1:22-cv-00316
Gilbert P Hyatt v. Andrew Hirshfeld
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Gilbert P. Hyatt (Nevada)
- Defendant: Andrew Hirshfeld, Performing the Functions and Duties of the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office
- Plaintiff’s Counsel: Baker & Hostetler LLP
- Case Identification: 1:22-cv-00316, E.D. Va., 03/22/2022
- Venue Allegations: Venue is asserted as 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 compelling the U.S. Patent and Trademark Office (PTO) to issue a patent for his application, challenging the Patent Trial and Appeal Board's (PTAB) decision which affirmed various rejections, including for prosecution laches.
- Technical Context: The patent application relates to methods and apparatus for processing modulated information from a data link, including demodulating, filter-processing, displaying, and using the information for further actions like machine control.
- Key Procedural History: The complaint details a prosecution history for the application spanning over two decades, alleging that the PTO engaged in a campaign to prevent issuance. The case is a civil action under 35 U.S.C. § 145, which allows an applicant to seek de novo review in a district court after being dissatisfied with a PTAB decision. The central legal dispute, beyond substantive patentability, involves the PTO's application of the equitable doctrine of prosecution laches to an application filed pre-URAA.
Case Timeline
| Date | Event |
|---|---|
| 1975-02-14 | Earliest Priority Date ('231 Application Filing) |
| 1995-04-12 | '470 Application Filing Date |
| 1995-08-XX | PTO issues final office action rejecting all claims |
| 1995-10-XX | Plaintiff files petition to withdraw finality of office action |
| 1995-11-XX | PTO denies petition |
| 1996-01-XX | Plaintiff makes submission to remove finality and amend claims |
| 1996-03-XX | PTO issues non-final office action rejecting all claims |
| 1996-08-XX | Plaintiff responds to office action |
| 1996-09-XX | Plaintiff files supplemental amendment |
| 1996-11-XX | PTO issues final office action rejecting all claims |
| 1997-01-XX | Plaintiff responds with minor claim amendments |
| 1997-02-XX | PTO issues advisory action entering amendments |
| 1997-04-XX | Plaintiff files notice of appeal and request for reconsideration |
| 1997-08-XX | PTO issues advisory action refusing reconsideration; Plaintiff files appeal brief |
| 1999-03-XX | Plaintiff files an amendment |
| 2002-06-XX | PTO issues non-final office action |
| 2003-07-XX | Plaintiff files an amendment |
| 2004-06-XX | PTO issues non-final office action rejecting all claims |
| 2004-12-XX | Plaintiff responds to office action and files supplemental response |
| 2006-03-XX | PTO issues non-final office action rejecting all claims |
| 2006-09-XX | Plaintiff responds to office action with amendment |
| 2006-10-XX | PTO issues final office action rejecting all claims |
| 2007-04-XX | Plaintiff files request for reconsideration and timely appeals |
| 2007-05-XX | PTO denies request for reconsideration |
| 2007-10-XX | Plaintiff files appeal brief |
| 2008-03-17 | PTO suspends prosecution |
| 2008-12-30 | PTO suspends prosecution |
| 2009-09-25 | PTO suspends prosecution |
| 2010-04-19 | PTO suspends prosecution |
| 2011-09-23 | PTO suspends prosecution |
| 2013-09-XX | PTO issues "Requirements" action |
| 2014-03-XX | Plaintiff responds to Requirements action |
| 2014-08-XX | PTO issues non-final office action with new rejection grounds |
| 2015-03-XX | Plaintiff responds to office action with amendment |
| 2016-08-XX | PTO issues notice that amendment was non-responsive |
| 2017-02-XX | Plaintiff responds with a different amendment |
| 2017-05-XX | PTO issues non-final office action with new rejection grounds |
| 2017-11-XX | Plaintiff responds to office action |
| 2017-12-XX | PTO issues final office action rejecting all claims |
| 2018-07-XX | Plaintiff timely appeals |
| 2019-02-XX | Plaintiff files appeal brief |
| 2020-05-XX | PTO files Examiner's Answer |
| 2020-10-XX | Plaintiff files reply brief |
| 2021-12-10 | PTAB issues decision affirming rejections |
| 2022-03-22 | Complaint Filing Date |
II. Technology and Application-in-Suit Analysis
This action concerns the patentability of claims in U.S. Patent Application Serial No. 08/420,470 (the "'470 Application"), which claims priority back to February 14, 1975 (Compl. ¶¶ 10, 11). The complaint does not provide the text of the application or its claims.
