DCT
1:25-cv-01159
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 Director of the United States Patent and Trademark Office (USPTO)
- Plaintiff’s Counsel: Baker & Hostetler LLP
- Case Identification: 1:25-cv-01159, E.D. Va., 07/11/2025
- Venue Allegations: Venue is asserted under 28 U.S.C. § 1391(e) and 35 U.S.C. § 145, which governs civil actions against the USPTO Director.
- Core Dispute: Plaintiff seeks a court order compelling the USPTO to issue a patent for U.S. Patent Application No. 08/469,098, following a decision by the Patent Trial and Appeal Board affirming an examiner's rejections.
- Technical Context: The application at issue relates to various methods of computer information processing, including buffered data handling, database information processing, and axis address updating.
- Key Procedural History: The complaint details an unusually protracted prosecution history spanning several decades. Plaintiff alleges that the USPTO subjected the application to its "Sensitive Application Warning System" (SAWS), suspended prosecution on numerous occasions, and ultimately rejected the claims on multiple grounds, including the equitable doctrine of prosecution laches. Plaintiff frames this history as a "decades-long campaign" by the PTO to prevent the patent from issuing.
Case Timeline
| Date | Event |
|---|---|
| 1984-10-18 | Priority date of '098 Application (filing of parent application 06/662,211) |
| 1995-06-06 | '098 Application filed |
| 1995-08-XX | Plaintiff files preliminary amendment |
| 1995-09-XX | PTO issues non-final office action |
| 1996-02-XX | Plaintiff petitions to withdraw office action |
| 1996-03-XX | PTO grants petition and withdraws office action |
| 2001-06-XX | PTO issues non-final office action rejecting all claims |
| 2002-01-XX | Plaintiff responds to office action |
| 2002-07-31 | PTO suspends prosecution (first of eight noted suspensions) |
| 2013-10-XX | PTO issues "Requirement" action |
| 2014-01-XX | Plaintiff responds to Requirement |
| 2014-03-XX | PTO issues non-final office action rejecting all claims |
| 2014-09-XX | Plaintiff responds to office action |
| 2017-07-XX | PTO issues non-final office action rejecting all claims |
| 2017-12-XX | Plaintiff responds to office action |
| 2019-04-XX | PTO issues final office action rejecting all claims |
| 2019-11-XX | PTO issues final office action rejecting all claims |
| 2020-09-XX | PTO issues final office action rejecting all claims |
| 2021-03-XX | Plaintiff files notice of appeal to the PTAB |
| 2021-09-XX | Plaintiff files appeal brief |
| 2022-08-XX | PTO issues examiner's answer |
| 2022-12-XX | Plaintiff files reply brief |
| 2025-06-02 | PTAB issues decision affirming rejections |
| 2025-07-11 | Complaint filed |
II. Technology and Patent Application-in-Suit Analysis
U.S. Patent Application No. 08/469,098
- Application Identification: U.S. Patent Application No. 08/469,098 (“’098 Application”), filed June 6, 1995.
The Invention Explained
- Problem Addressed: The complaint does not explicitly state a technical problem, but the subject matter described suggests a need for more efficient and specific methods of processing, buffering, and displaying database and graphical information in computer systems (Compl. ¶13).
- The Patented Solution: The application claims several distinct methods for handling data. These include multi-buffer systems for displaying information derived from database records, pipelined buffer processing, the use of gated clock pulses to manage data processing, and updating multi-axis address information using integral and fractional parts (Compl. ¶13 a-f). The solutions aim to achieve these results while avoiding certain processing techniques like "kernel filtering" or the use of "sequential buffers," suggesting an invention focused on specific, alternative data-handling architectures (Compl. ¶13 a, c, d).
- Technical Importance: The technology relates to fundamental operations in computer memory architecture, graphics systems, and database management, which are core components of modern computing (Compl. ¶3).
Key Claims at a Glance
- The complaint seeks issuance of 276 claims, identified as "the Subject Claims" (Compl. ¶11).
- Specific claims are identified in the context of the PTO's rejections, including claims 189, 242, 245, 252, 255, 306, 328, 354, 420, and 459 (Compl. ¶¶47, 70-74).
- The complaint does not provide the language of any specific claim.
III. Analysis of Disputed PTO Rejections
The action challenges the PTAB's affirmance of several rejections made by the USPTO examiner. The Plaintiff contends that all rejections are erroneous (Compl. ¶¶49, 52, 54, 68, 76).
