Hyatt v. Hirshfeld, 998 F.3d 1347

Background

Gilbert Hyatt filed ~399 U.S. patent applications, 381 during the 1995 "GATT Bubble," largely photocopies of 11 parent specifications, ultimately adding ~115,000 claims across the family.
Four applications are at issue (’211, ’398, ’062, ’639); their claims asserted priority to applications filed 12–25 years earlier, so many claims were presented decades after priority dates.
The PTO created a dedicated art unit, issued eleven "Requirements," and spent substantial resources (millions) processing Hyatt’s applications, citing complexity, overlapping claims, repeated claim shifting, and difficulty ascertaining priority and written-description support.
Hyatt sued under 35 U.S.C. § 145 to obtain patents; the district court held a consolidated bench trial on prosecution laches and later trials on patentability; it granted Hyatt Rule 52(c) relief on laches and ordered some claims issued.
The Federal Circuit held PTO may assert prosecution laches in a § 145 action, found the district court misapplied the laches standard (overemphasizing PTO inaction and narrowing the totality-of-the-circumstances), concluded PTO carried its burden that Hyatt’s delays were unreasonable and abusive, and vacated and remanded for further proceedings to allow Hyatt to rebut.

Issues

Issue	Plaintiff's Argument (Hyatt)	Defendant's Argument (PTO)	Held
Whether PTO may assert prosecution laches in a § 145 action	PTO should not be allowed to raise laches in §145 or without prior laches rejections/warnings	PTO can assert laches in §145 and raise new defenses/evidence there	PTO may assert prosecution laches in a §145 action; new defenses/evidence allowed under Kappos
Whether PTO proved unreasonable and unexplained delay	Hyatt: delays were lawful, explainable, or irrelevant (other apps irrelevant); PTO caused delays	PTO: Hyatt’s multi‑decade delays, massive claim multiplication, claim shifting, and failure to demarcate caused unreasonable delay	PTO presented sufficient evidence of unreasonable and unexplained delay; district court erred in granting 52(c); remand for Hyatt to present rebuttal evidence
Prejudice / intervening rights requirement to prove laches in §145	PTO failed to prove intervening rights; therefore laches fails	PTO: delay itself and system abuse show prejudice; intervening rights may not always be required	Generally PTO must show intervening rights to prove prejudice, but delays >6 years create a presumption shifting burden to patentee; extreme abuse of PTO procedures can alone satisfy prejudice
Whether district court properly evaluated totality and PTO conduct	Hyatt: focus on the four applications and PTO’s inaction supports Hyatt	PTO: court must consider totality (all related applications) and applicant’s conduct as cause of delay	District court misapplied law by narrowing the record and overemphasizing PTO inaction; must consider totality and applicant’s conduct; PTO’s delay does not excuse applicant’s delay

Key Cases Cited

Woodbridge v. United States, 263 U.S. 50 (1923) (nine‑year prosecution delay rendered patent unenforceable for designed delay)
Webster Electric Co. v. Splitdorf Elec. Co., 264 U.S. 463 (1924) (delay in prosecution can constitute laches and bar enforcement)
A.C. Aukerman Co. v. R.L. Chaides Const. Co., 960 F.2d 1020 (Fed. Cir. 1992) (laches reasonableness depends on particular facts)
Wanlass v. Gen. Elec. Co., 148 F.3d 1334 (Fed. Cir. 1998) (delay over six years raises presumption of unreasonableness and prejudice)
In re Bogese, 303 F.3d 1362 (Fed. Cir. 2002) (PTO authority to reject for prosecution laches; applicant’s pattern of delay can be presumptively unreasonable)
Symbol Techs., Inc. v. Lemelson Med., Educ. & Research Found., LP, 277 F.3d 1361 (Fed. Cir. 2002) (prosecution laches is an available defense)
Symbol Techs. v. Lemelson Med., Educ. & Research Found., LP, 422 F.3d 1378 (Fed. Cir. 2005) (totality of related prosecution histories may trigger laches; examples of reasonable vs. unreasonable delay)
Cancer Research Tech. Ltd. v. Barr Labs., 625 F.3d 724 (Fed. Cir. 2010) (prosecution laches requires unreasonable/inexcusable delay and prejudice/intervening rights)
Kappos v. Hyatt, 566 U.S. 431 (2012) (§145 actions permit new evidence beyond the administrative record)