Hyatt; Prosecution Laches; and more Civil Actions

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.

DaiichiSankyoVUSPTO_complaint.

45 thoughts on “Hyatt; Prosecution Laches; and more Civil Actions

  1. 6

    You really have to read the patent application and claims to see what this is all about.

  2. 5

    Bravo Gil. Bravo.

    May you never give up.

    1. 5.1

      “May you never give up” = “May you never run out of money to pay for these lawsuits”.

      1. 5.1.1

        Ha! True dat ipguy!

  3. 4

    Paul Morgan @1.1.1.1 is right to point out the PTO’s culpability, except that he does not explain that the PTO is solely responsible for this “bizarre endless prosecution of many old Hyatt applications.” Hyatt could not delay prosecution that long, even if he wanted to – the PTO always had all the tools to put an end to prosecution for more than two decades. It simply chose not to do so by design. It is rather simple:

    Rule 113 states that “On the second or any subsequent examination or consideration by the examiner the rejection or other action may be made final. It matters not how many times Hyatt attempts to add claims – the PTO can issue a “final” at any stage after the second action. It simply chose not to do so by design.

    Hyatt could not take more than 6 months to respond to an Office Action. 35 USC § 133. So do the math: the PTO can conclude prosecution in less than 2 years after first action. It simply chose not to do so by design.

    OK, but what about continuations? Could Hyatt file an unlimited number of continuations and delay that way? Can he do what Lemelson did? The simple answer is NO, because Hyatt’s Pre-GATT applications are governed by the Transitional Rules, according to which only two submissions under Rule 129 may be filed. So do the math: add a maximum of two cycles of prosecution and you get a maximum prosecution duration not exceeding 4 years from first action – not 26 years. Hyatt had no such control of prosecution time. The PTO had all the power and tools to conclude prosecution but it simply chose not to do so by design.

    How did the PTO accomplish this? If you read the Hyatt court material, the record shows that the PTO prevented Hyatt from reaching the Board of Appeals, which would have otherwise resulted in final agency action that he could take to court. But the PTO issued repeated suspensions of action and reopened prosecution after Hyatt’s filing of appeal briefs.

    Why would the PTO keep Hyatt in such prosecution purgatory? The answer is simple: Back in the 1990’s the PTO already tagged Hyatt as a “submariner” with applications covering basic technologies that by then might have been in widespread use. Officials at the PTO were protecting their favorite big-tech “stakeholders” by avoiding issuing any more patents to Hyatt. Check out the PTO database – Hyatt’s last issued patent was in 1997. Now, if issuing such basic patents to Hyatt after 1997 was too embarrassing to the PTO then, it can only be prohibitively more embarrassing to issue them more than two decades later. The PTO dug itself into a bigger hole and could not stop. Now, the PTO is simply waiting for Hyatt to die.

    1. 4.1

      Thanks for the brief W.B. I don’t have one, but note that “the PTO simply waiting for Hyatt to die” would not be likely to end this matter. His executors would presumably be obligated to preserve his estates assets for his heirs, which assets includes these applications [if they are evaluated as that valuable] by continuing his various litigations against the PTO to obtain patent issuances. Patent rights don’t die with the inventor.
      Also, if the entire delay of all these applications is entirely the fault of the PTO, and is as simply proven as you very appealing assert here, then why is it that he has not been able to prove that in his numerous Federal lawsuits and the recent Fed. Cir. appeal? [It cannot be for lack of litigation funding.]
      I of course have no way of knowing if your assertion is correct or not that these years of delays were primarily due to the PTO issuing repeated suspensions of action and reopened prosecution after Hyatt’s filing of appeal briefs to prevent PTAB decisions that could then be appealed.
      Does anyone else care to comment?

      1. 4.1.1

        Paul M: “if the entire delay of all these applications is entirely the fault of the PTO, and is as simply proven as you very appealing assert here, then why is it that [Hyatt] has not been able to prove that in his numerous Federal lawsuits and the recent Fed. Cir. appeal?

