonomous systems, which depend on the real-time fusion of sensor data from sources like cameras, LiDAR, radar, and inertial measurement units to perform complex tasks such as navigation, object recognition, and path planning.

Key Claims at a Glance

  • The complaint identifies 29 "Subject Claims" for which it seeks issuance of a patent (Compl. ¶12).
  • The complaint provides general descriptions for several of these claims, including:
    • Claim 207: A computer-instructed process generating inertial navigation information and using camera information to generate registration information, temporally interpolated information, and zoomed image information (Compl. ¶14).
    • Claim 129: A computer-instructed process generating inertial navigation information and registering radar information, generating subpixel image information, and writing database information into a database memory (Compl. ¶14).
    • Claim 215: A computer-instructed process generating inertial navigation information and registering radar information to control a robot, and to generate overlaid graphics information (Compl. ¶14).
    • Claim 224: A computer-instructed process generating inertial navigation information and registering radar information to generate temporally interpolated image information, and to write database information into a database memory (Compl. ¶14).

III. The Accused Instrumentality

This section is not applicable, as the complaint is an action under 35 U.S.C. § 145 to obtain a patent and does not allege infringement against a product or service.

IV. Analysis of PTO Rejection Allegations

The complaint seeks de novo review of the PTAB's decision affirming the rejection of the Subject Claims on several grounds. The Plaintiff alleges these rejections are erroneous.

  • Written Description (35 U.S.C. § 112): The PTO rejected at least Subject Claim 207 for an alleged lack of written description (Compl. ¶50). The Plaintiff contends that the '199 Application's disclosure is sufficient to demonstrate to a person of ordinary skill in the art (POSITA) that the inventor was in possession of the claimed invention as of the effective filing date (Compl. ¶51). This sets up a central factual dispute over whether the specification provides adequate support for the full scope of the claim's limitations regarding the generation and combination of different data types.

  • Prosecution Laches: The PTO held the '199 Application "entirely forfeited under the equitable doctrine of prosecution laches" (Compl. ¶53). The Plaintiff counters that this rejection is erroneous for several reasons, including that: (1) prosecution laches is not a valid statutory ground for rejection under the Patent Act, particularly for an application subject to URAA Transitional Rules; (2) any delay was attributable to the PTO's own actions or inaction; and (3) the PTO failed to provide adequate warning of potential forfeiture (Compl. ¶55-60). This raises a significant legal question for the court regarding the proper application of this non-statutory, equitable doctrine in the face of a decades-long prosecution record.

  • Undue Multiplicity (35 U.S.C. § 112): The PTO rejected all Subject Claims for allegedly failing to distinctly claim the subject matter under the doctrine of undue multiplicity (Compl. ¶64). The Plaintiff asserts that each of the 29 Subject Claims has "ascertainable differences in scope" from the others and from claims in co-pending applications (Compl. ¶65, ¶68). The court will be asked to determine if the claims are patentably distinct or represent an improper attempt to claim the same invention multiple times.

  • Obviousness (35 U.S.C. § 103): The PTO rejected Subject Claim 207 as obvious over the combination of Tugayé (U.S. Patent No. 4,476,494) and Brown (U.S. Patent No. 4,004,084) (Compl. ¶71).

    • Tugayé (’494 Patent): This reference discloses an apparatus for stabilizing a target image from a camera, for example, in a missile guidance system. It teaches generating a "reference frame" with fixed coordinates and then transcoding or assigning incoming pixels to the points on this frame with the best address match, thereby stabilizing the image irrespective of camera movement (Tugayé Patent, Abstract).
    • Brown (’084 Patent): This reference discloses a video conferencing system that reduces bandwidth by processing signals from multiple cameras. It teaches techniques for spatial reduction (transmitting only a portion of a picture) and temporal resolution, such as interleaving picture fields from different cameras, with priority potentially based on a speech-level control signal (Brown Patent, Abstract; col. 2:32-52).
    • Identified Point of Contention: The Plaintiff argues that a POSITA would not have found it obvious to combine these references to arrive at the invention of Claim 207 (Compl. ¶72). The key question is whether there was a motivation to combine Tugayé's image stabilization and reference frame concept with Brown's multi-source signal interleaving and processing to create a system that generates inertial navigation information and uses camera information to generate registration and temporally interpolated information, as recited in the claim (Compl. ¶14).

No probative visual evidence provided in complaint.

V. Key Claim Terms for Construction

The complaint does not provide sufficient detail for a formal analysis of claim term construction. However, the patentability disputes, particularly under § 112 (written description) and § 103 (obviousness), will necessarily involve interpreting the scope of key technical terms. Practitioners may focus on the precise meaning of phrases such as "inertial navigation information," "registration information," and "temporally interpolated information," as their interpretation will define the boundaries of the invention and its distinction from the prior art.

VI. Other Allegations

This section is not applicable as the complaint does not allege indirect or willful infringement. The core allegations concerning the PTO's conduct are addressed in Section IV.

VII. Analyst’s Conclusion: Key Questions for the Case

The resolution of this case appears to hinge on the court’s de novo review of the following central questions:

  1. A question of procedural law and equity: Was the PTO’s application of the non-statutory prosecution laches doctrine to find a complete forfeiture of the '199 Application legally permissible, and was it factually warranted given the decades-long prosecution history in which the Plaintiff alleges the PTO was the principal cause of delay?

  2. A question of inventive step: Would a person of ordinary skill in the relevant art, at the time of the invention, have been motivated to combine the image stabilization and reference-frame mapping of Tugayé with the multi-source video processing of Brown to arrive at the specific process of Claim 207, which integrates inertial navigation data with camera data for registration and temporal interpolation?

  3. A question of technical disclosure: Does the '199 Application's specification provide adequate written description to support the full scope of the asserted claims, demonstrating to a skilled artisan that the inventor possessed the claimed inventions, which involve the complex fusion of data from inertial, camera, and radar systems?