- Written Description (§ 112, first paragraph): The PTO rejected ten claims, including 189 and 242, for an alleged lack of written description (Compl. ¶47). Plaintiff counters that the disclosure of the '098 Application is sufficient for a person of ordinary skill in the art (POSITA) to recognize that the inventor was in possession of the claimed subject matter as of the filing date (Compl. ¶48).
- Indefiniteness (§ 112, second paragraph): The PTO rejected claim 306 as indefinite (Compl. ¶50). Plaintiff argues the claim informs a POSITA about the scope of the invention with reasonable certainty (Compl. ¶51).
- Prosecution Laches: The PTO held the entire application forfeited under the doctrine of prosecution laches (Compl. ¶53). The complaint presents multiple arguments against this rejection, including that laches is not a valid statutory ground for rejection, that Plaintiff did not delay prosecution, and that any delay is attributable to the PTO's own actions and inaction, including numerous suspensions of prosecution (Compl. ¶¶55-57).
- Undue Multiplicity: The PTO rejected all Subject Claims for allegedly failing to distinctly claim the invention under the doctrine of undue multiplicity (Compl. ¶64). Plaintiff asserts that each claim informs with reasonable certainty of its scope, distinctly claims the subject matter, and has ascertainable differences in scope from other claims (Compl. ¶¶65-67).
- Obviousness (§ 103): The PTO rejected several claims as obvious over combinations of prior art patents (Compl. ¶¶69-74). Plaintiff alleges that the claims would not have been obvious to a POSITA based on the cited references (Compl. ¶75). The specific combinations alleged for key claims are summarized below.
No probative visual evidence provided in complaint.
Summary of Asserted Obviousness Rejections
| Rejected Claim | Prior Art Combination Alleged by PTO | Technology of Key Prior Art |
|---|---|---|
| Claim 189 | Kobayashi (U.S. Pat. No. 4,550,437), Westland (U.S. Pat. No. 4,685,003), and Keeley | Kobayashi teaches an apparatus for parallel processing of local image data using juxtaposed processor units (Kobayashi Patent, Abstract). Westland teaches a video composition system for selecting and sorting video segments using digitized frames as "video labels" on display monitors (Westland Patent, Abstract). |
| Claim 245 | Kobayashi, Westland, and Morrin | See above for Kobayashi and Westland. |
| Claim 255 | Kobayashi, Gabriel, and Morrin | See above for Kobayashi. |
| Claim 306 | Kobayashi and Gabriel | See above for Kobayashi. |
| Claim 328 | Kobayashi, Westland, Gabriel, and Bandai | See above for Kobayashi and Westland. |
| Complaint Citation for all rows: ¶¶70-74 |
IV. Key Claim Terms for Construction
The complaint does not provide the text of the asserted claims or the specifics of the PTO's indefiniteness or written description rejections. Therefore, the complaint does not provide sufficient detail for analysis of key claim terms.
V. Allegations of Procedural Misconduct
- Bad Faith / Unclean Hands: The complaint alleges that the PTO's rejection for prosecution laches is erroneous because the PTO has "unclean hands" (Compl. ¶63). The basis for this is an alleged "decades-long campaign to prevent Mr. Hyatt from obtaining further patents" (Compl. ¶44). The complaint alleges the PTO subjected the application to the SAWS program to prevent allowance, "recycled" applications by reopening prosecution after Board victories, and misrepresented its intentions to a federal court (Compl. ¶44). It is further alleged that the PTO acted in bad faith and prejudiced the proceedings (Compl. ¶46).
VI. Analyst’s Conclusion: Key Questions for the Case
This case presents a rare judicial review of a patent prosecution process marked by extraordinary delay and allegations of procedural gamesmanship. The key questions for the court appear to be:
- A primary legal and equitable question will be one of prosecutorial conduct: Can the doctrine of prosecution laches be applied to an application subject to the URAA transitional rules, and will the court find that the decades of delay were caused by the applicant's conduct or, as the complaint alleges, by the PTO's own administrative actions, suspensions, and "bad faith" campaign?
- A central substantive question will be one of patentability on the merits: In its de novo review, will the court find that the claims satisfy the statutory requirements of § 112 (written description, definiteness) and § 103 (obviousness)? This will require a detailed technical comparison between the '098 Application's disclosure and the teachings of prior art like the Kobayashi and Westland patents.
- An overarching procedural question will be the scope of de novo review: To what extent will the court permit the introduction of new evidence and argument regarding the lengthy and contentious prosecution history, and how much weight will be given to the PTO's findings in light of the allegations of procedural prejudice?