by Dennis Crouch
In a June 2021 decision, the Federal Circuit supported the USPTO in its arguments that Gilbert Hyatt long-pending patent applications could be rendered moot based upon the doctrine of Prosecution Laches. Hyatt v. Hirshfeld, 998 F.3d 1347 (Fed. Cir. 2021). Those cases are now on remand and the district court is setting up for trial on the question of whether the 20+ year delay in prosecution was due to Hyatt’s unreasonable behavior and whether the delay has resulted in prejudice. The parties now are arguing about whether the court will allow a full presentation of new evidence or limit the trial only to Hyatt’s justifications of his actions.
Hyatt has now also filed additional Section 145 actions seeking a district court order that the USPTO issue his patents in two other pending applications.
- Hyatt v. Hirshfeld, Docket No. 1:21-cv-01019 (E.D. Va. Sep 03, 2021), (Application No. 08/433,307).
- Hyatt v. Hirshfeld, Docket No. 1:21-cv-01084 (E.D. Va. Sep 24, 2021), (Application No. 08/458,549).
- Hyatt v. Hirshfeld, Docket No. 1:21-cv-00936 (E.D. Va. Aug 17, 2021),(Application No. 08/423,235).
- Hyatt v. Hirshfeld, Docket No. 1:21-cv-00892 (E.D. Va. Aug 03, 2021), (Application No. 08/460,768).
- Hyatt v. Hirshfeld, Docket No. 1:21-cv-00884 (E.D. Va. Jul 30, 2021), (Application No. 08/426,450).
Each of these cases involve a PTO refusal to issue the patent based upon prosecution laches.
Another E.D.Va. patent case recently filed against the USPTO is Daiichi Sankyo, Inc. et al v. United States Patent and Trademark Office et al, Docket No. 1:21-cv-00899 (E.D. Va. Aug 05, 2021). Daiichi Sankyo is an Administrative Procedure Act (APA) case arguing that the PTO has adopted two AIA-trial-related rules rules that are “arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law.” 5 U.S.C. § 706(2)(A). Challenged rules:
- NHK-Fintiv rule that allows the PTAB to deny institution based upon parallel patent infringement litigation.
- Arthrex rule regarding PTO’s approach to director review. The particular concern in the lawsuit is that the PTO does not provide for director review of institution denials.