        Paul, you are mistaken on all accounts. First, one does not prove facts at the Federal Circuit because it is not a finder of fact – the District Court is. The Federal Circuit’s account is simply its one-sided conclusion – not findings of facts. Second, the only decision and findings of fact rendered by a District Court on the prosecution laches issue actually found for Hyatt – not for the PTO. Judge Lamberth found that the PTO failed to meet its burden of showing that it was Hyatt who unreasonably and unexplainably delayed prosecution. Judge Lamberth found that the PTO was responsible for years of delay.

      2. 4.1.2

        BTW W.B., I note that you did not respond to my question below as to why, if Hyatt was really trying to advance his prosecution, he did not file an APA suit against the PTO many many years ago for improper agency delay, way back when the PTO had first stopped acting on his applications, since he seems to have had clear grounds for and APA suit way back then?

    2. 4.2

      “Hyatt could not delay prosecution that long, even if he wanted to – the PTO always had all the tools to put an end to prosecution for more than two decades. It simply chose not to do so by design.”

      This seems like a great argument if only the last two and a half decades were at issue. But from the CAFC’s decision, it’s quite clear that is not the case.

      “The PTO argued that Hyatt had engaged in a “pattern of delay in prosecuting his nearly 400 patent applications from 1969 through the present day.” J.A. 18902. According to the PTO, that was true even disregarding the period from 2003 to 2012—which the PTO did not rely on—when the PTO suspended prosecution of most of Hyatt’s applications due to pending litigation.”

      “Hyatt argues that he delayed only seven to 11 years to file the four applications at issue and between 10 and 19 years before presenting the claims now in dispute.”

      1. 4.2.1

        Ben,
        You cite the Federal Circuit’s account of what happened before June 1995 when Hyatt filed numerous continuations before the GATT deadline, for which he claimed early priority dates. But the Federal Circuit is not a fact finder in this case – the District Court will be. You apparently have ignored, as did the Federal Circuit, the PTO’s sole culpability for not protecting the public from further delays during all the years after 1995, when it could have used the tools I listed above while Hyatt was limited to only two further continuations in Rule 129 submissions. If Hyatt’s prosecution before 1995 was exceptionally long, the PTO had even a heavier duty to use its tools to terminate prosecution to final agency action after 1995. The PTO had all the power and tools over decades to do so but apparently used various pretexts to avoid finality.

        Reading the briefing in these Hyatt court cases, it is evident that the PTO had gone out of its way to circumvent its own internal controls designed to ensure compact prosecution. It assigned Hyatt’s applications to be parked in “phantom” art units with no examiners; it later formed a special art unit to “examine” (to further park) Hyatt’s applications in which all examiners had a special Performance Appraisal Plan (PAP) that is radically different from the standard examiner corps’ PAP. The briefing reveals that the Hyatt art unit PAP has no production expectancy component and no Docket Management time limits. Why would the PTO implement such a deviation from the standard PAP if it truly sought to advance prosecution to final agency action? It is evident from the briefing that over the years, the PTO has perfected an elaborate machinery to park Hyatt’s applications. It did so knowing it intends no finality and thus designed this art unit’s PAP to avoid penalizing the examiners. Of course you would not know this from reading the Federal Circuit’s account.

        When a District Court finally renders any judgement under Section 145 vindicating Hyatt’s property rights and ordering the PTO to issue a patent to Hyatt, the PTO will have a lot of explaining to do about how it violated the public trust by gambling against this one prolific inventor. It will have to explain why it let these decades of delay happen when it had all the tools to avoid them, and why it now subjects industries to 17-year patent term that could have ended years ago had the PTO followed the law.

        1. 4.2.1.1

          “it later formed a special art unit to “examine” (to further park) Hyatt’s applications in which all examiners had a special Performance Appraisal Plan (PAP) that is radically different from the standard examiner corps’ PAP. The briefing reveals that the Hyatt art unit PAP has no production expectancy component and no Docket Management time limits. Why would the PTO implement such a deviation from the standard PAP if it truly sought to advance prosecution to final agency action?”

          Characterizing the Hyatt art unit as a further delay tactic is silly when it was the Hyatt art unit that worked through, finally rejected, and forwarded the applications at issue to PTAB.

          Maybe less silly and more deceitful.

      2. 4.2.2

        If what Ben says is true (which is always in doubt), then maybe the PTO should be estopped from making laches arguments against Hyatt. Even if Hyatt started it, the PTO delaying this for 10-20 years is outrageous.

