Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Hyatt v. Hirshfeld, No. 18-2390 (June 1, 2021), addressing the application of prosecution laches in proceedings brought under 35 U.S.C. § 145.
Hyatt filed a § 145 action seeking an order requiring the Patent Office to issue four continuation applications Hyatt had filed, all of which claimed priority back to applications filed in the 1970s and 1980s. Because of their early priority dates, the applications were not subject to the Agreement on Trade-Related Aspects of Intellectual Property, which changed the term of U.S. patents from 17 years following the date of issuance to 20 years following the filing date of the application or an earlier non-provisional application to which the subject application claims priority. As such, if issued, the applications would enjoy a term of 17 years from issuance despite claiming priority to applications filed 12 to 25 years earlier. The four applications were among the 381 patent applications filed by Hyatt in the spring of 1995, just before the change to patent term took effect. All four applications were subject to final rejections of various claims that had been affirmed by the Board of Patent Appeals and Interferences.
In the § 145 action, the Patent Office defended its claim rejections based on lack of written description, anticipation, obviousness-type double patenting. The Office also sought dismissal of the case on grounds of prosecution laches—a doctrine that renders a patent unenforceable if issued “after an unreasonable and unexplained delay in prosecution that constitutes an egregious misuse” of the patent system. The district court ruled against the Office on prosecution laches, and on the challenges to patentability of certain claims, and ordered the Office to issue patents for those claims. The Patent Office appealed.
The Federal Circuit vacated and remanded the district court’s decision on prosecution laches and ordered the remainder of the case held in abeyance. As a threshold matter, the Court explained that its precedent allows the Office to deny patent issuance on prosecution laches grounds, and that the defense of prosecution laches is available to the Office in a § 145 action. On the merits, the Court explained that the district court failed to properly consider the totality of the circumstances, including Hyatt’s overwhelming 300+ pending applications with 115,000+ claims that claim priority back to 1970s and 1980s and his prosecution conduct.
This blog post was co-authored by Rachel Scobie & Danny Kim.