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 & Hostler LLP
• Case Identification: 1:25-cv-00795, E.D. Va., 05/08/2025
• Venue Allegations: Venue is asserted as proper in the U.S. District Court for 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 compelling the U.S. Patent and Trademark Office (PTO) to issue a patent on his "'041 application", challenging the Patent Trial and Appeal Board's decision to affirm rejections based on grounds including lack of written description, prosecution laches, undue multiplicity, and obviousness.
• Technical Context: The application at issue relates to various computer-controlled systems from the 1970s, including those for generating speech and pulse width modulation signals for process control, often specified without elements like a single-chip integrated circuit.
• Key Procedural History: The complaint details an unusually long and contentious prosecution history for the "'041 Application", which claims priority to 1973 and was filed in 1995. Plaintiff alleges that for decades, the PTO engaged in a campaign to prevent his patents from issuing, including placing the application in the "Sensitive Application Warning System" (SAWS), engaging in numerous suspensions of examination, and making rejections on what Plaintiff argues are erroneous grounds, such as prosecution laches, which he claims is attributable to the PTO's own inaction.

Case Timeline

Date	Event
1973-01-22	Priority Date for '041 Application (from application 05/325,941)
1995-06-06	'041 Application filed
1995-08-01	Preliminary amendments filed (approx. date)
1995-11-01	Preliminary amendments filed (approx. date)
1996-04-01	PTO issues non-final office action (approx. date)
1997-07-01	Plaintiff files response and petition to revive (approx. date)
1998-01-01	PTO issues final office action (approx. date)
2000-05-01	Plaintiff files appeal brief (approx. date)
2003-11-01	Plaintiff has telephone interview with examiner (approx. date)
2013-10-01	PTO issues "Requirement" action (approx. date)
2014-05-01	PTO issues non-final office action (approx. date)
2017-04-01	PTO issues non-final office action (approx. date)
2018-04-01	PTO issues final office action (approx. date)
2019-10-01	PTO issues final office action (approx. date)
2022-02-01	PTO sends examiner's answer (approx. date)
2025-03-07	Patent Trial and Appeal Board issues decision affirming rejections
2025-05-08	Complaint filed

II. Technology and Patent(s)-in-Suit Analysis

This analysis pertains to the patent application at the center of the dispute and a selection of the prior art patents cited by the PTO in its rejections.

U.S. Application No. 08/472,041, Priority Date of January 22, 1973

The Invention Explained

• Problem Addressed: The complaint does not explicitly state a problem, but the subject matter describes a need for various automated and computer-controlled systems for tasks like industrial control, data processing, and point-of-sale operations during the early era of integrated circuits (Compl. ¶13).
• The Patented Solution: The application claims a wide range of inventions. The complaint groups the 254 "Subject Claims" into three main categories: (a) systems for generating speech alerts in vehicles based on sensor data processed by an integrated circuit program memory; (b) systems using pulse width modulation for applications like generating speech/music or controlling machinery, based on transducer and data link inputs processed by an integrated circuit program memory; and (c) systems for a variety of complex tasks (e.g., point-of-sale, inventory control, geophysical exploration) using transducer and data link inputs processed by a computer memory (Compl. ¶13a-c). A recurring theme is that these solutions are claimed "without recitation of" certain structures common in the art, such as a "single IC chip" or "scratch pad memory," suggesting an attempt to claim the functions more broadly (Compl. ¶13a-c).
• Technical Importance: The application addresses foundational concepts in microcomputer control and processing that became ubiquitous in industrial, commercial, and consumer electronics (Compl. ¶3).

Key Claims at a Glance

• The complaint seeks a patent on 254 claims, identified as the "Subject Claims" (Compl. ¶11).
• The full text of the claims is not provided in the complaint. The subject matter is summarized in paragraph 13, as described above.

U.S. Patent No. 3,990,075 - Solid State Security System, issued November 2, 1976 (Schmitz et al.)

The Invention Explained

• Problem Addressed: The patent describes a need for simple, compact, and inexpensive security systems suitable for residential and industrial applications, noting the high cost and complexity of prior systems that used numerous discrete circuits (’075 Patent, col. 1:46-59).
• The Patented Solution: The invention is a security system where the "primary electronics" are embodied in a "single 'chip' integrated semiconductor package" ('075 Patent, Abstract; col. 2:9-12). This chip processes signals from external sensors (e.g., fire, intrusion) and controls communications with remote monitoring centers, such as by activating a telephone dialer ('075 Patent, col. 4:50-63). The system generates "digitally modulated, frequency modulated digital audio waveforms" unique to each alarm condition ('075 Patent, col. 3:12-18).
• Technical Importance: This patent documents a move toward consolidating complex system logic onto a single integrated circuit, a key trend in electronics for reducing cost and size while increasing reliability (Compl. ¶69; '075 Patent, col. 2:12-18).

