DCT

1:25-cv-00178

Hyatt v. Stewart

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:25-cv-00178, E.D. Va., 01/31/2025
  • Venue Allegations: Venue is alleged as proper in the Eastern District of Virginia pursuant to 28 U.S.C. § 1391(e) and 35 U.S.C. § 145.
  • Core Dispute: This is a civil action under 35 U.S.C. § 145 in which Plaintiff seeks a court order compelling the U.S. Patent and Trademark Office (USPTO) to issue a patent on an application relating to sonar data processing, following a final rejection by the Patent Trial and Appeal Board.
  • Technical Context: The technology at issue involves various methods of processing sonar data—including pattern recognition, correlation processing, and Kalman filtering—for applications such as controlling machinery or aircraft.
  • Key Procedural History: The complaint details a prosecution history for the application spanning several decades, alleging that the USPTO subjected the application to the Sensitive Application Warning System ("SAWS") program, which prejudiced its examination. Plaintiff challenges the USPTO’s final rejections on grounds including lack of written description, prosecution laches, undue multiplicity, and non-statutory double-patenting.

Case Timeline

Date Event
1972-12-05 U.S. Patent No. 3,705,391 (Baker) issues
1973-06-05 U.S. Patent No. 3,737,122 (Solov) issues
1973-12-04 U.S. Patent No. 3,777,131 (Llewellyn) issues
1974-01-01 U.S. Patent No. 3,783,441 (Slawsky) issues
1975-02-14 Earliest Priority Date claimed for '586 Application (via U.S. App. No. 05/550,231)
1976-08-17 U.S. Patent No. 3,975,731 (Latham) issues
1980-05-06 U.S. Patent No. 4,202,048 (Edwards) issues
1995-04-10 '586 Application is filed
1995-08-XX PTO issues final office action rejecting all claims
1996-11-XX PTO issues final office action rejecting all claims
2001-10-XX PTO issues final office action rejecting all claims
2006-07-XX PTO issues final office action rejecting all claims
2017-12-XX PTO issues final office action rejecting all claims
2024-12-03 Patent Trial and Appeal Board issues decision affirming rejections
2025-01-31 Complaint is filed

II. Technology and Application-in-Suit Analysis

This action does not involve an issued patent-in-suit. Instead, Plaintiff seeks to obtain a patent on U.S. Patent Application Serial No. 08/419,586.

Application Identification

  • U.S. Patent Application Serial No. 08/419,586 (the "'586 Application")

The Invention Explained

  • Problem Addressed: The complaint does not provide sufficient detail for analysis of the specific technical problem addressed by the invention.
  • The Patented Solution: The application is directed to methods of processing sonar data (Compl. ¶13). The subject matter involves filtering such data using specific techniques—including pattern recognition, correlation processing, Kalman filtering, recursive filtering, and Fourier transforms—and then using the processed data to control a machine or aircraft, or to output the data via a microwave link (Compl. ¶13).
  • Technical Importance: The complaint does not provide sufficient detail for analysis of the technology's importance in the relevant field and time period.

Key Claims at a Glance

  • The complaint states that 253 claims are at issue (the "Subject Claims") but does not provide the text of any specific claim for analysis (Compl. ¶11).

III. Summary of Alleged USPTO Errors

Plaintiff alleges that the USPTO's rejections of the Subject Claims are erroneous and seeks de novo review from the court (Compl. ¶¶ 2, 51). The complaint outlines several grounds of rejection that Plaintiff contests.

  • The Written Description Rejection: The complaint alleges the USPTO erroneously rejected numerous claims for an alleged lack of written description under pre-AIA 35 U.S.C. § 112 (Compl. ¶54). Plaintiff asserts that the application's disclosure is sufficient to demonstrate to a person of ordinary skill in the art that the inventor was in possession of the claimed invention as of the effective filing date (Compl. ¶55).
  • The Prosecution Laches Rejection: Plaintiff argues that the USPTO's rejection of all Subject Claims under the equitable doctrine of prosecution laches is erroneous (Compl. ¶¶ 57-58). The complaint alleges that Plaintiff did not delay prosecution and that any such delay is attributable to the actions or inaction of the PTO itself, including numerous suspensions of examination (Compl. ¶¶ 16, 35, 60-61). The complaint further alleges that the PTO has "unclean hands" in asserting this equitable defense (Compl. ¶67).
  • The Undue Multiplicity Rejections: The complaint contests the USPTO's rejection of all Subject Claims for allegedly failing to distinctly claim the invention under the doctrine of undue multiplicity (Compl. ¶68). Plaintiff asserts that each claim informs with reasonable certainty about its scope and contains specific limitations that distinguish it from other claims in co-pending applications (Compl. ¶¶ 69, 71).
  • The Provisional Double Patenting Rejection: The complaint challenges the USPTO's provisional non-statutory obviousness-type double-patenting rejections (Compl. ¶¶ 73-81). These rejections were based on claims in a co-pending application, some in view of prior art patents such as Baker (U.S. Patent No. 3,705,391) and Edwards (U.S. Patent No. 4,202,048) (Compl. ¶¶ 74, 80). Plaintiff alleges these rejections are erroneous and insufficient to preclude issuance because the reference claims themselves have not issued (Compl. ¶¶ 81-82).

No probative visual evidence provided in complaint.

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

As this is not a patent infringement action, the dispute will not center on claim construction or infringement. Instead, the court will be asked to decide fundamental questions of patentability and administrative process.

  • A central legal question will be one of prosecutorial conduct: does the decades-long prosecution history, including alleged delays by the USPTO and placement in the SAWS program, excuse the applicant from the equitable doctrine of prosecution laches, or did the applicant's own actions contribute to an unreasonable and unexplained delay for which the rejection was proper?
  • A key technical and legal issue will be one of statutory compliance: does the application's disclosure, which claims a 1975 priority date, provide adequate written description under 35 U.S.C. § 112 to support the scope of 253 claims directed to advanced sonar data processing technologies?
  • A final procedural question will be one of judicial review: what is the appropriate level of deference, if any, for the court to give the USPTO's factual and legal determinations on issues like undue multiplicity and double patenting after such an extensive and allegedly prejudiced examination history?