DCT

1:25-cv-01096

Hyatt v. Stewart

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:25-cv-01096, E.D. Va., 07/02/2025
  • Venue Allegations: Venue is asserted as proper in 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 '177 patent application, following a decision by the Patent Trial and Appeal Board (PTAB) affirming the examiner's rejections.
  • Technical Context: The application's subject matter relates generally to computer-based image processing, including methods for filtering, data compression, and pattern recognition based on records stored in a memory.
  • Key Procedural History: The complaint details an exceptionally long and contentious prosecution history for the '177 Application and its family, which began in the 1980s. Plaintiff alleges that prosecution was repeatedly and improperly suspended by the PTO, and that the application was subjected to the "Sensitive Application Warning System" (SAWS), which allegedly prejudiced its examination. The case arrives at the district court for de novo review after the PTAB affirmed rejections on multiple grounds, including prosecution laches, written description, undue multiplicity, obviousness, and double patenting.

Case Timeline

Date Event
1984-10-18 Priority Date (Filing of parent application 06/662,211)
1995-06-06 Plaintiff files the '177 Application
1995-08-01 Plaintiff files a preliminary amendment
1995-09-01 PTO issues a non-final office action
1996-03-01 PTO withdraws the previous office action
2001-04-01 PTO issues a non-final office action rejecting all claims
2002-08-01 PTO issues a non-final office action rejecting all claims
2013-10-01 PTO issues a "Requirement" action
2017-03-01 PTO issues a non-final office action rejecting all claims
2019-01-01 PTO issues a final office action rejecting all claims
2019-10-01 PTO issues a final office action rejecting all claims
2020-05-01 PTO issues a final office action rejecting all claims
2020-11-01 Plaintiff files a notice of appeal
2021-05-01 Plaintiff files an appeal brief
2023-05-01 PTO issues an examiner's answer
2025-04-30 PTAB issues decision affirming rejections
2025-07-02 Complaint filed

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

The following analysis is based on the complaint's description of U.S. Patent Application Serial No. 08/470,177, as the application itself was not provided.

U.S. Patent Application Serial No. 08/470,177

  • Patent Identification: U.S. Patent Application Serial No. 08/470,177 (the "'177 Application"), filed June 6, 1995.

The Invention Explained

  • Problem Addressed: The complaint does not explicitly state a problem addressed by the invention, but the context of the claims suggests a need for versatile and efficient methods of processing and generating image and database information in a computer system (Compl. ¶13).
  • The Patented Solution: The invention described in the '177 Application covers a range of computer-implemented actions for processing data. These actions include displaying images, data compression, pattern recognition, and Fast Fourier Transform (FFT) processing. A central concept appears to be the generation and manipulation of 64-pixel blocks of image information, which are themselves generated from records stored in a memory containing database information. The claims are allegedly distinguished by reciting specific processing actions (e.g., computer filtering, correlation processing) while specifically excluding others (e.g., 3D perspective, rotation, refreshing) to demarcate their scope from co-pending applications (Compl. ¶13.a-e).
  • Technical Importance: The application claims various methods for manipulating image and database records, a foundational area of computing that enables graphics, data analysis, and information display (Compl. ¶13).

Key Claims at a Glance

  • The complaint seeks issuance of a patent on 244 claims, referred to as the "Subject Claims" (Compl. ¶11). The text of the claims is not provided.
  • The subject matter of these claims is summarized as falling into five general categories (Compl. ¶13.a-e):
    • Displaying an image or performing pattern recognition based on computer filtering of 64-pixel blocks of image information.
    • Performing actions like data compression or FFT processing based on 64-pixel blocks of information generated from database records, without reciting the step of putting accessed information back into memory.
    • Performing similar actions based on "shaded kernel filtering" of database records, while excluding steps like 3D perspective or rotation.
    • Writing or loading memory records based on generated pattern recognition or other processed information.
    • Performing various actions based on "gated clock pulse information" and records stored in memory.

III. The Accused Instrumentality

This section is not applicable, as the action is a suit under 35 U.S.C. § 145 to obtain a patent, not a suit for infringement of an issued patent against a product or service.

IV. Analysis of Infringement Allegations

This section is not applicable. The complaint does not allege patent infringement. Instead, it disputes the grounds upon which the PTO rejected the claims of the '177 Application. The primary disputed rejections are summarized below.

