Hyatt v. Iancu, 332 F. Supp. 3d 113

Background

Gilbert P. Hyatt filed four pre-GATT continuation patent applications (filed 1995) that are part of a larger portfolio of ~400 applications; he sued under 35 U.S.C. § 145 after adverse Board decisions.
The PTO asserted prosecution laches as an affirmative defense, alleging Hyatt’s prosecution conduct (many, voluminous claims; amendments; claim-shifting; complex priority chains) caused unreasonable and unexplained delay.
The PTO bore the burden to prove prosecution laches at a bench trial and presented witnesses and an expert; Hyatt moved under Rule 52(c) at the close of the PTO’s case.
The Court limited the relevant period largely to conduct through 2002 (excluding 2003–2012 suspensions the PTO stipulated should not be attributed to Hyatt).
The Court found (i) Hyatt’s applications were unusually large and complex, (ii) the PTO often did not use formal remedies (e.g., laches rejections, Rule 11.18, undue multiplicity) prior to litigation, and (iii) many delays were attributable to the PTO’s own procedures and the atypical nature of the applications.

Issues

Issue	Hyatt's Argument	PTO's Argument	Held
Whether prosecution laches is available as an affirmative defense in § 145 actions	§145 plaintiff may present new evidence; prosecution laches should not bar Hyatt absent proof of unreasonable delay	PTO may assert prosecution laches in §145 suits and seeks dismissal for Hyatt’s alleged prolonged tactic-driven delays	Court: PTO may assert prosecution laches in §145 suits, but PTO failed to prove unreasonable and unexplained delay here
Proper temporal/scope framework for laches analysis	Limit inquiry to prosecution conduct through filing of §145 actions (and exclude PTO-caused suspensions)	Consider totality across all related ~400 applications and later conduct	Court: exclude 2003–2012 suspensions and decline to consider post‑litigation prosecution history for these §145 cases; analyze conduct through 2002
Whether Hyatt’s October 1995 meeting and alleged promise to “focus” claims created an enforceable duty to expedite prosecution	No enforceable, formal obligation arose from the informal meeting; PTO had formal tools to compel compliance	Meeting showed Hyatt agreed to focus claims and thus bears responsibility for later examination burdens	Court: informal meeting did not create an enforceable obligation; PTO’s failure to formalize or enforce remedies is relevant in equity
Whether PTO proved Hyatt’s conduct was unreasonable and unexplained enough to warrant dismissal	Hyatt: PTO’s own inaction, atypical nature of applications, and lack of prior laches warnings undermine PTO’s equitable claim	PTO: voluminous claims, amendments, claim shifting, and reintroducing lost claims unreasonably burdened examination and justify laches	Court: PTO did not meet its burden by preponderance; prosecution laches dismissal not warranted for the four cases through 2002

Key Cases Cited

In re Bogese, 303 F.3d 1362 (Fed. Cir. 2002) (PTO may administratively apply prosecution laches; agency has broad authority to refuse claims)
Symbol Technologies, Inc. v. Lemelson Medical, 277 F.3d 1361 (Fed. Cir. 2002) (district courts may find prosecution laches in infringement suits)
Symbol Technologies, Inc. v. Lemelson Medical, 422 F.3d 1378 (Fed. Cir. 2005) (prosecution laches should be reserved for egregious misuse of the patent system)
Kappos v. Hyatt, 566 U.S. 431 (2012) (district courts in §145 actions may consider new evidence and must make de novo factual findings)
Cancer Research Tech. Ltd. v. Barr Labs., Inc., 625 F.3d 724 (Fed. Cir. 2010) (lengthy prosecution does not necessarily establish prosecution laches)
Woodbridge v. United States, 263 U.S. 50 (1923) (classic statement that designed delay can forfeit patent rights)
Advanced Cardiovascular Sys. v. Scimed Life Sys., 988 F.2d 1157 (Fed. Cir. 1993) (mere passage of time does not constitute laches)
Troy v. Samson Mfg. Corp., 758 F.3d 1322 (Fed. Cir. 2014) (under Kappos, new issues and arguments may be presented in §145 and §146 actions)