Key Claims at a Glance

• The complaint references this patent in the PTO's obviousness rejection of claim 113 (Compl. ¶69).
• Independent claim 1 of the Schmitz patent recites:
  • A solid state security system comprising:
  • at least one remote intrusion sensor circuit for producing intrusion alarm output signals...
  • at least one remote fire sensor circuit for producing fire alarm output signals...
  • a remote monitoring center,
  • a local security console operatively coupling said sensors to said remote monitoring center,
  • said console including: a microphone, an input circuit connected to the sensors, and a control circuit connected between the input circuit and microphone.
• The complaint does not reserve the right to assert dependent claims.

U.S. Patent No. 3,601,540 - Security System, issued August 24, 1971 (Bryan)

The Invention Explained

• Problem Addressed: The patent seeks to improve upon prior art security systems by providing better monitoring of internal failures, preventing dialing errors due to momentary power failures, and creating a priority system for handling simultaneous alarms from different types of sensors (’540 Patent, col. 2:49-58).
• The Patented Solution: The invention is a security system that, upon activation by a sensor (e.g., burglar, fire), uses "memory means" such as a "cartridge-type tape deck" to automatically dial a remote telephone and play a recorded voice message ('540 Patent, Abstract; col. 8:68-75). The system includes a "supervisory oscillator" to monitor the electronic circuitry for failures and a priority scheme implemented with relays to ensure, for example, a fire alarm signal takes precedence over a burglary alarm signal ('540 Patent, col. 7:26-59).
• Technical Importance: The patent describes an early automated emergency communication system using analog tape memory and relay-based logic to interface with the public telephone network ('540 Patent, col. 8:68-75, col. 7:26-34).

Key Claims at a Glance

• The complaint references this patent in the PTO's obviousness rejection of claim 113 (Compl. ¶69).
• Independent claim 1 of the Bryan patent recites:
  • A security system comprising:
  • condition responsive means;
  • relay means;
  • electrical circuitry connecting the condition responsive means to the relay means;
  • memory means including electronic circuitry for supplying predetermined signals (including telephone dialing pulses and voice messages);
  • means connecting the output of the relay means to the input of the memory means;
  • circuitry for continually monitoring the correct operation of the system.
• The complaint does not reserve the right to assert dependent claims.

III. Analysis of Patentability Rejections

No probative visual evidence provided in complaint.

The complaint challenges several grounds of rejection affirmed by the Patent Trial and Appeal Board.

• Written Description (Pre-AIA 35 U.S.C. § 112, first paragraph)

  • PTO's Position: The PTO rejected claims 113 and 208 for an alleged lack of written description (Compl. ¶49). This type of rejection asserts that the specification does not adequately describe the claimed invention in a way that shows the inventor was in possession of it at the time of filing.
  • Plaintiff's Argument: The complaint argues this rejection is erroneous, stating that the disclosure of the "'041 Application" is sufficient to teach a person of ordinary skill in the art that the inventor possessed the invention as of the effective filing date (Compl. ¶¶50-51).

• Prosecution Laches

  • PTO's Position: The PTO rejected all Subject Claims under the equitable doctrine of prosecution laches, holding the application "entirely forfeited" (Compl. ¶52). This doctrine can bar a patent from issuing if an applicant's unreasonable and unexplained delay in prosecution causes prejudice to the public.
  • Plaintiff's Argument: The complaint dedicates significant attention to refuting this rejection, arguing it is erroneous for multiple reasons: it is not a valid statutory ground for rejection; the plaintiff did not delay prosecution; any delay is attributable to the PTO's own actions and inactions (such as the multiple suspensions of examination); and the PTO failed to provide adequate warning or show intervening rights (Compl. ¶¶53-62).

• Undue Multiplicity (Pre-AIA 35 U.S.C. § 112, second paragraph)

  • PTO's Position: The PTO rejected all Subject Claims for allegedly "failing to distinctly claim the subject matter" under the doctrine of undue multiplicity (Compl. ¶63). This rejection is used when an application contains an unreasonable number of claims that create confusion about the scope of the invention.
  • Plaintiff's Argument: The plaintiff contends that each of the 254 Subject Claims informs with reasonable certainty about its scope, distinctly claims the invention, and has ascertainable differences in scope from other claims in the "'041 application" and co-pending applications (Compl. ¶¶64-66).

• Obviousness (Pre-AIA 35 U.S.C. § 103)

  • Summary of Rejection: The complaint states the PTO rejected Subject Claims 113 and 208 as obvious over combinations of prior art references (Compl. ¶¶68-70). The plaintiff asserts these rejections are erroneous because the claimed subject matter would not have been obvious to a person of ordinary skill in the art at the time of the invention (Compl. ¶71).

