Hyatt v. Vidal

UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF COLUMBIA

GILBERT P. HYATT,

Plaintiff,

v. Case No. 05-cv-2310-RCL

Case No. 09-cv-1864-RCL

KATHERINE K. VIDAL, in her official Case No. 09-cv-1869-RCL

capacity as Under Secretary of Commerce for Case No. 09-cv-1872-RCL

Intellectual Property and Director of the

United States Patent and Trademark Office,

Defendant.

MEMORANDUM OPINION

When this Court held in 2017 that Plaintiff Gilbert P. Hyatt’s patent applications should

not be barred from issuance based on prosecution laches, it did not have the benefit of consulting

the Federal Circuit’s landmark opinion in Hyatt v. Hirshfeld. That opinion clarified the law of

prosecution laches, vacated this Court’s earlier holding, and remanded for further proceedings.

Thus, the Court must now revisit its factual findings and legal conclusions concerning Mr. Hyatt’s

applications. More precisely, it must evaluate the complete evidentiary record in light of the

Federal Circuit’s binding instructions on remand and this Court’s post-remand rulings.

Mr. Hyatt has now received a full and fair opportunity to present his side of the story. Alas,

the scope of remand and recent precedent commands a different result from that expounded by this

Court in 2017. Today, the Court must enter judgment in favor of the Patent and Trademark Office.

This memorandum opinion, which comprises the Court’s findings of fact and conclusions of law

on the issue of prosecution laches, explains why that is so. 1

1

The Court’s findings of fact appear in Part III of this opinion. The Court cites its factual findings using the acronym

“FOF” followed by the relevant paragraph(s) (e.g., FOF ¶ 45). The Court’s conclusions of law appear in Part IV.

1

Mr. Hyatt is an inventor of computer technologies who filed hundreds of patent

applications in the lead-up to the 1995 change in patent term. Four of those applications are now

before the Court in actions filed by Mr. Hyatt under 35 U.S.C. § 145. Hyatt v. Vidal,

No. 05-cv-2310 (RCL), Compl., ECF No. 3 (D.D.C. Nov. 18, 2005); Hyatt v. Vidal,

No. 09-cv-1864 (RCL), Compl., ECF No. 5 (D.D.C. Sept. 25, 2009); Hyatt v. Vidal,

No. 09-cv-1869 (RCL), Compl., ECF No. 5 (D.D.C. Sept. 25, 2009); Hyatt v. Vidal,

No. 09-cv-1872 (RCL), Compl., ECF No. 5 (D.D.C. Sept. 25, 2009). 2

In early 2017, after years of litigation, the Patent and Trademark Office (“PTO”) asserted

the affirmative defense of prosecution laches. E.g., 2d Am. Answer, ECF No. 123, at 1

(No. 05-cv-2310). 3 Later that year, the Court held a five-day consolidated bench trial on that issue.

Min. Entries (Oct. 6, 10–13, 16, 2017). At the close of the PTO’s case-in-chief, the Court granted

Mr. Hyatt’s motion for judgment on partial findings under Federal Rule of Civil Procedure 52(c),

finding that the PTO had failed to meet its burden of proving prosecution laches. Min. Entry (Oct.

16, 2017). 4 The Court then issued written findings of fact and conclusions of law. Hyatt v. Iancu

(Hyatt I), 332 F. Supp. 3d 113 (D.D.C. 2018), vacated in part sub nom. Hyatt v. Hirshfeld (Hyatt

II), 998 F.3d 1347 (Fed. Cir. 2021). In 2021, the Federal Circuit partly vacated this Court’s

decision, finding that the PTO had carried its burden of proving prosecution laches, thereby

shifting the burden to Mr. Hyatt; the Federal Circuit remanded the case so that Mr. Hyatt would

2

When filed, the named defendants in these matters were Jon W. Dudas (2005 action) and David J. Kappos (2009

actions). In the intervening years since filing, a succession of defendants have automatically substituted for Mr. Dudas

and Mr. Kappos under Federal Rule of Civil Procedure 25(d). Fed. R. Civ. P. 25(d). The current named defendant is

Katherine K. Vidal, in her official capacity as Under Secretary of Commerce for Intellectual Property and Director of

the United States Patent and Trademark Office. FOF ¶ 2.

3

When referring to procedural events or filings that span all four Section 145 actions at issue in these consolidated

proceedings, the Court will generally cite only the procedural event or filing in Case No. 05-cv-2310. When citing

electronic filings, the Court refers to the ECF header page numbers, not the page numbers of the filed documents.

