Nature of the Action
1This is an action under the Patent Act, 35 U.S.C. § 145, to obtain a patent on patent application serial number 08/460,550 (Dkt. #472). For over three decades, Plaintiff Gilbert P. Hyatt has diligently prosecuted the ’550 Application in the U.S. Patent and Trademark Office (“PTO”), as well as several hundred co-pending applications.
2Congress has provided a cause of action for an aggrieved patent applicant to bring a civil action under 35 U.S.C. § 145 to obtain de novo consideration of his entitlement to a patent. Mr. Hyatt brings this action to obtain a patent in this application.
Parties
3Plaintiff Gilbert P. Hyatt is an engineer, scientist, and inventor who has obtained more than 70 issued patents. Some of his patents and applications cover microcomputer structure, computer memory architecture, incremental processing, illumination devices, display devices, graphics systems, image processing, and sound and speech processing. He is 88 years of age and resides in Clark County, Nevada.
4Defendant John A. Squires is the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. He has overall responsibility for the administration and operation of the PTO, including the patent examination process. He is named as a defendant in his official capacity only.
Jurisdiction and Venue
5This action arises under the patent laws of the United States. This Court has subject-matter jurisdiction pursuant to 28 U.S.C. §§ 1331, 1338(a), and 35 U.S.C. § 145.
6Venue is proper in this judicial district pursuant to 28 U.S.C. § 1391(e) and 35
U.S.C. § 145.
7This Complaint is timely filed in accordance with 35 U.S.C. § 145 and 37 C.F.R. § 90.3(a)(3)(i).
8This matter has not been appealed to the United States Court of Appeals for the Federal Circuit.
The ’550 Application
9Mr. Hyatt is the owner and inventor of U.S. Patent Application Serial No. 08/460,550 (Dkt. #472) (the “’550 Application”).
10The ’550 Application has the benefit of the filing date of U.S. Patent Application Serial No. 06/504,691 (Dkt. #193) filed on June 15, 1983.
11The ’550 Application includes the following 281 claims: 72, 85, 89–139, 141– 149, 151, 153–160, 162–182, 184, 186–192, 194–201, 203–213, 215–218, 220–224, 226–319, 321–337, 339, 340, 342, 343, 345–372, and 374–383 (the “Subject Claims”).
12Mr. Hyatt is seeking issuance of a patent on the Subject Claims, but not on any other claims in the ’550 Application.
13The Subject Claims in the ’550 Application are generally directed to the following subject matter:
a. operating a machine (without recitation of specific machine types) based on
information received from an observer input device, which information represents observer actuation or selection within displayed or projected rotating 3D perspective images representing a 3D machine control environment, which images are generated by transform processing both database information accessed from a memory using database memory management operations and two other recited types of input information, but without recitation of navigation, compass, or gyro; b. operating a vehicle based on information received from an observer input
device, which information represents observer actuation or selection within displayed or projected rotating 3D perspective images representing a 3D vehicular control environment, which images are generated by transform processing both database information accessed from a non-volatile memory using database memory management operations and various other recited types of input information; or c. performing a set of various specifically recited operations based on both
database information accessed from a memory using database memory management operations and transformed information generated by fast Fourier transform processing of sampled information received from a microwave data link. These lines of demarcation are further evidenced by the specific limitations of each Subject Claim. Each claim of the Subject Claims of the instant application has ascertainable differences in scope from the claims of Mr. Hyatt’s co-pending applications.
14Mr. Hyatt filed the ’550 Application on June 2, 1995. As such, this application is governed by the Transitional Rules under the Uruguay Round Agreements Act, Public Law No. 103-465 (1994) (“URAA”), including a provision the PTO implemented in 37 C.F.R. § 1.129(a) (“Rule 129(a)”), that limits to two the number of submissions that an applicant can file, to require limited further examination.
15The ’550 Application is deemed “special” under the PTO rules and must be “advanced out of turn.” 37 C.F.R. § 1.102(a). It “continue[s] to be special throughout its entire course of prosecution in the [PTO], including appeal, if any, to the [Board].” MPEP § 708.01.
16Mr. Hyatt has never made a dilatory filing in prosecuting the ’550 Application. In contrast, the PTO suspended prosecution on at least six occasions (5/11/2007, 3/17/2008, 12/30/2008, 9/24/2009, 4/19/2010, and 9/23/2011), and entered new grounds of rejections at least as late as February 2020.
17The PTO subjected all of Mr. Hyatt’s applications, including the instant application, to the Sensitive Application Warning System (“SAWS”), from at least the late 1990s through 2015. In accordance with the terms of the SAWS, examiners lacked authority to allow Mr. Hyatt’s patent applications. Moreover, under the terms of the SAWS, examiners and other PTO officials were directed to consider factors that are irrelevant to the statutory criteria for patentability in determining whether or not to permit Mr. Hyatt’s applications to issue as patents. The inclusion of Mr. Hyatt’s applications in the SAWS prejudiced the PTO in its consideration of Mr. Hyatt’s applications, including the instant application.
18In September 1995, Mr. Hyatt filed a preliminary amendment.
19In September 1995, the PTO sent a final office action.
20In December 1995, Mr. Hyatt filed a petition to withdraw the PTO’s office action, because it examined the wrong claims, and the PTO granted the petition in February 1996.
21In June 1996, the PTO sent a non-final office action rejecting all claims.
22In November 1996, Mr. Hyatt timely responded, and in December 1996, Mr. Hyatt filed a supplemental amendment.
23In February 1997, the PTO sent a notice of non-responsiveness.
24In March 1997, Mr. Hyatt timely responded, and in January 1998, Mr. Hyatt filed a supplemental response.
25For a period of more than three and a half years after the March 1997 response, the PTO did not take any action on the merits. In December 2000, the PTO sent a non-final office action rejecting all claims.
26In June 2001, Mr. Hyatt timely responded, and in February 2002 and April 2003, Mr. Hyatt filed supplemental amendments.
27The PTO did not take any action on the merits for more than twelve years from Mr. Hyatt’s June 2001 response. Instead, the PTO suspended examination on six different occasions and did not decide Mr. Hyatt’s repeated petitions for action.
28In October 2013, the PTO sent a so-called “Requirement” action that, among other things, purported to require Mr. Hyatt to select 600 claims for examination in applications of the “450 Family” (each of which have the same disclosure as the disclosure in the ’550 Application) and to identify any earlier embodiment that falls within the scope of any selected claim that Mr. Hyatt believed was entitled to a priority date earlier than October 15, 1991, or to provide a simple statement that the claim was described in the written description of parent application Serial No. 07/774,159 (Dkt. #344), filed on that date, excluding documents incorporated by reference.
29In late 2013, the PTO sent similar Requirements in nearly all of Mr. Hyatt’s applications.
30In January 2014, Mr. Hyatt timely responded to the Requirement.
31For more than two and a half years, the PTO did not take any action on the merits. In August 2016, the PTO sent a non-final office action rejecting all claims. The PTO acknowledged that Mr. Hyatt’s response was “bona fide” and “fully responsive.”
32In February 2017, Mr. Hyatt timely responded.