The technology is generally described as "methods of and apparatus for demodulating modulated information received on an input data link, filter-processing it, and displaying the filter-processed information and using it to perform another action" (Compl. ¶14). These subsequent actions are identified as either communicating the processed information to another data link, controlling a machine, or locating oil (Compl. ¶14). The complaint states that the applicant is seeking issuance of a patent on 183 specific claims, which are listed only by number (the "Subject Claims") (Compl. ¶¶ 12, 13).
III. Summary of Alleged PTO Errors
The complaint challenges the PTAB's decision to affirm several grounds of rejection against the Subject Claims of the '470 Application. The plaintiff contends that all rejections are erroneous and that the claims are patentable (Compl. ¶¶ 102, 104). The primary challenges are:
Prosecution Laches: The complaint alleges the PTO erroneously held the '470 Application forfeited under the doctrine of prosecution laches (Compl. ¶63). Plaintiff argues this doctrine is not a valid ground for rejection under the Patent Act, particularly for this application, which is subject to the transitional rules of the Uruguay Round Agreements Act (URAA) (Compl. ¶65). The plaintiff further contends that any delay was attributable to the PTO's own actions or inaction, was not unreasonable or unexplained, and did not constitute an "egregious misuse of the statutory patent system" (Compl. ¶¶ 66-69).
Written Description: The PTO rejected certain claims (22, 43, 191, 206, 223, and 234) for an alleged lack of written description under pre-AIA 35 U.S.C. § 112 (Compl. ¶60). The complaint asserts that the application's disclosure is sufficient to demonstrate possession of the invention as of the effective filing date (Compl. ¶61).
Obviousness: The PTO rejected certain claims as obvious under pre-AIA 35 U.S.C. § 103 over various combinations of prior art patents (Compl. ¶80). The cited references include Fleishman (U.S. Patent No. 4,232,350), Fletcher (U.S. Patent No. 4,045,795), Baker (U.S. Patent No. 3,705,391), Buss (U.S. Patent No. 3,942,034), Smith (U.S. Patent No. 3,299,425), and Uffelman (U.S. Patent No. 4,241,350) (Compl. ¶¶ 81-84). The plaintiff contends the claims would not have been obvious over these references (Compl. ¶85).
Undue Multiplicity: All Subject Claims were rejected for allegedly failing to distinctly claim the invention under the doctrine of undue multiplicity (Compl. ¶74). The complaint counters that each claim has "ascertainable differences in scope" and "informs with reasonable certainty about the scope" (Compl. ¶¶ 75, 76).
Anticipation: Claim 206 was rejected as anticipated by the Fleishman reference under pre-AIA 35 U.S.C. § 102(a) (Compl. ¶¶ 93, 94). The complaint alleges Fleishman does not teach every element of the claim (Compl. ¶95).
Provisional Double Patenting: Several claims (22, 43, 191, 206, 223, and 234) were provisionally rejected for obviousness-type double-patenting over claims in other co-pending Hyatt applications (Compl. ¶¶ 87-91). The complaint argues this is an insufficient basis for rejection because the reference claims have not issued (Compl. ¶92).
No probative visual evidence provided in complaint.
IV. Analyst’s Conclusion: Key Questions for the Case
This case presents a rare § 145 proceeding centered on a patent application with an exceptionally long and contested prosecution history. The court's de novo review will likely focus on several central questions:
A primary legal question will be the applicability of prosecution laches: can the equitable doctrine of prosecution laches, a judicially created defense, be used by the PTO as a statutory basis for rejecting an application, especially one governed by pre-URAA law? The court's decision may turn on whether the plaintiff's conduct during the decades-long prosecution was an unreasonable and unexplained delay that prejudiced the public.
A key evidentiary question will be one of substantive patentability: based on the evidence presented, do the prior art references cited by the PTO (such as Fleishman and Baker) actually render the Subject Claims obvious or anticipated as a matter of law?
A significant procedural question will be the allocation of fault for delay: does the extensive timeline of PTO actions and suspensions, as alleged in the complaint, shift the responsibility for the prolonged prosecution away from the applicant, thereby undermining the basis for the prosecution laches rejection?