DCT
1:25-cv-00588
Hyatt v. Stewart
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Gilbert P. Hyatt (Nevada)
- Defendant: Coke Morgan Stewart, in her official capacity as Acting Director of the U.S. Patent and Trademark Office (Virginia)
- Plaintiff’s Counsel: Baker & Hostetler LLP
- Case Identification: 1:25-cv-00588, E.D. Va., 04/07/2025
- Venue Allegations: Venue is based on 35 U.S.C. § 145, which provides for civil actions against the Director of the U.S. Patent and Trademark Office.
- Core Dispute: Plaintiff seeks a court order compelling the U.S. Patent and Trademark Office (PTO) to issue a patent on an application filed in 1995, challenging the Patent Trial and Appeal Board's final decision affirming rejections on grounds including prosecution laches, lack of written description, undue multiplicity, and obviousness.
- Technical Context: The technology at issue involves advanced image processing and artificial intelligence, specifically relating to the use of satellite imagery, relational databases, and kernel filtering for pattern recognition and image generation.
- Key Procedural History: The complaint alleges a uniquely protracted prosecution history spanning nearly three decades, including placement in the PTO's former "Sensitive Application Warning System" (SAWS), multiple PTO-initiated suspensions of prosecution, and a final rejection by the Patent Trial and Appeal Board, which Plaintiff alleges was the result of a "decades-long campaign" by the PTO to prevent issuance.
Case Timeline
| Date | Event |
|---|---|
| 1984-10-19 | Priority Date (Filing of parent application 06/663,094) |
| 1995-06-06 | '123 Application filed |
| 1995-09-01 | Preliminary amendment filed |
| 1995-09-01 | PTO sends non-final office action |
| 1995-11-01 | PTO withdraws and replaces September 1995 office action |
| 1996-04-01 | Plaintiff responds to office action |
| 1996-06-01 | PTO sends final office action |
| 1996-11-01 | Plaintiff files notice of appeal |
| 1997-03-01 | Plaintiff makes submission under Rule 129(a) |
| 1997-08-01 | Plaintiff files supplemental amendment |
| 1997-08-01 | PTO sends final office action with restriction requirement |
| 1997-10-01 | Plaintiff files request for reconsideration |
| 1997-12-01 | Plaintiff files supplemental amendment |
| 1998-10-01 | PTO sends non-final office action |
| 1999-04-01 | Plaintiff responds and files supplemental amendment |
| 2001-03-01 | PTO sends final office action |
| 2001-09-01 | Plaintiff files notice of appeal |
| 2002-03-01 | Plaintiff makes submission under Rule 129(a) |
| 2002-04-01 | Plaintiff files supplemental amendment |
| 2003-04-01 | Plaintiff files supplemental amendment |
| 2004-10-01 | Plaintiff files supplemental amendment |
| 2004-12-01 | PTO sends non-final office action |
| 2005-06-01 | Plaintiff responds to office action |
| 2005-09-01 | PTO sends final office action |
| 2006-03-01 | Plaintiff files notice of appeal |
| 2006-09-01 | Plaintiff files appeal brief |
| 2007-04-25 | PTO suspends prosecution |
| 2008-03-17 | PTO suspends prosecution |
| 2008-12-30 | PTO suspends prosecution |
| 2009-09-24 | PTO suspends prosecution |
| 2010-04-19 | PTO suspends prosecution |
| 2011-09-23 | PTO suspends prosecution |
| 2013-10-01 | PTO sends "Requirement" action |
| 2014-03-01 | Plaintiff responds to "Requirement" |
| 2015-01-01 | PTO sends non-final office action |
| 2015-07-01 | Plaintiff responds to office action |
| 2015-09-01 | PTO sends notice of non-compliant amendment |
| 2016-03-01 | Plaintiff responds |
| 2018-09-01 | PTO sends non-final office action |
| 2019-03-01 | Plaintiff responds to office action |
| 2019-08-01 | PTO sends final office action |
| 2020-02-01 | Plaintiff files notice of appeal with amendment |
| 2020-09-01 | Plaintiff files appeal brief |
| 2022-01-01 | PTO sends examiner's answer |
| 2022-06-01 | Plaintiff files reply brief |
| 2025-02-06 | PTAB decision affirms rejections |
| 2025-04-07 | Complaint filed |
II. Technology and Patent Application-in-Suit Analysis
U.S. Patent Application Serial No. 08/471,123 (the "'123 Application")
The Invention Explained
The complaint alleges that the "Subject Claims" of the '123 Application are generally directed to one of four categories of subject matter (Compl. ¶13). These include:
- Processing satellite image information with a relational database to display an image or perform pattern recognition (Compl. ¶13.a).
- Outputting communication information to a remote ground station for image display based on transform processing and spatially compressed data from a relational database (Compl. ¶13.b).
