DCT

1:25-cv-00799

Hyatt v. Stewart

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:25-cv-00799, E.D. Va., 05/08/2025
  • Venue Allegations: Venue is asserted under 28 U.S.C. § 1391(e) and 35 U.S.C. § 145, the latter of which provides for civil actions against the USPTO Director to be brought in the U.S. District Court for the Eastern District of Virginia.
  • Core Dispute: Plaintiff, a patent applicant, seeks a court order under 35 U.S.C. § 145 compelling the USPTO to issue a patent on his application, challenging the Patent Trial and Appeal Board's decision that affirmed the examiner's rejections on multiple grounds, including prosecution laches.
  • Technical Context: The patent application at issue describes foundational technologies in microcomputers and digital signal processing, including systems for performing Fourier transforms on a single chip and generating speech from stored biological data.
  • Key Procedural History: The complaint details a prosecution history for the subject application spanning three decades. It alleges that the USPTO improperly placed the application into the "Sensitive Application Warning System" (SAWS) program, engaged in multiple lengthy suspensions of examination, and ultimately rejected the claims on grounds including prosecution laches, which the Plaintiff contends was caused by the USPTO's own inaction and bad faith.

Case Timeline

Date Event
1977-11-09 Priority Date for '666 Application
1995-06-06 Filing Date of '666 Application
1996-05-XX PTO issues non-final office action rejecting claims
1998-02-XX PTO issues final office action rejecting claims
1999-05-XX Plaintiff files submission, after which prosecution is suspended
2007-06-13 PTO prosecution suspension (first of five listed)
2013-10-XX PTO resumes activity with a "Requirement" action
2020-06-XX PTO issues final office action after prosecution resumed
2025-03-10 Patent Trial and Appeal Board (PTAB) affirms rejections
2025-05-08 Complaint filed in E.D. Va.

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

This analysis addresses the technology of the patent application at the center of the dispute and a key prior art patent cited in the complaint.

U.S. Patent Application No. 08/470,666 (the "'666 Application")

The Invention Explained

The complaint does not provide the full application, but it describes the "Subject Claims" as being directed to several distinct technological areas (Compl. ¶ 13). These include:

  • A single integrated circuit chip containing a processor, program memory, and a second memory, capable of performing a Fourier transformation on data to display automobile information (Compl. ¶ 13a).
  • A single integrated circuit chip that generates speech representing biological information using a processor and multiple on-chip memories (Compl. ¶ 13b).
  • A system for outputting information to a data link and performing actions (e.g., operating a vehicle, generating speech) using pulse width modulated information (Compl. ¶ 13c).
  • Systems that perform actions like displaying information, operating a game, or generating speech based on sound recognition via Fourier or pattern recognition processing (Compl. ¶ 13d).
  • A system for generating speech or music based on pulse width modulated information derived from data in a non-volatile charge storage memory (Compl. ¶ 13e).

Key Claims at a Glance

The complaint identifies 263 "Subject Claims" for which it seeks a patent (Compl. ¶ 11). It does not quote any specific claims in full.

U.S. Patent No. 3,528,011, "LIMITED ENERGY SPEECH TRANSMISSION AND RECEIVING SYSTEM," issued September 8, 1970 (the "’011 Patent")

The Invention Explained

  • Problem Addressed: The patent describes the high energy cost of transmitting speech via conventional radio frequency methods and seeks to provide a system that allows for "substantial reduction in the energy required to transmit a given amount of information" (’011 Patent, col. 1:62-68).
  • The Patented Solution: The invention digitizes a speech signal by identifying only its "zero-crossing" points—the moments the audio waveform crosses its average value. It converts the speech into a "time sequential series of pulsed electric signals" corresponding to these zero-crossings ('011 Patent, col. 2:37-41). By transmitting only these discrete, low-energy pulses instead of the entire analog waveform, the system aims to achieve significant energy savings while preserving intelligibility ('011 Patent, col. 2:14-25; Fig. 1). At the receiver, a "bistable multivibrator" reconverts these pulses back into a square-wave audio signal for playback ('011 Patent, col. 4:9-13).
  • Technical Importance: This "zero-crossing" technique represented an early method of speech digitization focused on bandwidth and power efficiency, a foundational concept for digital communications ('011 Patent, col. 1:50-56).