  • Written Description Rejection: The complaint states that the PTO rejected certain claims for an alleged lack of written description under pre-AIA 35 U.S.C. § 112, first paragraph (Compl. ¶46). Plaintiff counters that the disclosure of the '177 Application sufficiently describes the claimed subject matter such that a person of ordinary skill would have understood the inventor to be in possession of the invention as of the filing date (Compl. ¶47).

  • Prosecution Laches Rejection: The PTO rejected all Subject Claims under the equitable doctrine of prosecution laches, holding the application entirely forfeited (Compl. ¶49). The plaintiff alleges this rejection is erroneous for several reasons, including that any delay was attributable to the PTO's own actions or inaction, that the PTO failed to provide adequate warning of potential forfeiture, and that the PTO has "unclean hands" (Compl. ¶¶52-59).

  • Undue Multiplicity Rejection: The PTO rejected all Subject Claims for allegedly failing to distinctly claim the invention under the doctrine of undue multiplicity (pre-AIA 35 U.S.C. § 112, second paragraph) (Compl. ¶60). Plaintiff argues the claims are distinct, have ascertainable differences in scope from each other and from claims in co-pending applications, and inform with reasonable certainty about their scope (Compl. ¶¶61-63).

  • Obviousness Rejections: The PTO rejected various claims as obvious under pre-AIA 35 U.S.C. § 103 over combinations of prior art references (Compl. ¶65).

    • Christopher ('958) and Allis ('135): Claims 235, 238, and 312 were rejected as obvious over this combination (Compl. ¶66). The Allis patent, titled "Alignment System for Scanning Arrays," discloses a raster scanner with multiple scanning arrays and a control system for synchronizing the operation and processing of image signals (’135 Patent, Abstract). The Christopher patent, titled "Window-Scanned Memory," discloses a memory system where a "window" of spatially adjacent sample points can be accessed in parallel to facilitate digital filtering (’958 Patent, Abstract).
    • Christopher ('958) and Briggs (non-patent literature): Claim 247 was rejected over this combination (Compl. ¶67).
    • Christopher ('958), Allis ('135), Widergren ('774), and Briggs: Other claims were rejected over different combinations of these references (Compl. ¶¶68-70). The Widergren patent, titled "Digital Video Compression System," discloses a system for compressing video signals using scene-adaptive coding with rate buffer feedback, including two-dimensional transformations of image blocks (’774 Patent, Abstract).
    • Plaintiff's position is that the Subject Claims would not have been obvious to a person of ordinary skill in view of these references (Compl. ¶71). No probative visual evidence provided in complaint.

  • Provisional Double Patenting Rejections: The PTO issued provisional non-statutory obviousness-type double-patenting rejections for numerous claims over allegedly conflicting claims in other co-pending Hyatt applications (Compl. ¶¶73-76). Plaintiff argues these rejections are erroneous and, in any event, are insufficient to preclude issuance because the reference claims have not themselves issued (Compl. ¶¶77-78).

V. Key Claim Terms for Construction

The complaint does not provide the text of the asserted claims or sufficient detail regarding the specific bases of the PTO's rejections to enable a meaningful analysis of key claim terms for construction.

VI. Other Allegations

  • Allegations of Prosecutorial Misconduct: The complaint alleges that the PTO engaged in a "decades-long campaign to prevent Mr. Hyatt from obtaining further patents" (Compl. ¶43). Specific allegations include placing Hyatt's applications, including the '177 Application, into the "Sensitive Application Warning System (SAWS)" to prevent their issuance, engaging in unreasonable delays, reopening prosecution after Board victories, and acting in bad faith (Compl. ¶¶17, 43-45). The complaint alleges these actions prejudiced the examination of the '177 Application (Compl. ¶45).

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

The resolution of this case will provide insight into the judiciary's role in overseeing PTO examination practices, particularly in extraordinary cases. The central questions for the court appear to be:

  • A core legal issue will be one of equitable forfeiture: Did the applicant's conduct during the multi-decade prosecution rise to the level of an "egregious misuse of the statutory patent system" sufficient to support a rejection for prosecution laches, or were the delays primarily attributable to the PTO's own procedures and alleged inaction, as the plaintiff claims?

  • A key evidentiary question will be one of patentability over the prior art: In its de novo review, will the court find that the PTO met its burden to establish that the specific combinations of image scanning (Allis), windowed memory access (Christopher), and video compression (Widergren) render the '177 Application's claims obvious?

  • A central procedural question will be the effect of alleged agency misconduct: To what extent, if any, will the plaintiff's detailed allegations of a systemic, prejudicial "campaign" by the PTO against his applications influence the court's de novo consideration of the technical and legal grounds for rejection?