DCT

1:22-cv-00106

Gilbert P Hyatt v. Andrew Hirshfeld

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:22-cv-00106, E.D. Va., 02/01/2022
  • Venue Allegations: Venue is alleged to be proper in the Eastern District of Virginia pursuant to 28 U.S.C. § 1391(e) and 35 U.S.C. § 145.
  • Core Dispute: Plaintiff seeks a court order under 35 U.S.C. § 145 compelling the U.S. Patent and Trademark Office (PTO) to issue a patent on U.S. Patent Application Serial No. 08/418,216, following a Patent Trial and Appeal Board (PTAB) decision that affirmed an examiner's rejections of the application's claims.
  • Technical Context: The patent application at issue describes technology for processing and transmitting medical-related information over input and output data links.
  • Key Procedural History: The complaint describes an unusually protracted prosecution history spanning over two decades for an application filed in 1995 that claims priority to a 1975 application. Plaintiff alleges the PTO engaged in a "decades-long campaign" to prevent issuance, citing at least seven instances where the PTO suspended prosecution. The PTO ultimately rejected the claims on multiple grounds, including lack of written description, prosecution laches, undue multiplicity, obviousness, and provisional double patenting. The PTAB affirmed these rejections, leading to the current civil action for de novo review by the district court.

Case Timeline

Date Event
1975-02-14 Priority Date (Filing of U.S. Patent App. No. 05/550,231)
1995-04-06 '216 Application filed
1995-08 PTO sends final office action rejecting all claims
1996-03 PTO sends non-final office action rejecting all claims
1996-11 PTO sends final office action rejecting all claims
1997-03 Hyatt files notice of appeal
1998-02 PTO sends non-final office action, reopening prosecution
2000-06 PTO sends final office action rejecting all claims
2000-12 Hyatt files notice of appeal
2002-07-31 PTO suspends prosecution
2003-01-31 PTO suspends prosecution
2003-08-07 PTO suspends prosecution
2004-03 PTO sends non-final office action
2006-06 PTO sends non-final office action, adding new prior art rejections
2007-01 PTO sends final office action rejecting all claims
2007-07 Hyatt appeals and files appeal brief in November 2007
2008-12-30 PTO suspends prosecution
2009-09-24 PTO suspends prosecution
2010-04-19 PTO suspends prosecution
2011-09-23 PTO suspends prosecution
2013-09 PTO sends "Requirements" action
2014-07 PTO sends non-final office action with new grounds of rejection
2016-08 PTO sends final office action rejecting all claims
2016-12 Hyatt appeals and files appeal brief in July 2017
2019-07 PTO files Examiner's Answer, adding prosecution laches as new ground
2021-12-02 PTAB decision affirms all rejections
2022-02-01 Complaint Filing Date

II. Technology of the '216 Application and Key Prior Art

Technology of the '216 Application

  • Technology Synopsis: The complaint states that the subject claims of the '216 Application are "generally directed to processing medical-related information and modulated information received on an input data link and using the processed medical information to transmit modulated information onto an output data link" (Compl. ¶14).
  • Asserted Claims: Plaintiff seeks issuance of a patent on subject claims 29, 35, 57, 58, 66, 75, 77, 79, 80, 84, 86, 96, 137, 168, 170, 183, 212, 216, 221, 222, 227, 229–231, 233, 240, 241, 247, 268, and 280 (Compl. ¶12). The language of these claims is not provided in the complaint.

Analysis of Key Prior Art Patent: U.S. Patent No. 3,808,354 (Feezor)

  • Patent Identification: U.S. Patent No. 3,808,354, titled Computer Controlled Method and System for Audiometric Screening, issued on April 30, 1974. This patent is repeatedly cited in the PTO's obviousness rejections (Compl. ¶¶79-87).
  • The Invention Explained:
    • Problem Addressed: The patent's background section describes the difficulty and high cost of conducting regular, large-scale hearing tests for industrial workers, a need underscored by new federal safety standards. Problems with prior methods included the high cost of equipment, the need for trained personnel, and the expense of mobile testing vans (’354 Patent, col. 2:32-61).
    • The Patented Solution: The Feezor patent discloses a system of multiple, geographically remote hearing test centers that communicate via telephone lines or other links with a central data processing computer ('354 Patent, Abstract; col. 6:36-50). Each test center has an automated audiometer that allows individuals to self-administer hearing tests, with the resulting data transmitted to the central computer for processing, evaluation, and storage ('354 Patent, Fig. 7).
    • Technical Importance: This system enabled, for the first time, mass audiological screening on a large, computer-controlled scale, addressing the regulatory and logistical challenges of industrial hearing conservation programs that arose after the passage of the Occupational Safety and Health Act of 1970 ('354 Patent, col. 3:6-21).
  • No probative visual evidence provided in complaint.

III. Grounds for Appeal

The complaint seeks de novo review of several grounds of rejection affirmed by the PTAB, arguing each is erroneous.

  • Written Description Rejection: Plaintiff alleges the PTO's rejection under pre-AIA 35 U.S.C. § 112, first paragraph, is erroneous. The complaint asserts that the disclosure of the '216 Application adequately describes the claimed subject matter such that a person of ordinary skill in the art would understand the inventor had possession of the invention at the time of filing (Compl. ¶¶58-60).
  • Prosecution Laches Rejection: Plaintiff contends that the rejection based on the equitable doctrine of prosecution laches is erroneous for multiple reasons. These include arguments that prosecution laches is not a valid ground for rejection under the Patent Act, that any delay is attributable to the PTO's own action or inaction, that the Plaintiff's conduct was not an "egregious misuse of the statutory patent system," and that the PTO failed to provide adequate warning or demonstrate intervening rights (Compl. ¶¶61-71).
  • Undue Multiplicity Rejection: Plaintiff argues that the rejection of all subject claims for undue multiplicity is erroneous. The complaint alleges that each claim has "ascertainable differences in scope" from the others and informs with reasonable certainty about its scope, thereby distinctly claiming the invention as required by pre-AIA 35 U.S.C. § 112, second paragraph (Compl. ¶¶72-77).
  • Obviousness Rejections: Plaintiff asserts that the rejection of various claims as obvious under pre-AIA 35 U.S.C. § 103 over combinations of prior art references (including Feezor, Ewanus, and Klahr, among others) is erroneous (Compl. ¶¶78-89).
  • Provisional Double Patenting Rejections: Plaintiff argues the provisional non-statutory obviousness-type double-patenting rejection is erroneous and insufficient to preclude issuance, because the allegedly conflicting claim from a co-pending application has been cancelled and has not issued (Compl. ¶¶90-93).

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

The court’s de novo review will likely center on the legal and factual validity of the PTO's rejections, raising several key questions:

  • A central legal question will be one of equitable applicability: is the doctrine of prosecution laches a valid statutory ground for rejecting the '216 Application, which is subject to URAA transitional rules, and if so, does the factual record show that the decades of delay were attributable to unreasonable and unexplained conduct by the applicant, or rather to the PTO's own inaction?
  • A key factual question will be one of technical patentability: does the '216 Application's specification provide sufficient written description for the subject claims, and would the claimed invention, related to transmitting medical data, have been obvious to a person of ordinary skill in the art in light of the combinations of prior art asserted by the PTO, such as the Feezor patent's system for transmitting audiometric data?
  • A final set of issues concerns the propriety of the PTO's other rejections: were the rejections for undue multiplicity and provisional non-statutory double-patenting legally and factually sound, given the alleged distinctions between the claims and the procedural posture of the related application?