Key Claims at a Glance

  • The complaint alleges the PTO used the ’011 Patent (as "Anderson") to reject certain claims as obvious or for double-patenting (Compl. ¶¶ 68, 73). Independent claim 1 of the ’011 Patent is representative and includes the following essential elements:
    • microphone and amplifying means for reproducing speech waves in electrical form
    • zero-crossing detector means operatively coupled to the output of the... amplifying means for converting the speech signal to a time sequential series of pulsed electric signals representative of the zero-crossing points
    • means for coupling the output of said zero-crossing detector means to the input of the modulator means
    • a receiver with demodulation means, squaring circuit means, and a bistable multivibrator means for reconverting the zero-crossing pulses to a square wave shape signal
    • means for reproducing the original speech signal in a perceptible form

III. Analysis of Disputed Grounds for Rejection

As this case is an appeal of PTO rejections rather than an infringement action, this section analyzes the primary legal and technical bases for rejection identified in the complaint.

  • Prosecution Laches: The complaint states the PTO rejected the Subject Claims under the equitable doctrine of prosecution laches (Compl. ¶ 51). The core of this dispute appears to be factual causation. The Plaintiff alleges that any delay in prosecution is "attributable to the actions or inaction of the PTO" (Compl. ¶ 55), that Plaintiff's own actions did not constitute an "egregious misuse of the statutory patent system" (Compl. ¶ 57), and that the PTO failed to warn the applicant of potential forfeiture (Compl. ¶ 58). The court will need to weigh the entire prosecution history to determine whether the applicant or the PTO was primarily responsible for the decades-long delay.

  • Written Description and Indefiniteness (35 U.S.C. § 112): The complaint notes that certain claims were rejected for lacking adequate written description and for being indefinite (Compl. ¶¶ 45, 48). Plaintiff makes the conclusory assertion that the disclosure is adequate and that the claims "inform, with reasonable certainty, those skilled in the art about the scope of the inventions" (Compl. ¶¶ 46, 49). Because a § 145 action involves de novo review, the court will be required to independently assess whether the specification of the '666 Application, as filed, demonstrates that the inventor was in possession of the claimed subject matter and whether the claim language provides a clear and definite scope.

  • Obviousness (35 U.S.C. § 103): The PTO rejected certain claims as obvious over prior art, including the ’011 Patent (Compl. ¶¶ 68-69). For example, Claims 231, 246, 345, 374, and 461 were rejected as obvious over a combination of references including "Anderson" (the ’011 Patent) (Compl. ¶ 68). The central question for the court will be whether a person of ordinary skill in the art at the time of the invention would have been motivated to combine the teachings of the ’011 Patent and other references to arrive at the invention claimed in the '666 Application with a reasonable expectation of success. This will require a detailed technical comparison of the specific claim limitations with the disclosures of the cited prior art.

IV. Other Allegations

  • Allegations of PTO Misconduct: The complaint alleges a pattern of improper conduct by the USPTO intended to prevent the '666 Application from issuing. It alleges the application was subjected to the "Sensitive Application Warning System ('SAWS')," a program which allegedly directed examiners to "consider factors that are irrelevant to the statutory criteria for patentability" (Compl. ¶ 17). The complaint further alleges a "decades-long campaign" by the PTO, including reopening prosecution after successful appeals and placing applications in "administrative purgatory" (Compl. ¶ 42). These allegations of bad faith appear intended to counter the PTO's rejection based on prosecution laches by arguing the PTO comes to the dispute with "unclean hands" (Compl. ¶ 61).

No probative visual evidence provided in complaint.

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

This action presents a rare judicial review of a patent prosecution that has spanned more than a generation. The outcome will likely turn on the court's de novo resolution of the following questions:

  1. Causation for Delay: A central issue will be one of equitable responsibility: does the factual record of the three-decade prosecution show that the applicant engaged in an "unreasonable and inexcusable delay," or does the evidence, including the alleged use of the SAWS program and multiple PTO-initiated suspensions, demonstrate that the USPTO was the primary cause of the delay, thereby barring a rejection on grounds of prosecution laches?

  2. De Novo Patentability: A key technical question will be one of statutory compliance: upon fresh review, do the claims of the '666 Application meet the distinct legal standards for written description, definiteness, and non-obviousness? This will require the court to step into the shoes of a patent examiner and evaluate the application against the prior art, including foundational patents like Anderson's ’011 Patent.

  3. The Role of Alleged Agency Misconduct: A final question concerns procedural justice: to what degree will the Plaintiff's allegations of a systematic, bad-faith "campaign" by the USPTO to block his applications influence the court's analysis of the substantive rejection grounds, particularly the equitable defense of prosecution laches?