Gilbert P Hyatt v. Derrick Brent

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Gilbert P. Hyatt (Nevada)
  • Defendant: Derrick Brent, Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the United States Patent and Trademark Office (Official Capacity)
  • Plaintiff’s Counsel: Baker & Hostetler LLP
• Case Identification: 1:25-cv-00002, E.D. Va., 01/01/2025
• 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 U.S. Patent and Trademark Office (PTO) to issue a patent for his long-prosecuted application, challenging the PTO's final rejections on grounds including lack of written description, prosecution laches, undue multiplicity, and obviousness.
• Technical Context: The application relates to computer-controlled image processing systems, specifically processes for generating rotated images and feedback information based on photographic or moving picture data.
• Key Procedural History: The complaint details a prosecution history for the '138 Application spanning nearly three decades, alleging multiple suspensions of examination by the PTO and placement in the "Sensitive Application Warning System" (SAWS), which allegedly prejudiced the application's review. Plaintiff asserts that any delays are attributable to the PTO's actions and inaction, forming the basis for his challenge to the rejection for prosecution laches.

Case Timeline

II. Technology and Application-in-Suit Analysis

U.S. Patent Application Serial No. 08/456,138

The Invention Explained

The complaint does not contain a background section or detailed description from the application itself. It alleges that the "Subject Claims" are generally directed to two types of processes involving computer-controlled imaging (Compl. ¶13).

• The Patented Solution (as alleged): The first process involves generating rotated image information or transducer array information, and also generating feedback information, based on image data captured by a camera (Compl. ¶13a). This process uses command information generated by a computer system that considers both feedback and ambient illumination data (Compl. ¶13a). The second process is similar but generates control information based on feedback, stored memory information, and user input, without reference to video camera information (Compl. ¶13b).

Key Claims at a Glance

The complaint identifies 245 "Subject Claims" by number but does not provide the text of any specific claim (Compl. ¶11). Analysis of specific claim elements is therefore not possible based on the complaint.

III. Analysis of Disputed PTO Rejections

This action seeks de novo review of the PTO's patentability rejections, which form the core of the dispute (Compl. ¶2, ¶47). The complaint challenges the following grounds for rejection affirmed by the Patent Trial and Appeal Board (PTAB) (Compl. ¶46).

Written Description Rejection (35 U.S.C. § 112)

• The PTO rejected a subset of claims (including 167, 169, 191, and others) for an alleged lack of written description (Compl. ¶50). This type of rejection asserts that the application's specification does not adequately describe the claimed invention, such that a person of ordinary skill in the art would not have recognized that the inventor possessed the invention at the time of filing.
• Plaintiff alleges this rejection is erroneous, stating that the disclosure of the '138 Application does describe the claimed subject matter in a manner sufficient to demonstrate possession as of the effective filing date (Compl. ¶51-52).

Prosecution Laches Rejection

• The PTO rejected all Subject Claims under the equitable doctrine of prosecution laches, which can bar patent issuance if an applicant's unreasonable and unexplained delay in prosecution causes prejudice (Compl. ¶53).
• Plaintiff alleges this rejection is erroneous for multiple reasons, arguing primarily that any delay is attributable to the PTO's own actions and inaction, not the applicant (Compl. ¶57). The complaint cites at least five separate occasions where the PTO suspended prosecution and alleges that the PTO failed to act on the merits for a period of nearly 14 years after an examiner interview (Compl. ¶16, ¶27). Plaintiff further argues he never made a dilatory filing (Compl. ¶16).

Undue Multiplicity Rejection (35 U.S.C. § 112)

• The PTO rejected all Subject Claims for allegedly failing to distinctly claim the invention due to undue multiplicity (Compl. ¶64). This rejection is based on the idea that an excessive number of claims, or claims that are not meaningfully distinct, can obscure the scope of the invention.
• Plaintiff alleges that each of the Subject Claims provides reasonable certainty about its scope and distinctly claims the subject matter (Compl. ¶65-66). It is further alleged that the claims have "ascertainable differences in scope" from each other and from claims in co-pending applications (Compl. ¶67-68).

Obviousness Rejection (35 U.S.C. § 103)

• The PTO rejected a subset of claims as obvious over combinations of prior art, including U.S. Patent Nos. 3,576,393 ("Thompson"), 3,757,306 ("Boone"), and 3,743,405 ("Morse") (Compl. ¶70-71).
• Plaintiff alleges these rejections are erroneous, stating that the claimed subject matter would not have been obvious to a person of ordinary skill in the art based on these references (Compl. ¶72). The cited prior art generally relates to foundational technologies in automatic exposure control for cameras (Thompson, Morse) and early single-chip central processing units (Boone). An obviousness dispute may therefore center on whether it would have been obvious to combine these distinct technological fields in the manner claimed in the '138 Application.

No probative visual evidence provided in complaint.

IV. Allegations of USPTO Procedural Misconduct

The complaint contains significant allegations that the prosecution was prejudiced by improper PTO conduct, beyond ordinary examination disputes.

• SAWS Program: The complaint alleges that all of Mr. Hyatt's applications, including the '138 Application, were subjected to the "Sensitive Application Warning System ('SAWS')" from the late 1990s through 2015 (Compl. ¶17). It is alleged that under SAWS, examiners lacked authority to allow the applications and were directed to consider "factors that are irrelevant to the statutory criteria for patentability" (Compl. ¶17).
• Alleged "Campaign" to Prevent Issuance: Plaintiff alleges a "decades-long campaign to prevent Mr. Hyatt from obtaining further patents," including placing applications in SAWS, "recycling" applications by reopening prosecution after a successful appeal, and placing applications in "administrative purgatory" (Compl. ¶47). The complaint further alleges that the PTO acted in bad faith and prejudiced the proceedings (Compl. ¶49).

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

As this is a § 145 action for de novo review rather than an infringement suit, the central questions for the court will differ significantly from a typical patent case. The analysis will likely focus on the following issues:

1. A central question of causation for delay: Does the evidentiary record of the nearly 30-year prosecution history show an "unreasonable and unexplained delay" attributable to the applicant, sufficient to support the defense of prosecution laches, or were the delays primarily caused by the PTO's own administrative processes, suspensions, and alleged institutional obstruction?
2. A core issue of statutory compliance: On a fresh review of the evidence, does the '138 Application's specification provide sufficient written description for the claims at issue, and are the claims distinct enough to avoid rejection for undue multiplicity under 35 U.S.C. § 112?
3. A key question of technical obviousness: Would a person of ordinary skill in the art in the early 1970s, with knowledge of prior art such as automated camera exposure controls (Thompson, Morse) and early CPU architecture (Boone), have found it obvious to combine these elements to arrive at the computer-controlled imaging processes claimed by the applicant?