4

All references to “Rule 52” in this opinion are to Federal Rule of Civil Procedure 52. Fed. R. Civ. P. 52.

2

have the opportunity to present evidence and rebut the PTO’s showing. Hyatt II, 998 F.3d at 1372.

The Federal Circuit retained jurisdiction over the PTO’s other defenses. Id.

Trial on prosecution laches resumed in September 2023. Min. Entry (Sept. 18, 2023).

During the 2023 phase of trial, the Court heard from several witnesses, including Mr. Hyatt, and

admitted hundreds of exhibits. At the end of trial, the Court took these cases under advisement and

set a briefing schedule for the parties’ proposed findings of fact and conclusions of law. Min. Entry

(Oct. 5, 2023); ECF No. 344 (revised briefing schedule). Pursuant to that schedule, the parties

submitted proposed findings, followed by an exchange of responses and replies. Hyatt Proposal,

ECF No. 345; PTO Proposal, ECF No. 346; Hyatt Resp., ECF No. 351; PTO Resp., ECF No. 352;

Hyatt Reply, ECF No. 355; PTO Reply, ECF No. 354. The Court has now reviewed the parties’

filings, the trial record, and the applicable law. For the following reasons, the Court finds in favor

of the PTO on the issue of prosecution laches and will enter judgment on that issue for the PTO.

I. PROCEDURAL HISTORY

The complicated procedural history of these cases is already well-documented. See Hyatt

II, 998 F.3d at 1355–59; Hyatt I, 332 F. Supp. 3d at 117–19; see also Hyatt v. Vidal (Hyatt III),

Nos. 05-cv-2310, 09-cv-1864, 09-cv-1869, 09-cv-1872 (RCL), 2022 WL 17904225, at *2–3

(D.D.C. Dec. 23, 2022). Instead of recounting events that predate Hyatt II, the Court will detail

the progress of litigation since remand.

After the Federal Circuit remanded these consolidated proceedings in mid-2021, the parties

jointly proposed a schedule for resuming trial. ECF No. 283. They each then filed amended pretrial

statements, ECF Nos. 286, 287, followed by responses to each other’s statements, ECF Nos. 288,

290. A few months later, the PTO moved in limine to exclude evidence of unclean hands and

certain witnesses that Mr. Hyatt had added to his witness list following remand. ECF No. 296.

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After the motion became ripe, the Court issued a memorandum opinion granting in part and

denying in part the PTO’s motion. Hyatt III, 2022 WL 17904225, at *1. Specifically, the Court

barred Mr. Hyatt from introducing evidence of unclean hands but permitted him to call several

additional witnesses contingent on the PTO receiving the opportunity to depose them first. Id.

at *8, *16. Shortly after the Court issued its opinion, it scheduled a pretrial conference for

September 1, 2023, with trial set to resume on September 18. ECF No. 313.

The parties submitted amended exhibit lists about two months before trial was scheduled

to resume, ECF Nos. 320, 321, followed by a round of written objections, ECF Nos. 323, 324.

Approximately one month before trial resumed, the PTO filed its final pretrial statement. ECF

No. 325. A few days later, the PTO moved in limine to exclude several of Mr. Hyatt’s exhibits.

ECF No. 326. The Court set an expedited briefing schedule that ensured the motion would be ripe

before the pretrial conference. ECF No. 327. During the conference, the Court granted the PTO’s

motion for the reasons stated on the record. Min. Entry (Sept. 1, 2023); ECF No. 330. The Court

also chastised Mr. Hyatt for failing to file his final pretrial statement before the pretrial conference.

Mr. Hyatt filed his final pretrial statement later that day. ECF No. 331. The Court issued its final

pretrial order on September 13, 2023, ECF No. 334, and trial resumed on September 18, Min.

Entry (Sept. 18, 2023).

The 2023 phase of trial took roughly 14 trial days and concluded on October 5, 2023. Min.

Entries (Sept. 18–22, 25–29, 2023; Oct. 2–5, 2023). During this phase of trial, Mr. Hyatt presented

his case-in-chief and personally testified for several days. Multiple fact witnesses also testified for

Mr. Hyatt, virtually all of whom were former PTO employees. At the end of Mr. Hyatt’s case-in-

chief, the Court heard and denied the PTO’s oral motion for judgment on partial findings under

Rule 52(c). Min. Entry (Oct. 4, 2023). The PTO then presented its rebuttal case. During trial, Mr.

