United States District Court, District of Columbia
GILBERT P. HYATT, Plaintiff,
ANDREI IANCU, Defendant.
MEMORANDUM OPINION 
C. Lamberth United States District Judge.
the Court is a trio of actions brought under 35 U.S.C.
§145, related to three of Gilbert Hyatt's
applications to patent features of his "600-
family" and "700-family" specifications that
purport to describe innovations Mr. Hyatt made in the field
of video processing and associated computing and memory
architectures in the mid-1980s. Plaintiff Gilbert P. Hyatt is
a prolific inventor who has received more than seventy issued
patents and has, pending at various stages of prosecution and
appeal, nearly 400 patent applications before the United
States Patent and Trademark Office (PTO), the federal agency
responsible for examining patent applications and for
granting U.S. patents. 35 U.S.C. § 1, etseq.
Andrei Iancu is the named defendant in these matters in his
official capacity as the Under Secretary of Commerce for
Intellectual Property and the Director of the
Because of the nature and lengthy history of these actions,
the Court refers to the defendant as "PTO"
throughout this opinion.
Hyatt brought these actions pursuant to 35 U.S.C. § 145
to obtain patents on three of his patent applications
following decisions in the Board of Patent Appeals and
Interferences, now known as the Patent and Trial Appeal Board
(the "Board"). Section 145 allows an applicant
dissatisfied with the decision of the Board to "have
remedy by civil action" in district court, rather than
taking an appeal directly to the Federal
Circuit. See also Kappos v. Hyatt, 566
U.S. 431 (2012). In a series of opinions issued August 23,
2016, the Court found genuine disputes of material fact
precluded summary judgment in these matters, which therefore
required trials on the merits.
the Court resolved the summary judgment motions, however, the
PTO moved to dismiss these actions for prosecution laches.
Def.'s Mot Dismiss, ECF No. 91. In that set of motions,
PTO argued that Hyatt's conduct in prosecuting these
three patent applications, as well as approximately 400
others, called for dismissal. Id. at 8-9. Mr. Hyatt,
on the other hand, argued that the PTO was responsible for
extensive delay in adjudicating many of the applications, PI.
Mot. Dismiss, ECF No. 101 at 7-9, and made the case that he
was entitled to discovery. Id. at 37-38. On March
16, 2017, the Court found that genuine disputes of material
fact required treating the motions to dismiss as if they were
for summary judgment, and denied them accordingly. ECF No.
leave of Court, the PTO subsequently amended its answers to
assert prosecution laches as an affirmative defense. ECF No.
123. The Court set the PTO's affirmative defense of
prosecution laches across all three actions for a bench
trial,  which also would consider evidence
relating to Mr. Hyatt's approximately 400 other pending
applications. ECF No. 150. The PTO, bearing the burden of
proof on the affirmative defense of prosecution laches and
upon agreement of the parties, presented its case-in-chief
first. During the five trial days beginning October 6, 2017,
during which the PTO presented its case-in-chief, the PTO
presented the testimony of three witnesses. The parties also
introduced a number of exhibits.
close of the PTO's case-in-chief on prosecution laches,
Mr. Hyatt moved for judgment pursuant to Federal Rule of
Civil Procedure 52(c). Upon consideration of the evidence and
arguments presented during trial and the entire records in
these cases up to that time, and review of the relevant case
law, the Court found the PTO failed to prove unreasonable and
unexplained delay that would support dismissal for
prosecution laches, and accordingly granted Mr. Hyatt's
motion. The Court's ruling on prosecution
laches necessitated trials on the merits in these three
cases. Each of the three trials featured three witnesses: the
plaintiff called Mr. Hyatt and his expert witness, Mr.
Bradford Hite, while PTO called its expert, Dr. Kenneth
expert Mr. Hite has booth a Bachelor of Science and a Master
of Science degree in Electrical Engineering from California
State University at Northridge. For the past 23 years, he has
worked as an electrical engineer for ITT Corporation
(including as a technical lead on certain projects), Magellan
Systems, Raytheon, Curtis-Wright, Lear Astronics, MiniMed,
RoundTrip Technologies, SiRF, Quallion LLC, Paylon Medical,
ASML, and Neural Analytics. Trial Tr. 32:25-49:5 (Nov. 14,
2017 AM Session) (09-1872). Mr. Hite has worked on complex
electrical engineering projects involving missile defense
radars, flight control systems, the Global Positioning System
("GPS") for consumer and military applications,
glucose meters and insulin pumps for diabetics and cancer
pain-management, long-distance tracking, battery modules for
military aircraft and space applications, avionics computers,
and Doppler radar imaging for concussions in football.
