DCT

1:25-cv-01002

Hyatt v. Stewart

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:25-cv-01002, E.D. Va., 06/13/2025
  • Venue Allegations: Venue is asserted as proper under 28 U.S.C. § 1391(e) for actions against an officer of the United States and under the specific venue provision for this cause of action, 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 for his "360" patent application, challenging the PTO's final decision which rejected the claims on multiple statutory and equitable grounds.
  • Technical Context: The application-at-issue pertains to advanced computer systems, covering technologies such as artificial intelligence, robotic control, image processing, and the rendering of three-dimensional environments.
  • Key Procedural History: The complaint describes a highly contentious and unusually prolonged prosecution history for an application filed in 1995 that claims priority to a 1984 application. Plaintiff alleges that the PTO subjected the application to its "Sensitive Application Warning System" (SAWS), which prejudiced its examination, and that the agency was responsible for extensive delays. This civil action was filed after the Patent Trial and Appeal Board (PTAB), in April 2025, issued a decision affirming an examiner's rejections of all pending claims.

Case Timeline

Date Event
1981-08-04 U.S. Patent No. 4,282,511 (Southgate) issues
1984-10-19 Priority Date for "360" Application
1985-07-30 U.S. Patent No. 4,532,548 (Zwirn) issues
1986-01-21 U.S. Patent No. 4,565,487 (Kroczynski) issues
1995-06-01 "360" Application filed
1995-09-01 PTO sends non-final office action rejecting all claims
1996-07-01 PTO sends final office action rejecting all claims
1999-03-01 PTO sends non-final office action rejecting all claims
2000-10-01 PTO sends final office action rejecting all claims
2004-10-01 PTO sends non-final office action rejecting all claims
2005-07-01 PTO sends final office action rejecting all claims
2013-10-01 PTO sends "Requirement" action
2015-11-01 PTO sends non-final office action rejecting all claims
2018-08-01 PTO sends non-final office action rejecting all claims
2020-05-01 PTO sends final office action rejecting all claims
2025-04-16 PTAB issues decision affirming rejections
2025-06-13 Complaint filed in E.D. Va.

II. Technology and Key Patents in the Dispute

The following patents are not asserted for infringement but are identified in the complaint as prior art references forming the basis for the PTO's obviousness rejections. They are central to a key issue in the case.

U.S. Patent No. 4,282,511 - “Apparatus for Discerning the Noticeable Presence of Spatial Fluctuations of Intensity Within a Two-Dimensional Visual Field,” issued August 4, 1981 (Southgate)

The Invention Explained

  • Problem Addressed: The patent addresses the problem of inconsistent, subjective quality control in manufacturing, where human inspectors must visually identify subtle defects or non-uniformities in products like shadow masks for color picture tubes (col. 1:11-39).
  • The Patented Solution: The invention provides an objective, automated inspection system. It works by scanning a visual field, mathematically convolving the resulting data with a predefined "kernel function" to analyze spatial frequency patterns, and comparing the output to a pre-set threshold to determine if a defect is present at a "just-noticeable" level (Abstract; col. 2:26-68). The system essentially mimics and quantifies the psycho-physical process of human visual perception of flaws (col. 2:51-56).
  • Technical Importance: This technology represents a move from subjective human inspection to objective, repeatable, and quantitative machine-based quality control for high-precision manufacturing.

Key Claims at a Glance

  • The complaint does not assert any claims from this patent. It is cited as prior art.

U.S. Patent No. 4,532,548 - “Resolution Enhancement and Zoom,” issued July 30, 1985 (Zwirn)

The Invention Explained

  • Problem Addressed: The resolution of imaging systems is fundamentally limited by physical constraints, such as the wavelength of light and the size of the imaging aperture, a concept known as the Rayleigh limit (col. 1:5-24). This creates a diffraction blur that prevents distinguishing between two very close points.
  • The Patented Solution: The invention proposes a method to computationally exceed the Rayleigh limit. The process involves first capturing a blurred image, for instance by sampling at a higher density than the limit would suggest (col. 1:26-32). Then, small segments of this blurred image are correlated against a pre-constructed library of blurred "image primitives." When a match is found, the system substitutes the corresponding original, unblurred primitive, thereby synthesizing a new, higher-resolution image piece by piece (Abstract; col. 1:33-44).
  • Technical Importance: This patent describes a foundational technique in computational photography, demonstrating how processing power can be used to overcome physical optical limitations and extract more information from an image than is apparent to the naked eye.

Key Claims at a Glance

  • The complaint does not assert any claims from this patent. It is cited as prior art.

Multi-Patent Capsule

  • U.S. Patent No. 4,565,487, “System of Robots with Legs or Arms,” issued January 21, 1986 (Kroczynski)
    • Technology Synopsis: The patent discloses a robotic system featuring articulated limbs controlled by a central data processor. A key aspect of the invention is the mechanical joint structure, which uses two jack actuators and a system of ball joints to achieve three degrees of freedom for a limb around a single fixed point, enabling complex and stable movements (Abstract; col. 1:24-40). The system is described as modular and adaptable for various tasks, from locomotion to handling operations (col. 1:24-29).
    • Asserted Claims: Not applicable.
    • Context in Dispute: This patent is cited by the PTO as a prior art reference against the claims of the "360" Application, presumably those related to robotics (Compl. ¶¶ 13b, 68).

