DCT

1:24-cv-02290

Hyatt v. Vidal

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I. Executive Summary and Procedural Information

  • Parties & Counsel:

  • Case Identification: 1:24-cv-02290, E.D. Va., 12/16/2024

  • Venue Allegations: Venue is alleged to be proper in the Eastern District of Virginia under 28 U.S.C. § 1391(e) and 35 U.S.C. § 145.

  • Core Dispute: Plaintiff seeks a de novo judicial review of a decision by the Patent Trial and Appeal Board and requests a court order compelling the U.S. Patent and Trademark Office to issue a patent for application serial number 08/464,999.

  • Technical Context: The technology at issue involves methods and systems for computer image processing and graphics generation, specifically synthesizing output information from multiple data sources including memory, communication links, video cameras, radar systems, and satellites.

  • Key Procedural History: The complaint details a prosecution history for the application spanning several decades, originating from a filing in 1995 that claims priority to 1984. Plaintiff alleges this extensive delay is attributable to the U.S. Patent and Trademark Office (“PTO”), citing numerous suspensions of prosecution and the application's inclusion in the former Sensitive Application Warning System (“SAWS”) program, which Plaintiff claims prejudiced its examination. The action follows an October 16, 2024, decision by the Patent Trial and Appeal Board affirming the PTO’s final rejection of the application’s claims on multiple statutory and equitable grounds.

Case Timeline

Date Event
1984-10-19 Earliest Priority Date ('999 Application)
1995-06-02 Plaintiff files the '999 Application
1995-09 PTO issues a non-final office action rejecting all claims
1996-07 PTO issues a final office action rejecting all claims
1998-09 PTO issues a non-final office action rejecting all claims
2000-06 PTO issues a final office action rejecting all claims
2003-10-24 PTO suspends prosecution (first of at least seven occasions)
2013-10 PTO issues a “Requirement” action
2018-04 PTO issues a non-final office action rejecting all claims
2019-07 PTO issues a final office action rejecting all claims
2020-02 PTO issues a final office action rejecting all claims
2024-10-16 Patent Trial and Appeal Board issues decision affirming rejections
2024-12-16 Complaint Filing Date

II. Technology of Application-at-Issue Analysis

This action concerns U.S. Patent Application Serial No. 08/464,999 (“’999 Application”).

  • The Invention Explained:

    • Problem Addressed: The complaint does not contain a formal background section defining a specific problem. However, the described technology implies a need for systems capable of processing and displaying complex, synthesized information generated in real time from a combination of stored data and live sensor inputs (Compl. ¶ 13).
    • The Proposed Solution: The invention, as described by the subject matter of its claims, involves methods for processing information from multiple sources—such as memory, communication links, video cameras, radar, and satellites—to generate and output various forms of synthesized information (Compl. ¶ 13). Specific processing techniques mentioned include generating "radial information," using "shaded kernel filtered information," and performing "pattern recognition processing of rotating 3D perspective information" to generate outputs like maps and weather data (Compl. ¶ 13a, 13b, 13e, 13f).
    • Technical Importance: With a priority date of 1984, the application relates to early concepts in real-time computer graphics and data synthesis, a foundational technology for modern digital mapping, sensor fusion, and advanced display systems (Compl. ¶ 10).

  • Key Claims at a Glance:

    • The complaint states that Plaintiff is seeking issuance of a patent on 377 claims, identified as the "Subject Claims" (Compl. ¶ 11).
    • The complaint does not identify any specific independent claims or reproduce their language, but it summarizes the subject matter as being generally directed to the processing techniques described above (Compl. ¶ 13).
    • The complaint challenges PTO rejections for specific claims, including Claim 117 (written description, double patenting), Claim 172 (written description, double patenting), Claim 197 (obviousness), Claim 230 (obviousness), Claim 319 (written description), and Claim 417 (written description, obviousness) (Compl. ¶¶ 52, 72-74, 77-78).

No probative visual evidence provided in complaint.

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

As this is a § 145 action for issuance of a patent rather than an infringement suit, the central issues will not concern claim construction for infringement but rather the propriety of the PTO’s rejections. The case will likely turn on the following open questions for the court:

  • A central equitable issue will be one of prosecution laches: will the court, upon de novo review, find that the decades-long prosecution history constitutes an unreasonable and unexplained delay attributable to the applicant, thereby forfeiting the right to a patent, or will the evidence support the Plaintiff's allegation that the delay was primarily caused by the PTO's own actions and inaction?

  • A key patentability question will be one of written description: does the application's disclosure, as of its 1984 effective priority date, contain sufficient detail to demonstrate to a person of ordinary skill that the inventor was in possession of the full scope of the 377 asserted claims, particularly for broad claims covering the synthesis of data from varied and advanced sources like satellites and radar?

  • An evidentiary question will concern obviousness: would the combination of prior art references cited by the PTO have rendered certain claims obvious to a person of ordinary skill in the art at the time of the invention, or will the Plaintiff demonstrate that the claimed subject matter was non-obvious over those references?