Hite's experience with memory systems and image
processing includes a project at ITT in 1984 working on
graphical displays for equipment that interfaced with
external control devices like keyboards for which he
contributed computer code, and working on image processors
and various types of memory architectures for a Navy missile
defense project with ITT in 1987. During his tenure at
Magellan, Mr. Hite worked on dot-matrix LCD displays that
would scan out images, using a block of Random Access Memory
("RAM") to do so. At MiniMed, Mr. Hite's work
included a graphical interface with RAM memory organization,
and Mr. Hite wrote software to test and operate the display.
Id. Mr. Hite was qualified without objection as an
expert in application-specific processors, including memory
and image processing. Trial Tr. 49:2-6 (Nov. 14, 2017 AM
expert Dr. Castleman received his Bachelor of Science, Master
of Science, and Doctor of Philosophy (Ph.D.) degrees in
Electrical Engineering from the University of Texas at
Austin. See Trial Tr. 477:9-11 (Feb. 14, 2018);
see also DX3034 (0003). Dr. Castleman has more than
fifteen years of experience in image processing for public
sector endeavors, including in the image processing lab at
NASA's Jet Propulsion Laboratory as a member of the
Scientific Working Group on Imaging Technology for the FBI,
where he assisted NASA in the image analysis of the
Challenger and Columbia space shuttle accidents. See
DX3034 (0001); see also 1872 Trial Tr. 19:14-22:19
(Nov. 15, 2017 PM Session). He also has about twenty years of
private sector experience designing and building image
processing systems as president (or CEO) of a company he
co-founded. See Trial Tr. 477:11-14 (Feb. 14, 2018);
see also Trial Tr. 1872 Trial Tr. 19:14-21:4 (Nov.
15, 2017 PM Session); 1872 Trial Tr. 22:20-24:15 (Nov. 15,
2017 PM Session); DX3034 (001-002).
Castleman has written college-level textbooks on image
processing, including Digital Image Processing (1979
and 1996 editions), published more than 60 scientific
articles in technical journals, and has taught college
courses related to image processing. See 1872 Trial
Tr. 24:16-26:22 (Nov. 15, 2017 PM Session); Trial Tr.
477:23-478:2 (Feb. 14, 2018). He has previously served as an
expert in approximately 33 cases. See DX3024.
trial lasted five days. The Court addresses each case in
chronological order by docket number, rather than the order
in which they were tried.
05-2310 (the '211 application)
case 05-2310, filed November 18, 2005, concerns patent
application 08/457, 211 (the '211 application), entitled
"Improved Image Processing Architecture," which Mr.
Hyatt filed with the PTO on June 1, 1995. One of several
applications flowing from Mr. Hyatt's
641-page "700-family" specification, the
'211 application is a continuation of patent application
serial number 07/289, 355, filed December 22, 1988, which is
a continuation of patent application serial number 06/663,
094, filed October 19, 1984. The PTO entered a non-final
Office Action rejecting the claims on September 22, 1995, and
entered a final rejection made on July 31, 1996. Mr. Hyatt,
using the transitional rules provided in 37 C.F.R. §
1.129(a) ("Rule 129(a)"), petitioned to file an
amendment, the effective equivalent of a continuing
application, on March 25, 1997. PTX-004.06587-89. The PTO
issued a non-final Office Action rejecting the claims on
August 3, 1998. PTX-004.6053-54. The PTO entered a final
rejection of all claims on August 27, 1999. PTX-004.06373.
Hyatt timely noticed his appeal to the Board on February 28,
2000, and he filed his appeal brief on August 28, 2000.
PTX-004.04965. In the course of its decisions on Mr.
Hyatt's appeal and subsequent motion for reconsideration,
the Board reversed several rejections by the examiner of
the'211 application claims and upheld others.
See PTX-004.00103-04. Two hundred twenty-one claims
in the '211 application remain before the Court, all of
which were rejected by PTO for lack of written description.
ECF No. 227 at 1. During a five-day trial that began on
December 4, 2017,  Mr. Hyatt presented new evidence
concerning sixty-six of those claims.
09-1864 (the '398 application)
case 09-1864, filed September 25, 2009, concerns patent
application 08/456, 398 (the '398 application), also
entitled "Improved Image Processing Architecture"
and sharing the 700-family specification, was similarly filed
with the PTO on June 1, 1995. Like the '211 application,
the '398 application is a continuation of patent
application serial number 07/289, 355, filed December 22,
1988, which is a continuation of patent application serial
number 06/663, 094, filed October 19, 1984. PTX-001.05919-23.
The PTO entered a non-final Office Action rejecting the
claims on September 19, 1995, and a final rejection on August
9, 1996. PTX-001.05137. Mr. Hyatt petitioned to enter a
submission pursuant to 37 C.F.R. § 1.129(a) with an
amendment, effectively equivalent to a continuation
application; the PTO subsequently rejected the then-pending
claims in a non-final Office Action on December 12, 2000.
PTX-001.04505-06. Mr. Hyatt amended the claims on January 30,
2002. PTX-001.04268-69. The PTO issued a non-final Office
Action rejecting all claims on September 7, 2004.