- Performing pattern recognition or artificial intelligence processing based on kernel filtering of rotating video image information, which is derived from inertial, GPS, and other data sources (Compl. ¶13.c).
- Generating 3D perspective images or performing pattern recognition based on shaded kernel filter processing of communicated information and data from a relational database (Compl. ¶13.d).
Key Claims at a Glance
The complaint seeks issuance of a patent on 303 claims, identified as the "Subject Claims" (Compl. ¶¶ 11-12). The complaint does not provide the full text of any independent claims, but alleges that each claim has "ascertainable differences in scope" from claims in co-pending applications and from each other (Compl. ¶¶ 13, 70).
III. Analysis of Patentability Disputes
This action is a de novo challenge to the PTO's final rejection of the '123 Application. The complaint identifies four primary grounds of rejection that were affirmed by the Patent Trial and Appeal Board and which the Plaintiff contends are erroneous (Compl. ¶¶ 53, 56, 67, 72).
| Rejection Ground | PTO's Position (as alleged in Complaint) | Plaintiff's Counter-Argument (as alleged in Complaint) | Complaint Citation |
|---|---|---|---|
| Prosecution Laches | The '123 Application was held entirely forfeited under the equitable doctrine of prosecution laches. | The rejection is erroneous because: any delay is attributable to the PTO's action or inaction; Plaintiff's actions did not constitute an egregious misuse of the patent system; the PTO failed to provide adequate warning; and the PTO has "unclean hands." | ¶¶ 56-66 |
| Lack of Written Description (pre-AIA 35 U.S.C. § 112, first para.) | Subject Claims 143, 161, 206, 256, 573, and 625 allegedly lack written description support in the specification. | The disclosure of the '123 Application describes the subject matter such that a person of ordinary skill would understand the inventor was in possession of the invention as of the effective filing date. | ¶¶ 53-55 |
| Undue Multiplicity (pre-AIA 35 U.S.C. § 112, second para.) | All Subject Claims allegedly fail to distinctly claim the subject matter under the doctrine of undue multiplicity. | Each of the Subject Claims informs with reasonable certainty about its scope, distinctly claims the invention, and has ascertainable differences in scope from other claims. | ¶¶ 67-71 |
| Obviousness (pre-AIA 35 U.S.C. § 103) | Subject Claim 161 is allegedly obvious over U.S. Patent No. 4,232,313 (Fleishman) and U.S. Patent No. 4,463,380 (Hooks). | Subject Claim 161 would not have been obvious to a person of ordinary skill in the art as of the effective filing date, based on the cited references or their combination. | ¶¶ 72-75 |
No probative visual evidence provided in complaint.
IV. Key Claim Terms for Construction
The complaint does not provide the full text of the asserted claims, precluding an analysis of specific claim terms for construction. The disputes appear to center on the application of legal doctrines (prosecution laches, undue multiplicity) and broad assessments of the disclosure (written description, obviousness) rather than the construction of specific, narrow claim terms.
V. Other Allegations
- PTO Misconduct: The complaint makes extensive allegations of improper conduct by the PTO intended to prevent the issuance of Plaintiff's patents (Compl. ¶¶ 50-52). These allegations include:
- Placing the '123 Application and others into the "Sensitive Application Warning System" (SAWS) to prevent allowance, even when an examiner wished to allow the application (Compl. ¶¶ 17, 50).
- Engaging in a "concerted action" and "decades-long campaign" to prevent issuance, including placing applications in "administrative purgatory" (Compl. ¶¶ 50-51).
- Acting in "bad faith" and prejudicing the proceedings underlying the '123 Application (Compl. ¶52).
- The allegation that the PTO has "unclean hands," which is presented as a reason why the prosecution laches rejection is erroneous (Compl. ¶66).
VI. Analyst’s Conclusion: Key Questions for the Case
This case presents a request for judicial review of a PTO patentability determination after an exceptionally long and contentious prosecution history. The outcome may turn on the following central questions:
- A primary issue will be one of equitable forfeiture: Does the factual record of the nearly 30-year prosecution history demonstrate an "unreasonable and unexplained delay" attributable to the applicant that constitutes an "egregious misuse" of the patent system sufficient to support the defense of prosecution laches, or do the applicant's allegations of PTO-caused delays and misconduct negate this defense?
- A second issue concerns the standard of review: In this § 145 action providing for de novo consideration, what weight will the court give to the PTO's underlying factual findings and legal conclusions regarding the substantive rejections for lack of written description, undue multiplicity, and obviousness, particularly in light of the allegations of procedural irregularities and bad faith?
- A third question is one of claim scope and support: Can the applicant demonstrate that the hundreds of "Subject Claims," when read in light of the specification, are adequately described, distinct from one another, and non-obvious, thereby overcoming the specific statutory rejections maintained by the Patent Trial and Appeal Board?