Claimed Subject Matter (from '041 App. Summary)	PTO's Asserted Prior Art Combination (per Complaint)	Complaint Citation
Generating a speech message with a sound transducer... based on... input information... being processed based on execution of computer instructions stored in an integrated circuit program memory... (similar to ¶13a)	For Claim 113: Schmitz ('075), Bryan ('540), Threewitt (a 1975 conference paper), Moore (a 2006 newsletter), and either Smith (a 1977 Intel manual) or Boone (a defensive publication).	¶69
Generating speech or music, controlling a machine... using pulse width modulation information... processed based on execution of computer instructions stored in an integrated circuit program memory... (similar to ¶13b)	For Claim 208: Schmitz ('075), Bryan ('540), Zetting (’377), Threewitt, Moore, either Smith or Boone, Eichelberger (’873), and Crites (’436).	¶70

IV. Key Claim Terms for Construction

While the full claim language is not provided, the complaint's summary of the subject matter in paragraph 13 highlights a recurring phrasing that will be central to determining the scope of the claims.

• The Term: "without recitation of" (e.g., "without recitation of a single IC chip," "without recitation of any of... a scratch pad memory, a non-volatile memory, or feedback")
• Context and Importance: This negative limitation appears to be a primary strategy for distinguishing the "'041 application's" claims from prior art and for asserting a broad scope. The patentability of the claims may hinge on whether this "without recitation of" language successfully carves out a functional invention that does not require the excluded elements, or if a court determines that such elements are inherently necessary for the claimed system to operate, thereby reading the limitation back into the claim. Practitioners may focus on this term because it directly implicates the written description requirement (does the specification enable an invention that truly lacks these common components?) and the obviousness analysis (is an older system simply described by omitting a known element?).
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The complaint argues that each claim has "ascertainable differences in scope" and contains "specific limitations" (Compl. ¶¶13, 66). Plaintiff will likely argue this phrasing is a clear and deliberate choice to define the metes and bounds of the claim to cover systems that use alternative architectures, such as those with multi-chip solutions or different memory configurations, which existed at the time.
  • Evidence for a Narrower Interpretation: The PTO will likely argue that to perform the complex functions described (e.g., "processed based on execution of computer instructions stored in an integrated circuit program memory"), elements like a "single IC chip" (as in Schmitz '075) or other memory types are necessarily implicated (Compl. ¶¶13a, 69). A court may be asked to consider whether omitting an essential component from the claim language, while describing a function that requires it, renders the claim indefinite or lacking in written description.

V. Other Allegations

• Allegations of PTO Misconduct and Bad Faith: The complaint makes extensive allegations of improper conduct by the PTO over several decades. It alleges a "concerted action to prevent any of Hyatt's applications from issuing as patents" (Compl. ¶46). Specific allegations include placing the application into the SAWS program, which allegedly "prejudiced the PTO in its consideration" and directed examiners to consider factors irrelevant to patentability (Compl. ¶17). Further, the complaint alleges the PTO "acted in bad faith" (Compl. ¶48), placed applications in an "administrative purgatory" (Compl. ¶46), and that examiners created "disrespectful 'memes'" about the plaintiff (Compl. ¶47).
• Prosecution Laches: The complaint argues that any delay in prosecution is attributable to the PTO's own actions or inaction, including at least six separate occasions where the PTO suspended examination (Compl. ¶¶16, 56). The plaintiff argues that the PTO's assertion of prosecution laches is therefore erroneous and constitutes "unclean hands" (Compl. ¶62). These factual allegations concerning the reasons for the decades-long prosecution will be central to the court's evaluation of the laches defense.

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

This case presents a unique challenge, as it is not a typical infringement suit but a request for judicial review of a patent prosecution that has spanned over fifty years from its priority date. The key questions for the court appear to be:

1. A central procedural question will be one of equitable conduct and laches: Can the PTO bar the issuance of a patent on the grounds of prosecution laches when the plaintiff alleges that the decades of delay were substantially caused or exacerbated by the PTO's own administrative procedures, suspensions, and alleged bad faith campaign against the applicant?
2. A key substantive question will be one of patentability based on a limited record: On the merits, will the court, undertaking a de novo review, find that the 254 claims at issue meet the statutory requirements for patentability under pre-AIA law? This will involve a difficult analysis of claim scope for technology from the 1970s, particularly whether the "negative limitations" (e.g., "without recitation of a single IC chip") are sufficient to distinguish the inventions from prior art and satisfy the written description requirement.
3. An overarching legal question will be one of judicial remedy: Given the extraordinary procedural history alleged in the complaint, what is the proper role and remedy for a district court under 35 U.S.C. § 145? Will the court focus narrowly on the specific technical grounds for rejection, or will it also weigh the extensive allegations of procedural prejudice in determining whether to order the PTO to issue a patent?