Authored by: Jeremy J. Gustrowsky
In the long-running legal saga of inventor Gilbert P. Hyatt, the Federal Circuit has once again sided with the U.S. Patent and Trademark Office (USPTO), affirming that prosecution laches—a defense based on unreasonable and prejudicial delay in patent prosecution—bars Hyatt’s efforts to secure patents from his so-called “GATT Bubble Applications.” Hyatt had filed nearly 400 patent applications just before the June 8, 1995 deadline set by the General Agreement on Tariffs and Trade (GATT), leading to years of back-and-forth with the USPTO.
The heart of this case was whether the USPTO could use prosecution laches as a defense in a special type of lawsuit called a “Section 145 action,” where a patent applicant dissatisfied with a USPTO decision can ask a federal court to order the issuance of a patent. Hyatt argued that recent Supreme Court decisions and the Patent Act itself made prosecution laches unavailable in these circumstances. However, the Federal Circuit held that it had already decided this issue in a previous ruling (Hyatt I), and that decision remained binding. The court also found that Hyatt had forfeited certain arguments by not raising them in the district court.
Another key issue was whether the district court had the authority (Article III jurisdiction) to consider claims where the USPTO’s internal Board had already reversed an examiner’s rejection—essentially, claims that Hyatt had “won” at the Board level. The court concluded that Hyatt failed to show any actual harm or injury regarding these claims, which is required for federal courts to hear a case. As a result, the district court properly declined to consider those claims.
This decision reinforces the principle that patent applicants must diligently pursue their rights and cannot rely on mere dissatisfaction to keep claims alive in court. It also underscores that federal courts require a real, ongoing dispute—not just a procedural victory or loss at the USPTO—to exercise their authority.