by Dennis Crouch
Gil Hyatt v. Hirshfeld (Fed. Cir. 2021).
Patent terms generally last for 20-years from filing. Since the prosecution process typically takes about three years, the result is roughly 17 years of effective patent term. That amount can shift somewhat depending upon various factors, including patent-term-adjustment, terminal disclaimers, patent family size, prosecution timing, and payment of maintenance fees.
The 20-year-from-filing rule started on June 8, 1995 (the GATT deadline). Applications filed prior to that date were treated under the old rule that patent terms last for 17-years from the issue date.
Like many other patent applicants, Gil Hyatt filed a large number of continuation patent applications in the days leading up to the GATT deadline. One difference from most applicants is that Hyatt’s applications were already quite old — claimed priority back to filings from the 1970s and 1980s. The big difference today is that Hyatt’s 300+ cases are STILL PENDING. Under the rules, if these issue as patents then they will be given 17-year patent terms from the issue date — even on applications claiming priority back to the 1970s. To be clear, Hyatt’s applications focus on fundamental aspects of microchip and integrated circuit technology and so could be extremely valuable as enforceable patents.
Hyatt was already a known quantity at the PTO, having battled over his integrated circuit patents in the past, and the PTO very quickly began treating Hyatt a bit different than other applicants. Part of the difference also came as Hyatt amended his applications to add claims — a total of 115,000 (averaging 300 claims per patent application). From 2003-2012, the PTO stopped examining Hyatt’s applications pending litigation in a couple of the cases that culminated in the Supreme Court’s decision in Kappos v. Hyatt, 566 U.S. 431 (2012). When it did start examining, the PTO spent extra hours examining Hyatt’s applications and eventually calculated that it would “532 years of examiner time” to process Hyatt’s applications — this is the equivalent of about 40,000 “typical” patent applications.
Things eventually moved forward with some applications. This case involves four applications that were rejected by the examiners and the PTAB. Hyatt then filed a civil action 35 U.S.C. §145 seeking a court order that the USPTO issue his patents.
The PTO raised an old, but rarely used defense–prosecution laches. See Woodbridge v. United States, 263 U.S. 50 (1923); Webster Elec. Co. v. Splitdorf Elec. Co., 264 U.S. 463 (1924).
Any practice by the inventor and applicant for a patent through which he deliberately and without excuse postpones beyond the date of the actual invention, the beginning of the term of his monopoly, and thus puts off the free public enjoyment of the useful invention, is an evasion of the statute and defeats its benevolent aim.
Woodbridge. The PTO argued that Hyatt should be estopped from obtaining these patents or presenting further arguments based upon the equitable doctrine. The district court held a five-day bench trial on laches and eventually concluded that the PTO should have done a better job. Although Hyatt was not easy to work with, substantial aspects of the blame-for-delay rest with the PTO. In particular here, the Judge entered a R.52(c) judgment against the PTO – finding that it had failed to present a prima facie case of prosecution laches. The district court also found some of the claims at issue were patentable and thus issued an order to the PTO to issue those claims.
On appeal, the Federal Circuit has revived the defense and remanded for further consideration–holding that the district court “failed to properly consider the totality of the circumstances.” Effectively, the PTO’s delay does not excuse Hyatt’s actions. This is a 40 page opinion filled with various procedural gamesmanship, but the court primarily noted several actions:
- Repeated complete rewriting of claims after receiving rejections — often 30+ years after filing, and often in identical form found in one of the other applications.
- Claiming priority to a large number of prior applications with a variety of priority dates.
- Long specifications.
The appellate court writes that Hyatt’s “patterns of prosecution conduct created
a perfect storm that overwhelmed the PTO.”
On remand, the Judge will now permit Hyatt to present his defensive evidence and then rule on the issue of prosecution laches. The court also held “in abeyance ” the appeal with respect to the other issues of anticipation and written description.