DCT

1:25-cv-00780

Hyatt v. Stewart

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:25-cv-00780, E.D. Va., 05/06/2025
  • Venue Allegations: Venue is based on 35 U.S.C. § 145, which provides for civil action against the Director of the USPTO in the U.S. District Court for the Eastern District of Virginia by a patent applicant dissatisfied with a decision of the Patent Trial and Appeal Board (PTAB).
  • Core Dispute: Plaintiff, a patent applicant, seeks a court order compelling the USPTO to issue a patent on his '600 Application, arguing that the PTAB's decision affirming the examiner's rejections of his claims was erroneous and that the USPTO has engaged in a decades-long campaign of bad faith to prevent the patent from issuing.
  • Technical Context: The application relates to foundational technologies in computer graphics and image processing, including methods for transforming, compressing, and displaying digital images using techniques like temporal interpolation and relational databases.
  • Key Procedural History: The complaint details an exceptionally long and contentious prosecution history for the '600 Application, which was filed in 1995 but claims priority to 1984. The Plaintiff alleges that the USPTO subjected the application to the "Sensitive Application Warning System" (SAWS), which prejudiced its examination, and engaged in numerous and lengthy suspensions of prosecution. The action follows a March 6, 2025, decision by the PTAB affirming the examiner’s final rejections on multiple statutory grounds.

Case Timeline

Date Event
1984-10-19 Priority date of '600 Application claimed from U.S. Patent Application No. 06/663,094
1995-06-06 '600 Application filed
1995-09-01 Plaintiff files preliminary amendment
1996-06-01 PTO sends final office action rejecting all claims
1997-08-01 PTO sends second final office action rejecting all claims
1999-08-01 PTO sends third final office action rejecting all claims
2002-02-01 PTO sends non-final office action after over a year of inaction
2005-01-01 PTO sends final office action rejecting all claims
2006-03-01 Plaintiff files appeal brief, followed by over seven years of PTO inaction
2013-10-01 PTO sends a "Requirement" action
2015-09-01 PTO sends non-final office action rejecting all claims
2020-07-01 PTO sends final office action rejecting all claims
2021-06-01 PTO sends final office action rejecting all claims
2025-03-06 PTAB issues decision affirming rejections of the Subject Claims
2025-05-06 Complaint filed in E.D. Va.

II. Technology and Patent Application-in-Suit Analysis

This action concerns a patent application, not an issued patent. The analysis is based on the description of the application provided in the complaint.

U.S. Patent Application No. 08/466,600 ('600 Application)

The Invention Explained

  • Problem Addressed: The complaint does not specify a particular problem addressed by the invention.
  • The Patented Solution: The complaint alleges the "Subject Claims" are generally directed to several areas of image and data processing (Compl. ¶13). These include: (a) a system for displaying an operator's movement in a 3D environment using data from an inertial navigation system and a relational database, with the output being processed through pre- and post-filtering; (b) generating interpolated image frames between existing frames using vector information to create smooth motion; (c) displaying a sequence of images including such temporally interpolated frames; and (d) generating and rotating 64-pixel blocks of image information based on computer instructions and video camera input (Compl. ¶13).
  • Technical Importance: The complaint does not provide sufficient detail for analysis of this element.

Key Claims at a Glance

  • The complaint seeks issuance of a patent on 382 "Subject Claims" (Compl. ¶11). It specifically identifies Claims 119, 236, and 285 as having been rejected on grounds of lacking written description, with Claim 119 also rejected for indefiniteness and Claim 285 rejected for obviousness (Compl. ¶59, ¶62, ¶83).
  • The complaint does not provide the text of any claims. It summarizes the general subject matter of the claims in four broad categories (Compl. ¶13).

III. The Accused Instrumentality

This section is not applicable, as the action is a suit against the USPTO to obtain a patent, not an infringement action against a product or service.

IV. Analysis of Patentability Rejections

The complaint challenges the PTAB's affirmance of the USPTO's rejections on several grounds. This action seeks de novo review of the applicant's entitlement to a patent, where the court may consider these issues anew (Compl. ¶2). No probative visual evidence provided in complaint.

