1:25-cv-00557
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 Director of the United States Patent and Trademark Office (Official Capacity)
- Plaintiff’s Counsel: Baker & Hostetler LLP
- Case Identification: 1:25-cv-00557, E.D. Va., 04/01/2025
- 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: Plaintiff seeks a court order under 35 U.S.C. § 145 to issue a patent on claims from a long-pending application, following a final decision by the Patent Trial and Appeal Board affirming an examiner's rejections.
- Technical Context: The patent application at issue relates to computer graphics, specifically methods for processing and storing graphics database information using memory circuits.
- Key Procedural History: The complaint details an unusually long and contentious prosecution history for the patent application, dating back to 1995, with a priority claim to 1984. Plaintiff alleges significant delays attributable to the U.S. Patent and Trademark Office (PTO), including numerous suspensions of prosecution and subjection of the application to the "Sensitive Application Warning System" (SAWS), which allegedly prejudiced its examination. The case follows a February 7, 2025, decision by the Patent Trial and Appeal Board affirming rejections on grounds including lack of written description, indefiniteness, prosecution laches, undue multiplicity, and obviousness.
Case Timeline
| Date | Event |
|---|---|
| 1984-10-18 | Priority Date ('714 Application claims benefit of U.S. App. No. 06/662,211) |
| 1995-06-06 | Plaintiff filed the '714 Application |
| 1995-08-01 | Plaintiff filed a preliminary amendment |
| 1995-09-01 | PTO sent a non-final office action rejecting all claims |
| 1996-03-01 | PTO withdrew previous office action |
| 1996-08-01 | PTO sent a replacement non-final office action |
| 1998-08-01 | PTO sent a final office action rejecting all claims |
| 2013-10-01 | PTO sent a "Requirement" action |
| 2017-10-01 | PTO sent a non-final office action rejecting all claims |
| 2019-06-01 | PTO sent a final office action rejecting all claims |
| 2020-07-01 | PTO sent a final office action rejecting all claims |
| 2025-02-07 | Patent Trial and Appeal Board issued decision affirming rejections |
| 2025-04-01 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
The complaint is an action under 35 U.S.C. § 145 to obtain a patent and does not assert any issued patents-in-suit. This action concerns the patentability of claims in U.S. Patent Application Serial No. 08/471,714. Therefore, an analysis of patents-in-suit is not applicable.
III. The Accused Instrumentality
The complaint does not allege infringement by any product, method, or service. The action is against the Director of the U.S. Patent and Trademark Office to compel issuance of a patent. Therefore, an analysis of an accused instrumentality is not applicable.
IV. Analysis of Infringement Allegations
The complaint does not contain allegations of patent infringement. Instead, it disputes the PTO's grounds for rejecting the claims of the '714 Application, including rejections for lack of written description, indefiniteness, prosecution laches, undue multiplicity, and obviousness (Compl. ¶¶ 56-84). Therefore, an analysis of infringement allegations is not applicable.
No probative visual evidence provided in complaint.
V. Key Claim Terms for Construction
Claim construction is a component of patent infringement and invalidity litigation to determine the scope of issued patent claims. As this case is an appeal of a PTO rejection of unissued claims, a formal claim construction analysis is not applicable in this context. The dispute centers on whether the claims are patentable under various statutory provisions, not on their scope relative to an accused product.
VI. Other Allegations
The complaint does not allege indirect infringement or willful infringement. Therefore, this section is not applicable.
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of prosecution history and equity: can the applicant overcome the equitable doctrine of prosecution laches given a prosecution history spanning several decades? The court will likely have to determine the extent to which the prolonged examination was caused by the applicant's actions versus the PTO's alleged administrative delays, including the use of the SAWS program and multiple suspensions of prosecution.
- A key substantive question will be one of written description and priority: does the disclosure of the 1984 priority application provide adequate written description support under 35 U.S.C. § 112 for the subject claims, as contended by the plaintiff, or is the PTO's rejection on this ground correct?
- The case also raises a fundamental procedural question: what is the proper legal standard and scope of de novo review under 35 U.S.C. § 145 for the various grounds of rejection asserted by the PTO, including both substantive rejections (e.g., obviousness) and procedural or equitable rejections (e.g., prosecution laches)?