by Dennis Crouch
The Federal Circuit’s new opinion in Hyatt v. Stewart affirms a bench-trial judgment that the USPTO may invoke prosecution laches to defeat four of Gilbert Hyatt’s pre-GATT civil actions under 35 U.S.C. § 145. The panel treated the availability of prosecution laches in § 145 as settled by Hyatt v. Hirshfeld (“Hyatt I”), 998 F.3d 1347 (Fed. Cir. 2021), and rejected Hyatt’s renewed argument that the Supreme Court’s recent decisions on laches (Petrella and SCA Hygiene) foreclose an equitable time-bar in patent-issuance litigation. The court also affirmed the district court’s prejudice findings and dismissed Hyatt’s cross-appeal for lack of Article III injury with respect to claims on which the Board had reversed the examiner.
But neither Hyatt I nor this new Hyatt decision dug deeply into the question of whether § 145 actions permit a prosecution-laches defense after Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U.S. 663 (2014), and SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC, 580 U.S. 328 (2017). Those decisions restrict laches laches to “gap-filling” situations where no statute of limitations is available. I expect Hyatt to seek en banc review to revisit the Federal Circuit’s reliance on the Symbol line of cases and to test the extent that Petrella/SCA undermined prosecution laches for § 145 actions.
As I explain below, I think Hyatt loses this one because there is no statute of limitations governing the overall patent prosecution timeline.
Now to be clear, I think the situation should be different for post-URAA patents whose term is measured as 20 years from the application filing date. That 20-year term creates the very statute of limitations that obviates the need for laches. Unlike Hyatt's pre-GATT applications, which benefit from the old 17-year-from-issuance term system where prosecution delays actually extend the total monopoly period, post-URAA applicants face a built-in temporal constraint: every day spent in prosecution is a day lost from the patent's enforceable life. This fundamental shift in incentives means that for modern patent applications, Congress has indeed provided the temporal SOL framework that Petrella and SCA Hygiene suggest should preclude equitable time-bars. The 20-year term effectively serves as an overarching statute of limitations for the entire prosecution process, filling the very gap that prosecution laches was designed to address.