Hyatt v. Stewart

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Gilbert P. Hyatt (Nevada)
  • Defendant: Coke Morgan Stewart, Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the United States Patent and Trademark Office (USPTO)
  • Plaintiff’s Counsel: Baker & Hostetler LLP
• Case Identification: 1:25-cv-00179, 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, the statute governing civil actions to obtain a patent.
• Core Dispute: This is not a patent infringement action; rather, Plaintiff seeks a court order under 35 U.S.C. § 145 compelling the USPTO to issue a patent on U.S. Patent Application No. 08/426,554, which the Patent Trial and Appeal Board has rejected.
• Technical Context: The technology relates to microwave data communication systems, specifically those involving the control of equipment using Fourier-transformed information derived from an incoming microwave data link.
• Key Procedural History: The complaint details a prosecution history for the application family spanning several decades. Plaintiff alleges this history includes improper placement of his applications in the USPTO's "Sensitive Application Warning System" (SAWS), multiple rounds of rejection and appeal, a prior successful Federal Circuit appeal (Hyatt v. Dudas), and significant delays allegedly attributable to the USPTO. The complaint frames the dispute as requiring de novo review by the court due to an alleged "decades-long campaign" by the PTO to prevent issuance.

Case Timeline

II. Technology and Application-in-Suit Analysis

• Application Identification: U.S. Patent Application No. 08/426,554 (the “’554 Application”)

The Invention Explained

As the application itself was not provided, the following explanation is based on the complaint's description.

• Problem Addressed: The complaint does not specify a particular problem addressed by the invention.
• The Patented Solution: The claims are generally directed to a system that outputs data onto a microwave data link to control equipment (e.g., a machine, aircraft, or machine tool) (Compl. ¶13). The control is based on Fourier-transformed information, which is itself derived from demodulated information received from a separate input microwave data link (Compl. ¶13). The claims reportedly do not recite a machine transducer, distinguishing them from other co-pending applications (Compl. ¶13).
• Technical Importance: The complaint does not provide sufficient detail for analysis of the invention's technical importance.

Key Claims at a Glance

• The complaint asserts that Plaintiff is seeking issuance of a patent on claims 66, 69, 76, 77, 88, 91, 93, 96, 98, 102, 108, 110, 111, 115, 117, 124, 129, 131, 134–136, 140, 143, 145, 151, 154, and 156 (the “Subject Claims”) (Compl. ¶11).
• The text of the asserted claims is not provided in the complaint.

III. Contested Grounds for Rejection

The complaint seeks de novo review of several grounds for rejection made by the USPTO and affirmed by the Patent Trial and Appeal Board. The core of the legal dispute is whether these rejections were erroneous.

• The Written Description Rejection (35 U.S.C. § 112): The PTO rejected certain claims for an alleged lack of written description support in the '554 Application's disclosure (Compl. ¶66). The complaint argues that the rejection is erroneous, contending that the disclosure would lead a person of ordinary skill in the art to understand that the inventor had possession of the claimed invention as of the effective filing date (Compl. ¶67-68).

• The Prosecution Laches Rejection: The PTO held the entire '554 Application forfeited under the equitable doctrine of prosecution laches (Compl. ¶69). The complaint presents several arguments that this rejection is erroneous, including that: (1) prosecution laches is not a valid ground for rejection under the Patent Act for an application subject to the URAA Transitional Rules; (2) the applicant did not delay prosecution, and any such delay is attributable to the PTO's actions or inaction; and (3) the PTO has "unclean hands" due to its alleged conduct during prosecution (Compl. ¶71-79).

• The Undue Multiplicity Rejection (35 U.S.C. § 112): The PTO rejected all Subject Claims for allegedly failing to distinctly claim the invention under the doctrine of undue multiplicity (Compl. ¶80). The complaint counters that each claim informs of its scope with reasonable certainty and distinctly claims the subject matter (Compl. ¶81-82). It further alleges that the claims are distinguished from claims in other applications by being directed to the subject matter identified in paragraph 13 (Compl. ¶83).

• The Obviousness Rejections (35 U.S.C. § 103): The PTO rejected certain claims as obvious over various combinations of prior art references (Compl. ¶85). The complaint alleges these rejections are erroneous and that the claims would not have been obvious to a person of ordinary skill as of the effective filing date (Compl. ¶89-90). The cited references include U.S. Patent Nos. 3,705,391 (“Baker”) and 3,706,929 (“Robinson”) (Compl. ¶87-88).

  Analysis of U.S. Patent No. 3,705,391 (Baker)

  This patent is titled “Memory System Employing Capacitance Storage Means” and issued on December 5, 1972. It addresses the need for reliable, lightweight, and low-power memory systems, particularly for applications like space vehicles (Baker Patent, col. 1:16-24). The patented solution involves converting digital message units into multi-level analog voltage signals and storing those voltages on an array of individual capacitances (Baker Patent, Abstract). A key feature is a comparator-based feedback system for periodically "updating" or restoring the charge on the capacitors to compensate for leakage, which is a known issue with transistor-based switches (Baker Patent, Abstract; col. 2:32-45).

  Analysis of U.S. Patent No. 3,706,929 (Robinson)

  This patent, titled “Combined Modem and Vocoder Pipeline Processor,” issued on December 19, 1972. The invention is directed to reducing the hardware requirements and processing time for systems that perform both vocoder (voice coding/decoding) and data modem functions (Robinson Patent, col. 1:9-41). The solution is a digital pipeline processing architecture using three circulating memories and two associated arithmetic units that are shared to implement the functions of both vocoder spectrum analysis and modem modulation/demodulation (Robinson Patent, Abstract).

• The Provisional Double Patenting Rejection: The PTO also issued a provisional non-statutory obviousness-type double-patenting rejection over a claim in a co-pending application (Compl. ¶91). The complaint argues this rejection is insufficient to preclude issuance because the reference claim itself has not issued into a patent (Compl. ¶93).

No probative visual evidence provided in complaint.

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

This § 145 action will require the court to conduct a de novo review of the USPTO's decision to refuse a patent. The case appears to turn on three central questions:

• A central issue will be one of equitable conduct: Will the court find that the decades-long prosecution of this application family constitutes an unreasonable and unexplained delay attributable to the applicant, thereby justifying the PTO's finding of prosecution laches? Or will the court accept the complaint's narrative that the delay was primarily caused by the PTO's own actions, inaction, and alleged institutional "campaign" against the inventor?
• A key question on the merits will be one of statutory patentability: Independent of the prosecution history, does the '554 Application's disclosure provide sufficient written description to support the subject claims as of its 1975 priority date, and are those claims non-obvious over the prior art combinations asserted by the PTO?
• A final question will be one of judicial deference: In its de novo review, how much weight will the court afford the factual findings and legal conclusions of the expert agency (the USPTO and its PTAB), particularly in light of the extensive and contentious procedural history alleged in the complaint?