    3. 4.3

      The flaw in your presentation (or at least one of them) is that your hypothesis requires coordinated action among PTO upper management across multiple administrations, and not to mention a level of competence and ability far beyond those demonstrated by upper management over the years. To your credit, you didn’t use the term “deep state” in describing the conspiracy against Mr. Hyatt.

  4. 3

    I think these would probably fail under 101/112 from my reading of one of the patent applications.

    1. 3.1

      That raises an interesting question someone else might be able to answer? Can the PTO Solicitor raise 101, 112 or other grounds for PTO refusal to issue those claims in an applicant’s 145 de novo civil suit even if no such rejections were not made or not sustained in the PTO below? [If that is the case.]

      1. 3.1.1

        OK. I won’t answer it then.

      2. 3.1.2

        It seems like the answer is suggested in Hyatt’s June 2021 remand:

        Further, the PTO may assert the prosecution laches defense in a § 145 action even if it did not previously issue rejections based on, or warnings regarding, prosecution laches during the prosecution of an application that is at issue in the § 145 action. In Kappos v. Hyatt, the Supreme Court concluded that “there are no limitations on a patent applicant’s ability to introduce new evidence in a § 145 proceeding beyond those already present in the Federal Rules of Evidence and the Federal Rules of Civil Procedure.” 566 U.S. 431, 445–46 (2012). Following Kappos, we held that new evidence may be admitted “without regard to whether
        the issue was raised before the Board.” Troy v. Samson Mfg. Corp., 758 F.3d 1322, 1325 (Fed. Cir. 2014). Under these holdings, § 145 actions open the door to new evidence and arguments. Fairness dictates that the door must also remain open for the PTO to assert its meritorious defenses under the circumstances, including prosecution laches. Moreover, reserving the prosecution laches determination for infringement actions, but not § 145 actions, would harm the public’s interest by allowing a patentee to enforce a patent that could have been barred for prosecution laches in an earlier § 145 action. While the PTO’s failure to previously warn the applicant or reject claims based on prosecution laches may be considered as part of the totality of the circumstances in determining prosecution laches, it does not bar the PTO from asserting the defense in a § 145 action.

        1. 3.1.2.1

          Thanks Ben, that answers that question.

          1. 3.1.2.1.1

            That means that any potential Hyatt patent suit defendants could try to file amicus briefs or provide prior art to the PTO Solicitor in these Hyatt 145 civil suits. [But it is not typical of large companies to wake up and do that kind of advance risk avoidance until sued.]

  5. 2

    The above “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)” is a second APA challenge to the PTABs “Fintiv Rule” [non-formal rule] for discretionary denial of otherwise qualified IPRs or PGRs of patents being sued on. The previously filed APA suit is 5:20-cv-6128, N.D. CA San Jose, APPLE INC., CISCO SYSTEMS, INC., GOOGLE LLC, and INTEL CORPORATION v. ANDREI IANCU.

  6. 1

    Another Hyatt lawsuit against the USPTO to add to the above listed 5: Gilbert P. Hyatt v. Andrew Hirshfeld, Case Number 1:21-cv-01084. Cause of Action: Patent Applicant is Dissatisfied with PTO Decision. E.D. VA 2021-09-24.
    Did anyone get a copy of the complaint yet?

    1. 1.1

      BTW, my recollection is that Mr. Hyatt can no longer keep his subject applications secret in these 35 U.S.C. 145 D.C. civil action de novo reviews? I would think there are going to be some unpleasant surprises for U.S. companies from some of these presumably very numerous application claims in these very long pending applications if he is successful. The patents will run for 17 years from their issue dates no matter how many years ago they were filed.

      1. 1.1.1

        He will be stopped. Otherwise, his patents will be forced in perpetuity by his estate. Patents filed in 1996 have expired. Why should he benefit from pre-1995 filings that last forever because he concocted this scheme?

        Weird how ppl on here defend him. He is a bad actor.

