1:22-cv-00326
Gilbert P Hyatt v. Andrew Hirshfeld
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Case Identification: 1:22-cv-00326, E.D. Va., 03/24/2022
- 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 compelling the USPTO to issue a patent on claims from his long-pending application, following a final decision by the Patent Trial and Appeal Board affirming an examiner's rejections.
- Technical Context: The technology relates to computerized image processing, GPS navigation, and infrared imaging for vehicular systems.
- Key Procedural History: The complaint describes a prosecution history for the '152 Application spanning over two decades, alleging numerous suspensions of prosecution by the USPTO. The application was filed pre-URAA and is subject to Transitional Rules. The USPTO rejected the claims on grounds including written description, undue multiplicity, obviousness, and the equitable doctrine of prosecution laches, which the PTAB affirmed.
Case Timeline
| Date | Event |
|---|---|
| 1977-05-23 | Priority Date (U.S. Patent No. 4,179,693) |
| 1979-12-18 | Issue Date (U.S. Patent No. 4,179,693) |
| 1984-10-19 | Priority Date ('152 Application) |
| 1995-06-02 | Filing Date ('152 Application) |
| 1995-09-01 | PTO sends non-final office action rejecting all claims |
| 1996-07-01 | PTO sends final office action rejecting all claims |
| 2015-10-01 | PTO sends final office action; prosecution laches not included as a ground for rejection |
| 2020-02-01 | PTO files Examiner's Answer adding prosecution laches as a new ground of rejection |
| 2022-01-21 | Patent Trial and Appeal Board issues decision affirming rejections |
| 2022-03-24 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
The complaint is an action under 35 U.S.C. § 145 to obtain a patent on U.S. Patent Application Serial No. 08/459,152 (the "'152 Application"), not an infringement action concerning an issued patent (Compl. ¶1). The analysis below addresses the technology of the '152 Application as described in the complaint and the technology of a key prior art reference cited by the USPTO in its rejection.
The '152 Application Technology
The Invention Explained
The complaint describes the subject claims as being directed to methods and apparatuses for processing information received at a ground station from an aircraft or satellite (Compl. ¶14). A specific claim, Subject Claim 288, is directed to a computerized process that generates GPS navigation information, generates and processes infrared image information for a vehicle, and performs pattern recognition on the processed image data (Compl. ¶14, ¶63). The system loads this processed information into a charge storage memory (Compl. ¶14).
U.S. Patent No. 4,179,693
- Patent Identification: U.S. Patent No. 4,179,693, titled “Autonomous, Check-Pointing, Navigational System for an Airborne Vehicle,” issued December 18, 1979 (the “’693 Patent”). This patent is one of several references the USPTO allegedly relied upon to reject Subject Claim 288 as obvious (Compl. ¶66).
The Invention Explained
- Problem Addressed: The patent addresses the problem of cumulative position errors in long-range, pilotless airborne vehicles that use inertial guidance systems. Such systems suffer from inherent drift, which can be exacerbated by weather or propulsion changes, leading to significant deviation from a preselected flight path over time (Compl. ¶66; ’693 Patent, col. 2:37-54).
- The Patented Solution: The invention is an autonomous navigation system that periodically corrects the vehicle's position. It does so by sensing an image of the local terrain at a checkpoint and comparing extracted "terrain features" from that sensed image to features from a corresponding pre-stored reference map (’693 Patent, Abstract). A "feature pattern matcher" compares the sensed and reference features to determine the vehicle's actual position and orientation, generating error signals that update the inertial guidance system to correct its course (’693 Patent, col. 1:52-68, Abstract).
- Technical Importance: This approach provided a method for autonomous, in-flight course correction without reliance on continuous external signals like GPS (which was not yet fully operational), addressing a key limitation of purely inertial navigation for long-range missions (’693 Patent, col. 2:55-60).
Key Claims at a Glance
- The complaint does not assert specific claims of the ’693 Patent, as it is a prior art reference. The patent’s independent claims are 1 and 5.
- Claim 1 (Independent): An autonomous navigational system comprising, in combination:
- means for periodically sensing an image of local terrain at each of a plurality of checkpoints
- means for storing a plurality of reference map images associated with the checkpoints
- means for extracting a plurality of terrain features contained in the sensed image
- means responsive to the extracted features for selectively matching them against the features of the associated reference map image to determine the position and orientation of the sensed map image within the reference map image
- means responsive to the matching means for updating the position and heading coordinates of the airborne vehicle
- The complaint does not mention any dependent claims.
III. The Accused Instrumentality
This section is not applicable, as the complaint is a civil action against the USPTO to obtain a patent, not an infringement action against a product or service.
IV. Analysis of Infringement Allegations
This section is not applicable, as the complaint does not contain infringement allegations.
No probative visual evidence provided in complaint.
V. Key Claim Terms for Construction
The complaint does not provide the full text of the subject claims of the '152 Application or detail a dispute over claim term meaning. Analysis is focused on the grounds for rejection rather than claim construction.
VI. Summary of Disputed PTO Rejections
The complaint seeks de novo review of several grounds for rejection affirmed by the PTAB (Compl. ¶3, ¶72). Plaintiff alleges these rejections are erroneous (Compl. ¶47, ¶49, ¶64, ¶68).
Written Description: The PTO rejected Subject Claim 288 under pre-AIA 35 U.S.C. § 112, first paragraph, for an alleged lack of written description (Compl. ¶45). Plaintiff counters that the disclosure of the '152 Application is sufficient to demonstrate possession of the claimed invention to a person of ordinary skill as of the effective filing date (Compl. ¶46).
Prosecution Laches: The PTO held the entire '152 Application forfeited under the equitable doctrine of prosecution laches (Compl. ¶48). Plaintiff makes several arguments that this rejection is erroneous, including that: (1) any delay was attributable to the PTO's own actions or inaction, including numerous suspensions of prosecution (Compl. ¶17, ¶52); (2) the PTO failed to warn the applicant of the risk of forfeiture (Compl. ¶55); and (3) the PTO unreasonably delayed in asserting the doctrine after decades of prosecution activity (Compl. ¶57).
Undue Multiplicity: The PTO rejected all Subject Claims under pre-AIA 35 U.S.C. § 112, second paragraph, for allegedly failing to distinctly claim the invention under the doctrine of undue multiplicity (Compl. ¶59). Plaintiff contends the claims are not unduly multiplied because each has ascertainable differences in scope from the others (Compl. ¶60, ¶63).
Obviousness: The PTO rejected Subject Claim 288 as obvious under pre-AIA 35 U.S.C. § 103 over a combination of prior art references, including Bolsey (U.S. Patent No. 3,617,016), Evans (’693 Patent), and Acharya (U.S. Patent No. 4,504,909) (Compl. ¶66). Plaintiff alleges the claim would not have been obvious to a person of ordinary skill in the art based on these references (Compl. ¶67).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this case appears to depend on the court’s de novo review of the USPTO's rejections. The central questions for the court are likely to be:
- A central legal and equitable question will be one of proper authority: Did the USPTO properly apply the judicially-created doctrine of prosecution laches to reject an application filed before the URAA, and were the decades of alleged PTO-caused delays and lack of warning sufficient to render the application of the doctrine inequitable in this case?
- A key factual and technical question will be one of statutory compliance: Based on the evidence presented to the court, does the specification of the '152 Application provide adequate written description for the claims, and would the invention of Subject Claim 288 have been obvious to a skilled artisan in light of the prior art cited by the examiner?