1:24-cv-01893
Hyatt v. Vidal
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Gilbert P. Hyatt (Nevada)
- Defendant: Katherine K. Vidal, in her official capacity as Director of the U.S. Patent and Trademark Office
- Plaintiff’s Counsel: Baker & Hostetler LLP
- Case Identification: 1:24-cv-01893, E.D. Va., 10/28/2024
- Venue Allegations: Venue is alleged as proper in the Eastern District of Virginia pursuant to 35 U.S.C. § 145, which governs civil actions by patent applicants against the Director of the U.S. Patent and Trademark Office (PTO).
- Core Dispute: Plaintiff seeks a court order compelling the PTO to issue a patent on an application related to image and data processing, following a final decision by the Patent Trial and Appeal Board affirming the PTO's rejection of the claims.
- Technical Context: The application-in-suit concerns advanced computer graphics and information processing, including generating images from radar and sensor data, artificial intelligence, and pattern recognition.
- Key Procedural History: The complaint alleges an unusually prolonged and contentious prosecution history for the underlying patent application, which was filed in 1995 and claims priority to 1984. Plaintiff alleges that from the late 1990s through 2015, the PTO subjected the application to the "Sensitive Application Warning System" (SAWS), which allegedly prejudiced its examination. The complaint details numerous multi-year periods of PTO inaction, multiple rounds of rejection, and a final board decision in August 2024 affirming rejections based on written description, prosecution laches, undue multiplicity, and obviousness.
Case Timeline
| Date | Event |
|---|---|
| 1984-10-19 | '824 Application Priority Date |
| 1995-06-05 | '824 Application Filing Date |
| 1995-08-01 | Plaintiff files preliminary amendment (approx.) |
| 1995-09-01 | PTO sends non-final rejection (approx.) |
| 1996-03-01 | Plaintiff responds to rejection (approx.) |
| 1996-08-01 | PTO sends final rejection (approx.) |
| 1997-01-01 | Plaintiff files notice of appeal (approx.) |
| 1997-06-01 | Plaintiff makes Rule 129(a) submission (approx.) |
| 1997-08-01 | Plaintiff files supplemental amendment (approx.) |
| 1997-12-01 | Plaintiff files supplemental amendment (approx.) |
| 1999-03-01 | PTO sends non-final rejection (approx.) |
| 1999-09-01 | Plaintiff responds to rejection (approx.) |
| 2000-05-01 | PTO sends final rejection (approx.) |
| 2000-11-01 | Plaintiff files notice of appeal (approx.) |
| 2001-05-01 | Plaintiff makes Rule 129(a) submission (approx.) |
| 2001-06-01 | Plaintiff files amendment (approx.) |
| 2002-07-31 | PTO suspends prosecution |
| 2003-01-31 | PTO suspends prosecution |
| 2003-07-01 | Plaintiff files supplemental amendment (approx.) |
| 2003-08-18 | PTO suspends prosecution |
| 2004-09-01 | PTO sends non-final rejection (approx.) |
| 2005-03-01 | Plaintiff responds and files notice of appeal (approx.) |
| 2005-09-01 | Plaintiff files appeal brief (approx.) |
| 2007-05-11 | PTO suspends prosecution |
| 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 |
| 2013-10-01 | PTO sends "Requirement" action (approx.) |
| 2014-03-01 | Plaintiff responds to Requirement (approx.) |
| 2017-12-01 | PTO sends non-final rejection (approx.) |
| 2018-06-01 | Plaintiff responds to rejection (approx.) |
| 2018-11-01 | PTO sends notice removing response (approx.) |
| 2019-01-01 | Plaintiff refiles response (approx.) |
| 2020-07-01 | PTO sends final rejection (approx.) |
| 2021-01-01 | Plaintiff files notice of appeal with amendment (approx.) |
| 2021-07-01 | Plaintiff files appeal brief and amendment (approx.) |
| 2022-09-01 | PTO sends examiner's answer (approx.) |
| 2023-01-01 | Plaintiff files reply brief (approx.) |
| 2024-08-28 | Patent Trial and Appeal Board affirms rejections |
| 2024-10-28 | Complaint Filing Date |
II. Technology and Application-in-Suit Analysis
U.S. Patent Application Serial No. 08/463,824
- Application Identification: U.S. Patent Application Serial No. 08/463,824 ("the '824 Application"), filed June 5, 1995.
The Invention Explained
- Problem Addressed: The complaint does not contain a background section that explicitly frames a technical problem. The subject matter relates generally to improving computer processing for manufacturing, imaging, and navigation systems (Compl. ¶13).
