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
  • Plaintiff’s Counsel: Baker & Hostetler LLP
• Case Identification: 1:25-cv-00415, E.D. Va., 03/06/2025
• Venue Allegations: Venue is asserted as proper under 28 U.S.C. § 1391(e) and 35 U.S.C. § 145, the statute authorizing a civil action to obtain a patent.
• Core Dispute: Plaintiff seeks a court order compelling the U.S. Patent and Trademark Office (PTO) to issue a patent on long-pending application claims related to computer control systems, following a final rejection by the Patent Trial and Appeal Board (PTAB).
• Technical Context: The technology concerns systems and processes for controlling equipment using signals generated from integrated circuit (IC) program and scratch pad memory.
• Key Procedural History: This action arises from an exceptionally long and contentious patent prosecution history. The complaint alleges that the patent application, filed in 1977 with priority to 1973, has been subjected to decades of prosecution involving numerous PTO-initiated delays and suspensions. A central allegation is that the PTO subjected this and other of the applicant's applications to the "Sensitive Application Warning System" (SAWS), a program Plaintiff claims directed examiners to use non-statutory criteria to prevent issuance. This civil action under 35 U.S.C. § 145 was initiated after a PTAB decision affirmed the PTO's final rejections on multiple grounds, including prosecution laches.

Case Timeline

II. Technology and Application-in-Suit Analysis

U.S. Patent Application Serial No. 05/849,812 - Computer-Based Equipment Control Systems

• Application Identification: U.S. Patent Application Serial No. 05/849,812; Filed November 9, 1977 (Compl. ¶¶9, 13-14).

The Invention Explained

• Problem Addressed: The complaint does not describe a specific technical problem that the invention addresses; its focus is on the application's prosecution history and the grounds for appealing the PTO's rejections (Compl. ¶¶14-119).
• The Patented Solution: The complaint provides a general summary of the claimed subject matter, stating that it is directed to systems or processes for controlling equipment with a pulse width signal (Compl. ¶13). In one set of embodiments, this signal is generated based on instructions and operands from IC program and scratch pad memory, respectively, but without recitation of RAM memory or specific listed types of equipment or operations (Compl. ¶13a). In another set of embodiments, the pulse width signal is generated based on input sound or data link information processed using instructions and operands from IC memory, but without recitation of an interrupt function (Compl. ¶13b).
• 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 asserts that 98 claims ("the Subject Claims") are at issue, including claims 58, 87, 111, 116, 136, and others (Compl. ¶11).
• The complaint does not provide the text of any specific independent claims, which precludes a detailed elemental breakdown of the claimed invention.

III. The Accused Instrumentality

This section is not applicable. The action is a civil action under 35 U.S.C. § 145 against the Director of the PTO to obtain a patent, not a suit for patent infringement against a product or service.

IV. Analysis of Infringement Allegations

This section is not applicable as no infringement is alleged.

V. Key Claim Terms for Construction

This section is not applicable. While the meaning of claim terms is relevant to patentability, the complaint frames the dispute around the PTO's grounds for rejection rather than specific issues of claim construction.

VI. Grounds for Appeal of PTO Rejections

No probative visual evidence provided in complaint.

• Allegations of PTO Misconduct and Bad Faith: The complaint alleges that the PTO engaged in a "decades-long campaign to prevent Mr. Hyatt from obtaining further patents" (Compl. ¶89). Specific allegations include subjecting the application to the "Sensitive Application Warning System ('SAWS')," which purportedly directed examiners to use factors irrelevant to patentability to prevent issuance, and suspending prosecution on at least five occasions (Compl. ¶¶16-17, 89). The complaint further alleges that where the applicant prevailed before the Patent Board, the PTO "recycled" his applications by reopening prosecution (Compl. ¶89).
• Written Description Rejections: The PTO rejected a subset of the Subject Claims, including claims 87 and 116, for an alleged lack of written description under pre-AIA 35 U.S.C. § 112 (Compl. ¶92). Plaintiff asserts this rejection is erroneous, arguing that the disclosure describes the claimed subject matter in a manner that a person of ordinary skill would understand the inventor had possession of the invention as of the effective filing date (Compl. ¶93).
• Prosecution Laches Rejection: The PTO rejected all Subject Claims and held the application "entirely forfeited under the equitable doctrine of prosecution laches" (Compl. ¶95). Plaintiff argues this rejection is erroneous because prosecution laches is not a valid ground of rejection under the Patent Act, because the applicant did not delay prosecution, and because any delay is attributable to the actions or inaction of the PTO (Compl. ¶¶97-99).
• Undue Multiplicity Rejections: The PTO rejected all Subject Claims under pre-AIA 35 U.S.C. § 112, second paragraph, for allegedly failing to distinctly claim the invention under the doctrine of undue multiplicity (Compl. ¶106). Plaintiff contends that each claim informs with reasonable certainty about its scope and has ascertainable differences from other claims (Compl. ¶¶107, 109).
• Obviousness Rejections: The PTO rejected a subset of claims, including 87 and 116, under pre-AIA 35 U.S.C. § 103 as obvious over prior art references, including U.S. Patent Nos. 2,996,137 (Chu/Tribken) and 3,676,846 (Busch) (Compl. ¶¶111-112). Plaintiff asserts the claims would not have been obvious to a person of ordinary skill in the art (Compl. ¶113).
• Double Patenting Rejections: The PTO rejected a subset of claims for non-statutory obviousness-type double patenting over claims in issued patents, including U.S. Patent No. 4,829,419 (Compl. ¶115). Provisional double patenting rejections were also made over claims in a co-pending application (Compl. ¶117).

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

• A central issue will be one of equity and administrative law: whether the extraordinary, decades-long prosecution history, which includes extensive alleged delays and prejudicial handling by the PTO, renders the agency's final rejection for prosecution laches legally erroneous and entitles the applicant to relief.
• A key substantive question for the court's de novo review will be one of patentability: whether the application's disclosure, with a priority date of 1973, provides adequate written description and enablement for the 98 claims at issue and renders them non-obvious over the cited prior art from that era.