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Fed Circ gives PTO chance to escape prolific inventor’s claims

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The United States Patent and Trademark Office in Alexandria, Virginia. REUTERS/Andrew Kelly

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  • Claims may be barred because inventor unreasonably delayed process
  • Gilbert Hyatt has filed hundreds of long patent applications
  • Vacated D.C. court ruling said PTO at fault for slow processing

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(Reuters) - A Washington, D.C., federal court ignored “swaths of evidence” that an inventor unreasonably delayed his patent applications before ruling that the U.S. Patent and Trademark Office should grant four of them, the U.S. Court of Appeals for the Federal Circuit said Tuesday.

In one of a long-running series of legal disputes between prolific inventor Gilbert Hyatt and the PTO, U.S. Circuit Judge Jimmie Reyna, joined by Circuit Judges Evan Wallach and Todd Hughes, said Hyatt may not have been entitled to the computer-technology patents based on a pattern of slowing down the application process.

Reyna remanded the case to U.S. District Judge Royce Lamberth, finding that the PTO met its burden to show that Hyatt abused the patent system, and that the burden should now be on Hyatt to show otherwise.

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"The evidence will show that Mr. Hyatt did everything in his power to move his patent applications forward, but the agency blocked them for years," Hyatt's attorney Andrew Grossman of BakerHostetler said in an email. "PTO's claim that Mr. Hyatt unreasonably delayed his applications is backwards."

The PTO declined to comment.

Hyatt sued the PTO in the U.S. District Court for the District of Columbia in 2005 and 2009, appealing decisions by the predecessor of the PTO's Patent Trial and Appeal Board rejecting four of his hundreds of applications concerning microchips and other computer-related technology.

In 2016, the PTO moved for a ruling in its favor on prosecution laches grounds – which preclude an applicant from receiving a patent based on "unnecessary and unexplained delays" in the prosecution process that constitute an "egregious misuse" of the patent system – arguing Hyatt had "engaged in a pattern of delay in prosecuting his nearly 400 patent applications from 1969 through the present day."

The PTO noted that Hyatt's applications were several times longer than typical applications, and that he had added hundreds of claims to them 12 to 28 years after their priority dates. The office estimated that it would take 532 years to process all of his applications.

Hyatt responded, among other things, that his other applications were irrelevant, and that the PTO delayed its review.

Following a bench trial on the PTO's prosecution-laches defense, Lamberth ruled for Hyatt in 2018 because the office had "failed to take the actions necessary to advance the prosecution of Hyatt's applications," and took the PTO to task for trying to fit the applications into its normal process when they required it to "embrace atypical procedures."

But Reyna ruled Tuesday that Lamberth "repeatedly discounted or ignored evidence showing that Hyatt's conduct caused unreasonable and unexplained delay" and failed to consider the totality of the circumstances.

Reyna said Lamberth ignored evidence of, among other things, Hyatt's habit of rewriting parts of patents midway through the application process and the fact that the PTO had spent over $10 million to process Hyatt's applications while he paid only $7 million in fees.

Lamberth also wrongly emphasized the PTO's slow processing instead of considering Hyatt's conduct, according to Reyna.

"A delay by the PTO cannot excuse the appellant's own delay," Reyna said, and Hyatt had "adopted an approach to prosecution that all but guaranteed indefinite prosecution delay."

The case is Hyatt v. Hirshfeld, U.S. Court of Appeals for the Federal Circuit, No. 18-2390.

For Hyatt: Andrew Grossman of BakerHostetler

For the PTO: Thomas Krause of the PTO's solicitor's office

Read more:

9th Circuit finds PTO rules don’t violate Paperwork Reduction Act

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Washington-based correspondent covering court cases, trends, and other developments in intellectual property law, including patents, trademarks, copyrights, and trade secrets. Previous experience at Bloomberg Law, Thomson Reuters Practical Law and work as an attorney.

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