        1. 1.1.1.1

          The PTO is not innocent either re the bizarre endless prosecution of many old Hyatt applications. Hyatt reportedly demonstrated in his prior lawsuits some prior period of complete stopping by the PTO of examiners acting on some PTO Hyatt applications* [commonly referred to as a “SAWS” program]. This was a clearly improper PTO response to Gilbert Hyatt’s hundreds of very long pending applications in which he continued to keep adding thousands of new claims. That PTO conduct was ended and those applications are now being handled for some time by a special team of PTO examiners supposed to expedite their examination.
          *[Not to be confused with mere poor PTO docket management controls that had allowed some examiners to get away with avoiding working on difficult old submarine applications in favor of newer and easier ones.]
          P.S. If APA suits had been promptly filed by Hyatt [before the APA statue of limitations ran] for unreasonable and unwarranted PTO internal administrative delays, which the APA prohibits, no PTO SAWs program would have succeeded for long, and Hyatt would not have had to file his recent mandamus suit in E.D. Virginia, which recently went up to the Fed. Cir. and back. [Not to be confused with these individual application 145 suits.]
          Those with more information should chip in here, given the unconsidered business risks involved, and thus the potential for more congressional criticism of the patent system, if these thousands of claims issue, written much later to cover much later products, and become assertable for 17 more years.

        2. 1.1.1.2

          It is weird how people here defend them. But you need to understand that a lot people here are greedy glibertarian creeps exactly like Hyatt. The patent system attracts those people for reasons that we need not dwell on now.

        3. 1.1.1.3

          Paul has the right side here. There has been some strange things going at the PTO.

          Frankly, I’ve read one of the patent applications, which I think was the basis for many continuations, and I am at a loss for why the PTO could not just examine the claims. I think I could have rendered them obvious very easily.

          But, in any case, I think what happened with these patent application should be better understood.

          1. 1.1.1.3.1

            “Frankly, I’ve read one of the patent applications, which I think was the basis for many continuations, and I am at a loss for why the PTO could not just examine the claims. I think I could have rendered them obvious very easily.”

            It was probably that someone internally recognized him from the last go round of apps and realized there might be something afoot. Obviously in today’s environment that makes no sense, but back in the day, the office and its business was much more individual to individual based as they couldn’t have had more than like 100 dudes working in the art area at the time, if that.

            “But, in any case, I think what happened with these patent application should be better understood.”

            Did you listen to the Hyatt interview where he runs people through it somewhat at ipwatchdog (iirc?)?

        4. 1.1.1.4

          Sir Thomas More called — maybe you should check out his position (“bad actor” or not).

        5. 1.1.1.5

          “Why should he benefit from pre-1995 filings that last forever because he concocted this scheme?”

          If you listen to his side of the story it becomes quite a bit different in the telling. His pre-1995 filings were just everday legit apps so far as I can tell, and they gave him a big bunch of bs about prosecuting them so he just kept on fighting them. And this happened after his previous tussles with the office WAAAAAAY back, which he felt like were why they were giving him a hard time on those apps and why he kept fighting them. Iirc. Frankly if it were permitted, he would likely settle all of them for some millys and some recognition, perhaps with an apology before he kicks offi. As it is, instead he wields the cudgel of never ending prosecution of gigantunormous valuable claims over their heads instead. Whats funny of course is that the PTO personnel that originally gave him trouble are likely nearly all near dead by now.

          Once you find out who the man is, it someone more makes sense. He’s basically a half legitimate claimant to having developed one of the first microcontrollers or ICs or some such WAAAAAAY back. And I have little doubt he probably did make a contribution, and the PTO probably gave him a bunch of administrative bs about it, resulting in him not getting due credit in his day, and a few missed business this or that as a young man, and sparked a tussle lasting to this day. And that coupled with the PTO itself for some odd reason not willing to even discuss matters with him through many admins iirc.

          Bottom line, give the man some credit, where tis due, and a few milly and the whole thing goes away I would bet.

          1. 1.1.1.5.1

            6, I believe you are referring, with “microcontrollers or ICs,” to an older Hyatt issued patent within the claims of which was a claim to multiple transistors on the same chip. I have no idea how much licensing money Hyatt made from that. However I heard and read that he later lost that claim in a patent interference with an Intel 35 USC 157 SIR PTO publication. [SIRs no longer exist. If you are old enough to remember SIRS you would also remember that Intel was the leading pioneer microprocessor developer.]