- The Patented Solution: The "824 Application" claims various processes for generating and manipulating complex image and video data (Compl. ¶13). The described processes involve integrating information from multiple sources, such as radar, sensors, and relational databases, to generate outputs like computer-aided manufacturing (CAM) image information, artificial intelligence or pattern recognition information, and rotated 3D video information (Compl. ¶¶ 13.a, 13.b, 13.c). A recurring element across the described subject matter is the use of information accessed from a memory with a "relational database management capability" combined with sensor data to produce a transformed output (Compl. ¶¶ 13.a-f). Other described processes involve combining and transforming video from multiple cameras to display a 3D perspective environment (Compl. ¶¶ 13.g, 13.h).
- Technical Importance: The complaint does not provide sufficient detail for analysis of the invention's technical importance at the time of filing.
Key Claims at a Glance
- The complaint identifies 201 "Subject Claims" by number but does not provide the text of any specific claims (Compl. ¶11). The general subject matter of these claims is described narratively in the complaint, as detailed above (Compl. ¶13).
- The complaint states Plaintiff is seeking issuance of a patent on the Subject Claims, but not on any other claims in the "824 Application" (Compl. ¶12).
No probative visual evidence provided in complaint.
III. Summary of Alleged PTO Errors
The complaint alleges that the PTO's rejection of the Subject Claims is erroneous and requests the court to authorize issuance of a patent (Compl. ¶¶ 50, 52, 66, 72). The primary grounds for alleged error are summarized below.
Allegations of PTO Bad Faith and Prejudice: The complaint alleges that the PTO acted in bad faith and prejudiced the prosecution of the "824 Application" over several decades (Compl. ¶47). A central factual basis for this allegation is the application's inclusion in the PTO's "Sensitive Application Warning System" (SAWS) from the late 1990s to 2015, which allegedly directed examiners to consider factors irrelevant to patentability and deprived them of authority to allow the application (Compl. ¶17). The complaint further alleges a "decades-long campaign" by the PTO to prevent the application from issuing (Compl. ¶45).
Written Description Rejections: The complaint alleges the PTO erroneously rejected six of the Subject Claims for lacking written description under pre-AIA 35 U.S.C. § 112, first paragraph (Compl. ¶48). Plaintiff alleges the application's disclosure is sufficient to demonstrate to a person of ordinary skill in the art that the inventor had possession of the claimed subject matter as of the effective filing date (Compl. ¶¶ 49-50).
Prosecution Laches Rejection: The PTO rejected all Subject Claims under the equitable doctrine of prosecution laches, which the complaint alleges was erroneous (Compl. ¶51). The complaint argues this rejection is improper because any delays in prosecution were attributable to the PTO's own actions or inaction, not the applicant (Compl. ¶55), and that the applicant's conduct did not constitute an "egregious misuse of the statutory patent system" (Compl. ¶57).
Undue Multiplicity Rejections: The complaint alleges the PTO erroneously rejected all Subject Claims under pre-AIA 35 U.S.C. § 112, second paragraph, for "undue multiplicity" (Compl. ¶62). Plaintiff contends that each of the Subject Claims informs with reasonable certainty about its scope, distinctly claims the subject matter, and has ascertainable differences in scope from each other and from claims in co-pending applications (Compl. ¶¶ 63-65).
Obviousness Rejections: The PTO rejected certain claims under pre-AIA 35 U.S.C. § 103 as being obvious over combinations of prior art references (Compl. ¶67). The cited references include U.S. Patent No. 4,463,372 to Bennett, which relates to spatial transformation systems for video mixing (Compl. ¶¶ 68-70). The complaint asserts that the claimed subject matter would not have been obvious to a person of ordinary skill in the art based on these references (Compl. ¶71).
IV. Analyst’s Conclusion: Key Questions for the Case
This action, brought under 35 U.S.C. § 145, asks the district court for de novo consideration of patentability. The case appears to present two central questions for the court.
- A primary issue will be one of equitable process: Did the PTO's decades-long handling of the "824 Application", including its placement in the SAWS program and extended periods of agency inaction, render the rejection on grounds of prosecution laches improper? The court's review of the extensive and contentious administrative record will be critical to resolving this threshold question.
- A second set of issues will be one of substantive patentability: Upon its own review of the evidence, does the court find that the "824 Application's" specification provides sufficient written description for the claims at issue and that those claims are not obvious over the prior art cited by the PTO? This will require a technical analysis of the application's disclosure relative to the scope of the claims and the teachings of the cited references.