  • Written Description and Indefiniteness (§ 112): The complaint alleges the USPTO erroneously rejected Claims 119, 236, and 285 for lacking written description and Claim 119 for being indefinite (Compl. ¶59, ¶62). The Plaintiff contends that the disclosure of the '600 Application is sufficient to demonstrate possession of the invention to one of ordinary skill in the art as of the effective filing date and that the claims inform those skilled in the art about the scope of the invention with reasonable certainty (Compl. ¶60, ¶63).
  • Prosecution Laches: The USPTO rejected the claims under the equitable doctrine of prosecution laches, holding the application forfeited (Compl. ¶65). The Plaintiff argues this rejection is erroneous because, among other reasons, the applicant did not delay prosecution, any delays were attributable to the USPTO's own actions or inaction, and the doctrine is not a valid ground for rejection for an application governed by the URAA Transitional Rules (Compl. ¶67-75).
  • Undue Multiplicity (§ 112): The USPTO rejected all Subject Claims for allegedly failing to distinctly claim the invention under the doctrine of undue multiplicity (Compl. ¶76). The Plaintiff counters that each claim has ascertainable differences in scope and distinctly claims the subject matter (Compl. ¶77-79).
  • Obviousness (§ 103):
    • The USPTO rejected Claim 236 as obvious over the combination of U.S. Patent No. 4,302,775 to Widergren et al. and U.S. Patent No. 4,835,532 to Fant (Compl. ¶82). Widergren discloses a system for digital video compression using adaptive coding and a rate buffer for feedback control. Fant discloses a system for real-time spatial transformation of images to map an input image onto a viewing plane. The dispute raises the question of whether a person of ordinary skill would have been motivated to combine Widergren's compression system with Fant's spatial transformation methods to arrive at the invention of Claim 236.
    • The USPTO also rejected Claim 285 as obvious over the combination of Fant and U.S. Patent No. 4,288,858 to Merola et al. (Compl. ¶83). Merola discloses a processor for performing inverse two-dimensional transforms on high-speed analog data using matrix multipliers. The question for the court is whether combining Merola's transform processor with Fant's image mapping system would have rendered the invention of Claim 285 obvious.
  • Provisional Double Patenting: The complaint states the USPTO provisionally rejected Claims 119 and 285 for non-statutory obviousness-type double-patenting over claims in other co-pending Hyatt applications (Compl. ¶86-87). Plaintiff argues these rejections are erroneous and, in any event, insufficient to preclude issuance because the reference applications have not themselves issued as patents (Compl. ¶88-89).

V. Key Claim Terms for Construction

The complaint does not provide the literal text of any claims from the '600 Application. Therefore, a detailed analysis of specific claim terms for construction is not possible based on the provided documents. The complaint does note, however, that the PTO rejected Subject Claim 119 as indefinite, indicating that the meaning and scope of its terms are a central point of dispute (Compl. ¶62).

VI. Other Allegations

  • Allegations of USPTO Misconduct: The complaint contains extensive allegations of improper conduct by the USPTO. It alleges a "decades-long campaign to prevent Mr. Hyatt from obtaining further patents" (Compl. ¶56). Central to this allegation is the placement of the '600 Application and others into the "Sensitive Application Warning System" (SAWS), which allegedly "prejudiced the PTO in its consideration" by directing examiners to consider factors irrelevant to patentability and preventing allowance (Compl. ¶17, ¶56).
  • Allegations of Delay: The complaint chronicles numerous and lengthy periods of delay and suspension of prosecution allegedly caused by the USPTO (Compl. ¶16, ¶25, ¶29, ¶31, ¶37). The Plaintiff argues that these delays, rather than any action by the applicant, are the reason for the application's protracted pendency and that the USPTO acted in bad faith (Compl. ¶58, ¶69).

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

This case presents a rare de novo judicial review of a patent application's prosecution history and patentability. The court's decision will likely turn on the resolution of two central questions:

  • A core procedural question will be one of equitable conduct: Do the complaint's allegations of a decades-long, systematic effort by the USPTO to delay and prevent issuance of the '600 Application—including its placement in the SAWS program and repeated, multi-year suspensions of prosecution—vitiate the agency's rejection based on the doctrine of prosecution laches and constitute bad faith?
  • A key substantive question for the court will be one of statutory patentability: Independent of the procedural history, do the 382 claims at issue satisfy the requirements of 35 U.S.C. § 103 and § 112? Specifically, does the application's specification provide sufficient written description for the broad and varied technologies claimed, and are those claims non-obvious over prior art related to video compression and image transformation?