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Hyatt submitted two bench briefs. ECF No. 337. At the conclusion of trial, the Court took the

PTO’s prosecution laches defense under advisement and set a schedule for filing proposed findings

of fact and conclusions of law, followed by responses and replies. Min. Entry (Oct. 5, 2023). The

parties then filed their final exhibit lists. ECF Nos. 339, 340. Approximately two months later, the

parties jointly moved to limit the number of pages in their post-trial briefs. ECF No. 341. The

Court granted that motion, ECF No. 342, and revised the applicable filing deadlines, ECF No. 344.

Mr. Hyatt and the PTO filed their proposed findings of fact and conclusions of law on

December 22, 2023. Hyatt Proposal; PTO Proposal. They filed their responses on February 23,

2024, Hyatt Resp.; PTO Resp., followed by replies on March 5, Hyatt Reply; PTO Reply. 5 The

Court, having reviewed the parties’ filings along with the entire trial record, is now prepared,

consistent with the scope of the remand from the Federal Circuit, to render its decision on the

PTO’s prosecution laches defense.

II. LEGAL PRINCIPLES

The doctrine of prosecution laches is an equitable affirmative defense to infringement or

issuance of a patent that originates from two Supreme Court cases from the early 1900s. Hyatt II,

998 F.3d at 1360; see Woodbridge v. United States, 263 U.S. 50 (1923); Webster Elec. Co. v.

Splitdorf Elec. Co., 264 U.S. 463 (1924). Prosecution laches may render a patent unenforceable

when an applicant’s conduct “constitutes an egregious misuse of the statutory patent system under

a totality of the circumstances.” Hyatt II, 998 F.3d at 1360 (quoting Cancer Rsch. Tech. Ltd. v.

Barr Lab’ys Inc., 625 F.3d 724, 728 (Fed. Cir. 2010)). In the context of an action under 35 U.S.C.

§ 145, prosecution laches requires the PTO to prove that (1) the applicant’s delay in prosecution

5

Mr. Hyatt initially filed a version of his reply that exceeded the Court-ordered page limit. ECF No. 353. Mr. Hyatt

filed a corrected version on March 6, 2024, which the Court considers to be his reply. Hyatt Reply. The Court will

treat Mr. Hyatt’s corrected reply as though it were timely filed on March 5.

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was unreasonable and inexcusable under the totality of the circumstances and (2) the applicant’s

delay caused prejudice. Id. at 1361–62. When defending a Section 145 action, the PTO may

establish prejudice by evidencing intervening rights, which may be presumed if the PTO shows a

sufficient magnitude of applicant delay, or by proving that the applicant clearly abused the patent

examination system. Id. at 1370.

The Federal Circuit has carefully delineated the scope of the issues before this Court on

remand. See id. at 1371–72. This Court must apply the law as the Federal Circuit has given it.

Hyatt III, 2022 WL 17904225, at *3–4 (discussing the mandate rule). 6 Accordingly, the Court will

reach its conclusions of law by applying the legal standard elucidated in Hyatt II to the facts the

Court finds in Part III of this opinion. Thus, the Court will begin, as it must, by retracing the

analysis and holding of Hyatt II, which effectively crystallized the law of prosecution laches as it

applies in Section 145 actions before applying it to the specific facts of these consolidated

proceedings. See generally 998 F.3d 1347. The Court will also briefly discuss Personalized Media

Commc’ns, LLC v. Apple, Inc., 57 F.4th 1346 (Fed Cir. 2023), which applied Hyatt II to new facts

and helpfully clarified certain legal principles underlying that decision, and the Court’s opinion in

Hyatt III, 2022 WL 17904225, at *1, which ruled out unclean hands as a defense to prosecution

laches and clarified what constitutes relevant evidence on remand.

A. Hyatt II

This Court initially granted Mr. Hyatt’s motion for judgment on partial findings under

Rule 52(c) because it was persuaded that the PTO had not shown unreasonable and unexplained

delay. Hyatt I, 332 F. Supp. 3d at 138. This Court limited its review of Mr. Hyatt’s prosecution

6

For this reason, the Court declines to consider Mr. Hyatt’s argument that prosecution laches is inconsistent with the

Patent Act, Hyatt Proposal 273–77, which this Court has already rejected in any event, Tr. Oct. 13, 2017 PM

(43:17–44:14, 54:8–55:3) (Rule 52(c) Argument and Oral Ruling).