III. The Disputed Patent Application

The application-at-issue, the "360" Application, was not provided with the complaint. The following description is based entirely on the complaint's summary of the claimed subject matter.

  • Application Identification: U.S. Patent Application Serial No. 08/457,360 ("360" Application), filed June 1, 1995.
  • Alleged Subject Matter: The complaint states that the "Subject Claims" of the "360" Application are generally directed to several distinct categories of technology (Compl. ¶13). These include systems and methods for:
    • Performing artificial intelligence processing and control operations based on "shaded kernel filtered information" derived from multiple data sources, including video, radar, and navigation data (Compl. ¶13a).
    • Controlling a robot and performing artificial intelligence processing based on "kernel filtered information" (Compl. ¶13b).
    • Displaying a rotating 3D environment based on combined and transformed video information from multiple sources (Compl. ¶13c).
    • Outputting compressed data based on reconstructed video image information derived from a transform process (Compl. ¶13d).

IV. Analysis of PTO Rejection Allegations

The complaint does not allege patent infringement. Instead, it challenges the legal and factual correctness of several grounds of rejection maintained by the PTO and affirmed by the PTAB.

  • Written Description Rejection (§ 112): The Plaintiff alleges that the PTO erroneously rejected certain claims for failing to meet the written description requirement of 35 U.S.C. § 112 (Compl. ¶48). The complaint counters that the disclosure of the "360" Application is sufficient to demonstrate to a person of ordinary skill in the art that the inventor was in possession of the claimed invention as of the effective filing date (Compl. ¶49).
  • Prosecution Laches Rejection: The complaint argues that the PTO's rejection of all claims under the equitable doctrine of prosecution laches is erroneous on multiple grounds (Compl. ¶¶ 51-61). The Plaintiff contends that the doctrine is not a valid statutory basis for rejection, that any prosecution delay is attributable to the PTO's own actions and inaction, that the Plaintiff's conduct did not constitute an egregious misuse of the patent system, and that the PTO failed to provide adequate warning before asserting the defense (Compl. ¶¶ 53-58).
  • Undue Multiplicity Rejection (§ 112): The Plaintiff challenges the PTO's rejection of the claims for undue multiplicity, asserting that the claims distinctly define the invention and provide reasonable certainty regarding their scope, as required by 35 U.S.C. § 112 (Compl. ¶¶ 62-64).
  • Obviousness Rejection (§ 103): The complaint alleges that the PTO erred in rejecting claims as obvious under 35 U.S.C. § 103 over combinations of the Southgate, Zwirn, and Kroczynski patents (Compl. ¶¶ 67-69). The Plaintiff asserts that a person of ordinary skill in the art would not have found the claimed inventions to be obvious based on these references at the time of the invention (Compl. ¶70).

No probative visual evidence provided in complaint.

V. Key Claim Terms for Construction

The complaint does not provide the specific language of the claims from the "360" Application. This information is necessary for a detailed analysis of claim terms that may be at issue.

VI. Other Allegations: Procedural Unfairness

Beyond challenging the substantive grounds of rejection, the complaint contains significant allegations of procedural unfairness and bad faith by the PTO during the application's multi-decade prosecution.

"SAWS" Program

  • The Plaintiff alleges the PTO subjected the "360" Application and others to the "Sensitive Application Warning System" (SAWS), which is described as a secret program that prejudiced the examination process (Compl. ¶17). The complaint claims that under SAWS, examiners were directed to consider factors irrelevant to patentability and were divested of their authority to allow the applications (Compl. ¶¶ 17, 45).

Agency-Caused Delay

  • The complaint details numerous and lengthy periods of inactivity by the PTO, including suspensions of prosecution and failures to act on amendments and appeals for years at a time, which the Plaintiff argues contributed to the prosecution's long duration (Compl. ¶¶ 16, 27, 31, 37, 39, 41, 44).

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

This case presents a rare judicial review of a patent prosecution that is extraordinary in both its duration and its contentious nature. The court's decision will likely turn on the resolution of the following questions:

  • The Standard of Review: A central issue will be the application of de novo review under 35 U.S.C. § 145. How will the court weigh the PTO's factual conclusions on complex issues like written description and obviousness, particularly when faced with Plaintiff's extensive allegations of a prejudiced and flawed examination process?
  • The Prosecution Laches Defense: A key legal question will be the viability of the PTO's prosecution laches rejection. Can the government successfully invoke this equitable defense to bar a patent when the applicant alleges that the agency itself was the primary cause of the delay and operated under internal procedures that hindered prosecution?
  • Evidentiary Sufficiency: An important question will be one of proof. What new evidence, if any, will the Plaintiff be permitted to introduce in the de novo proceeding to demonstrate possession of the invention for the written description requirement and to rebut the PTO's prima facie case of obviousness over the cited prior art?