Hyatt timely noticed his appeal to the Board on March 7,
2005. PTX-001.03898. He filed his appeal brief on August 26,
2005, thereby closing prosecution. PTX-001.00928. In the
course of its decisions on Mr. Hyatt's appeal and
subsequent two motions for reconsideration, the Board
reversed numerous grounds of rejection found by the examiner
of the '398 claims and upheld others, concluding the
PTO's administrative adjudication of the '398
application on July 8, 2009. A total of twenty-eight claims
in the '398 application remain subject to Mr. Hyatt's
§145 action before this Court: twenty-two rejected for
lack of written description, and six because of
anticipation. A five-day trial began February 12,
2018,  during which new evidence was presented
on each of the twenty-eight claims. See PTX-917.
09-1872 (the '639 application)
case 09-1872, also filed September 25, 2009, concerns patent
application 08/431, 639 (the '639 application), entitled
"Adaptive Memory System," which Mr. Hyatt filed on
May 1, 1995. One of several applications flowing from Mr.
Hyatt's 564-page "600-family" specification,
the '639 application is a continuation application of
patent application serial number 07/279, 592, filed December
2, 1988. PTX-003.01380. The PTO entered a restriction
requirement requiring Mr. Hyatt to elect one group of claims
for examination drawn to one invention on October 19, 1995.
PTX-003.01311-13. On July 24, 1996, the PTO rejected the
claims in a non-final Office Action. PTX-085.00005. The PTO
rejected the claims in a final Office Action dated May 19,
1999. PTX-085.00005. Mr. Hyatt timely noticed his appeal on
October 19, 1999. PTX-085.00005.
Hyatt filed his Appeal Brief oh April 18, 2000, thereby
closing prosecution. PTX-085.00005. In the course of its
decisions on Mr. Hyatt's appeal and three subsequent
motions for reconsideration, the Board reversed numerous
rejections by the examiner of the '639 claims and upheld
others, concluding the PTO's administrative adjudication
of the '639 application on July 8, 2009. PTX-085.00005.
Mr. Hyatt filed suit under 35 U.S.C. § 145 to obtain a
patent on claims on which the Board affirmed at least one
ground of rejection on September 25, 2009. A total of
fifty-eight claims in the '639 application remain subject
to Mr. Hyatt's §145 action before this Court:
fifty-two rejected for lack of written description, and six
because of obviousness. See 09-1872 ECF No. 197 at
3; 09-1872 ECF No. 220 at 1. A five-day
trial began November 13, 2017, during which new evidence was
presented on each of the disputed claims. See, e.g.,
§145 and Kappos v. Hyatt
145 provides that a patent applicant dissatisfied with the
Board's decision may sue the PTO in district court to
determine the patentability of his alleged
invention. "The court may adjudge that such
applicant is entitled to receive a patent for his invention,
as specified in any of his claims involved in the decision of
the [Board],  as the facts in the case may appear and
such adjudication shall authorize the Director to issue such
patent on compliance with the requirements of law." 35
2012, in a case arising out of one of Mr. Hyatt's related
applications with origins and ancestry largely in common with
the applications at issue here, and also first litigated in
this court,  the Supreme Court determined that
district courts can consider new evidence that was not before
the PTO during prosecution of a §145 plaintiffs
antecedent patent application, and "the district court
must make a de novo finding when new evidence is
presented on a disputed question of fact." Kappos v.
Hyatt, 566 U.S. 431, 434 (2012). District
courts may nevertheless exercise their discretion to
"consider the proceedings before and findings of the
Patent Office in deciding what weight to afford an
applicant's newly-admitted evidence." Id.
at 445 (quoting Hyatt v. Kappos, 625 F.3d 1320, 1335
(Fed. Cir. 2010).
145 cases remain "hybrid" actions after Kappos,
see also SD3, LLC v. Dudas, )52 F.Supp.2d 97 (D.D.C.
2013), and APA deference is owed to Board decisions on claims
for which no new evidence is presented. See Alberts v.
Kappos, 917 F.Supp.2d 94, 104 (D.D.C. 1013) ("If
the parties do not submit new evidence during a § 145
proceeding, 'the reviewing court must apply the APA's
substantial evidence standard to Patent Office fact
findings.') quoting Hyatt v. Kappos, 625 F.3d at
1336), aff'd sub nom. Alberts v. Lee, 552
Fed.Appx. 986 Fed. Cir. 2014).
the plaintiffs, the PTO is free to introduce new evidence and
arguments for rejecting i §145 plaintiffs claims on the
merits in response to new evidence presented as to those
claims. See also Troy v. Samson Mfctrn 'g Corp.,758 F.3d 1322 (Fed. Cir. 2014). All evidence concerning the
claims at issue must be presented to the Court for full
consideration, because section 145 ...