            1. 1.1.1.5.1.1

              “was a claim to multiple transistors on the same chip”

              Yeah basically that, primitive IC stuff, and he runs through the story of what all was going on at the time in the podcast. Shame he didn’t get more recognition for what specifically he likely contributed. Though it may have been a somewhat smaller contrib than he would have liked to get recognition for. Thems the breaks sometimes.

              “I have no idea how much licensing money Hyatt made from that. ”

              I don’t remember, he might have mentioned it. But bottom line was there was some tusseling he thought was bs on the part of the office.

              “However I heard and read that he later lost that claim in a patent interference with an Intel 35 USC 157 SIR PTO publication.”

              That may have been what he thought of as bs on the part of the office. Who knows what all technically happened during the proceedings? Perhaps nobody really knows, as few have ever looked into it most likely and those that did look into it may not have gigantic super ninja skills to see what likely happened internally and bureaucratically to end up with him getting partially screwed over.

              “If you are old enough to remember SIRS you would also remember that Intel was the leading pioneer microprocessor developer.]”

              I don’t really remember any of it, as I am not that old. I just read the histories my man. But he also told the story himself on the podcast about him and there was one other major competitor at the time iirc to getting the patent and who was producing relevant prior art, tho I don’t think it was the company of Intel, it may have been the forerunner to Intel, or its founders etc, I’m not sure.

            2. 1.1.1.5.1.2

              We may be thinking of different cases, but Hyatt lost an interference with Texas Instruments over the single chip microcontroller in 1996.

              link to nytimes.com

              Turning back to the remand decision…

              “On October 24, 1995, about five months after Hyatt filed his GATT Bubble applications, PTO group Director Nicholas Godici met with Hyatt to discuss the applications. Director Godici asked Hyatt, and Hyatt agreed, to focus each application’s claims on distinct subject matter.”

              Between that meeting and 2003, Hyatt filed a series of amendments in his applications that grew the number of
              claims to a total of approximately 115,000, including approximately 45,000 independent claims.”

              It seems very plausible that Hyatt’s reneging on the 1995 agreement was responsive to the PTO’s decision in the interference. I’d really like to know whether or not the expansive amendments started before or after the interference was completed.

              1. 1.1.1.5.1.2.1

                Thanks Ben for finding that Hyatt lost that interference to Texas Instruments [not Intel] over the single chip microcontroller in 1996, and the
                link to nytimes.com

            3. 1.1.1.5.1.3

              I remember SIRs from back when I first went to work at the PTO. Folks forget that publication of patent applications is a relatively recent development. There was a lot of valuable “prior art” that got lost to the ages because it was in patent applications that became abandoned or otherwise never issued as a patent. SIRs were used by those tired of other people re-inventing the wheel that never got patented. SIRs gave parties who didn’t want to file a patent application for their technology the ability to poison the well for others done the road who might have re-invented that technology.

              1. 1.1.1.5.1.3.1

                One always had the choice of publication** — your reference to publication of patent applications is (shall we say) a bit problematic***.

                ** independent of any patenting activities

                *** let’s not forget that the US Sovereign exchange between equals (the Quid Pro Quo) has never been publication for mere chance at having one’s inchoate property rights transformed into the full bundle of property rights.

                1. Although now academic, SIRs could be used [as many interferences are] for removing claims from later inventors, but not for obtaining patent claims for the SIR user. [Also, its publication or laid open date was less disputable than some other publications.]

                2. My comment was focused on publication by the USPTO, and not whether people could publish their inventions elsewhere. In the old days (you know, back in the 20th Century), patent applications filed at the USPTO were kept confidential until a patent issued. They were not published by the USPTO. Starting in November 2000 (which may or may not be considered part of the 20th Century depending on whom you ask), the USPTO started publishing patent applications 18 months after their earliest filing date. SIRs were part of the “shoes” that Examiners used to find prior art but there was darn little else. Back in the 20th Century, when the Internet/WorldWideWeb was a bright, shiny new thing when Yahoo was in its infancy and Google had just been launched on Stanford’s network, the shoes were the start and finish for prior art searching as a practical matter for the vast majority of Examiners. Examiners were encouraged to use this new-fangled internet to search online but there were a lot of caveats to its use. The vast majority of Examiners never spent any time searching in the USPTO Research Library through NASA Technical Briefs or any other “publication” (as the term was generally understood by Examiners back in the day).
                  So, back in the day, while an inventor may have “published” their invention in some form somewhere, at the time there was darn little chance any Examiner would ever see it if it was not in a SIR. Thus, a patent would be granted and it would be up to a patent litigator to find the prior art “publication” the Examiner never saw, and use that prior art to invalidate the patent granted because the Examiner never saw the prior art that invalidated it.
                  Hooray for publication of patent applications.

                3. In the old days (you know, back in the 20th Century), patent applications filed at the USPTO were kept confidential until a patent issued.

                  Still an option — and a default one that most all of my clients use.

                  It’s called “Non-Publication Request” and is rescindable if during the course of events any particular instance arises for which publication is necessitated.

                  Hooray for publication of patent applications.

                  I decline your invitation that finds its birth in laziness at the expense of the ACTUAL US Quid Pro Quo.

                4. “It’s called “Non-Publication Request” and is rescindable if during the course of events any particular instance arises for which publication is necessitated.”

                  Most practitioners are aware of it as they are also aware that it comes at the cost of foreign filing rights. A number of my clients have chosen to go that route, and some have even rescinded the “Non-Publication Request” because they still had time to file a PCT or other foreign application and they decided to go that route.

                5. cost of foreign filing rights.

                  Not so — that is expressly why the path of rescission is present.

                6. “Not so — that is expressly why the path of rescission is present.”

                  Just about every knowledgeable practitioner knows that you can rescind the non-publication request but that wasn’t the point I was making. When you file the non-publication request, you are agreeing to give up your foreign filing as, under the non-publication request, the applicant agrees to not file for foreign patent protection based upon the U.S. patent application. Applicants are normally allowed to wait until one year from the filing date of the U.S. patent application to file in foreign countries. But applicants who opt to keep their applications confidential until issuance are prohibited by law from taking advantage of this foreign filing provision unless they withdraw their non-disclosure requests in a timely manner. If you wait more than one year from the US application’s filing date (assuming there was no provisional application filed), you can’t foreign file and claim the benefit of the US application’s earlier filing date, which is just about a virtual death sentence for the foreign filing. And if you fail to timely notify the USPTO of what you’ve done, your US application will be deemed abandoned. MPEP 1123 lays it out for the hoops you jump through should you decide to rescind the non-publication request and foreign file.
                  Now you know, and knowing is half the battle.

                7. ipguy – you appear to be approaching maximum density.

                  but that wasn’t the point I was making.

                  The point that you are attempting to make is expressly refuted with that comment.

                  You are in pure error with a statement of, “When you file the non-publication request, you are agreeing to give up your foreign filing as, under the non-publication request, the applicant agrees to not file for foreign patent protection based upon the U.S. patent application.precisely because the power to rescind is present.

                  You would be much better off in stating (after recognizing) that the filing of a non-publication request entails THE POTENTIAL rejection of being able to file for foreign patent protection based upon the U.S. patent application.

                  While you state, “Just about every knowledgeable practitioner knows that you can rescind the non-publication request” – you seem absolutely oblivious to what this means in practice.

                  It is rather humorous that you would deign to add, “Now you know,” when it is abundantly clear that I know this area of law far more deeply than you. But go ahead and clamor about some ‘point’ that you want to make.

      2. 1.1.2

        There’s always inequitable conduct. With so many applications spread out over so many years, it is highly likely there have been a number of failures to disclose critical prior art that arose in one application in one or more of his other applications.
        Then again, it all has nothing to do with patent validity or invalidity. It’s all about leverage and negotiating a settlement.

        Does anyone know if a Hyatt Patent Buster Squad has ever been formed?

        1. 1.1.2.1

          Re: “Does anyone know if a Hyatt Patent Buster Squad has ever been formed?” No, and see the last sentence of 3.1.2.1.1 above.

    2. 1.2

      Did all these Hyatt applications finally get to the PTAB for PTAB appeal decisions, and are there no other outstanding rejections of claims other than for laches?

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