6

conduct to that occurring before 2002. Id. at 131. However, the Court broadly took issue with the

PTO’s examination of Mr. Hyatt’s applications, which the Court deemed relevant under the totality

of the circumstances. The Court principally focused on two issues. First, the Court took issue with

a period of PTO inaction between 2003 and 2012, which the Court attributed to the PTO and found

undermined its present entitlement to relief. Id. at 131–32. Second, the Court took issue with the

PTO’s failure to deploy bespoke procedures earlier to ensure timely examination of Mr. Hyatt’s

highly unusual patent applications. Id. at 133–34. The Court considered other matters as well, but

the crux of its decision was that the onus was on the PTO, as a government agency, to ensure

timely examination of Mr. Hyatt’s applications or, in the alternative, expeditiously notify Mr.

Hyatt that his prosecution conduct was outrageous and take definitive action against his claims

and applications. See id. at 134–36.

Hyatt II disagreed with this Court’s reasoning, holding that it had applied the wrong legal

standard and given too much weight to PTO conduct. 998 F.3d at 1363–66. “The mandate rule

means a district court must do as it was told by the court of appeals.” United States v. Little,

No. 21-cr-315 (RCL), 2024 WL 181260, at *3 (D.D.C. Jan. 17, 2024). The Federal Circuit has

now provided significant clarification regarding the controlling law, much of which was lacking

when the Court first considered this matter in 2017. As an outsider to the patent system, this Court

continues to be troubled by the conduct of the PTO during the nearly decade-long suspension

period. FOF ¶¶ 234–235. Nevertheless, Hyatt II tightly constrains this Court on remand, with the

result that the factual focus of Hyatt I—and the legal conclusions that followed from that focus—is

no longer tenable, no matter how concerned this Court may be with PTO inaction. The Court is

not inclined to develop the law in a direction contrary to the Federal Circuit. Thus, this Court’s

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opinion on remand—including its findings of fact—differ dramatically from those the Court

expounded in Hyatt I.

The Court largely sets aside matters it once considered necessary, such as PTO delay, while

giving significant weight to matters it once did not focus on, such as Mr. Hyatt’s prosecution

conduct after 2002. See infra Parts III–IV. The Court also resolves various factual disputes on

which it was once noncommittal, such as alleged claim shifting, reflecting that Hyatt II has since

clarified which factual disputes are important. Because Hyatt II constrains this Court and directs

it in an entirely different direction from that adopted in Hyatt I, the Court will spend considerable

time detailing Hyatt II’s specific holdings and directives on remand. The Court’s explanation will

hopefully make clear to the parties and the general public why its opinion here differs from Hyatt

I in many important respects.

1. Errors Identified in Hyatt I

The Federal Circuit identified two errors in this Court’s opinion granting Mr. Hyatt’s

motion for judgment on partial findings under Rule 52(c). Hyatt I, 332 F. Supp. 3d 113.

First, the Federal Circuit found that this Court failed to properly consider the totality of the

circumstances. Hyatt II, 998 F.3d at 1363. This Court in Hyatt I primarily focused on the

prosecution history of the four patent applications at issue in Mr. Hyatt’s pending Section 145

actions. See 332 F. Supp. 3d at 122–39. It also only considered Mr. Hyatt’s prosecution conduct

through 2002. Id. at 131. From this limited view of the record, the Court concluded that Mr. Hyatt’s

prosecution conduct was insufficient to trigger prosecution laches. Id. at 138. However, the Federal

Circuit determined that the Court’s inquiry was too narrow. See Hyatt II, 998 F.3d at 1363–64. Per

the Federal Circuit, “[t]he district court did not appreciate the PTO’s evidence as that of a

consistent pattern of conduct across an enormous body of similar applications.” Id. at 1364. On

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remand, the Court must consider the entirety of Mr. Hyatt’s prosecution conduct across all his

related applications, including the prosecution period from 2002 through the present day.

Second, the Federal Circuit found that this Court placed undue emphasis on the PTO’s

conduct rather than Mr. Hyatt’s. Id. at 1366. This Court in Hyatt I acknowledged the peculiarity

of Mr. Hyatt’s applications but largely focused its attention on delay attributable to the PTO,

including its decision to mostly suspend examination of Mr. Hyatt’s applications from 2003 to

2012 and its failure to deploy special procedures for examining Mr. Hyatt’s unusual applications

earlier than it did. See 332 F. Supp. 3d at 131–36. The Federal Circuit disagreed with this focus

and clarified that the Court should have emphasized Mr. Hyatt’s conduct instead. That is because

“a delay by the PTO cannot excuse the appellant’s own delay.” Hyatt II, 998 F.3d at 1364 (quoting

In re Bogese, 303 F.3d 1362, 1369 (Fed. Cir. 2002)). Indeed, “the patent statute already deals with

delay by the PTO.” Id. at 1366. Prosecution laches, in contrast, “is one example of an [applicant’s]

obligation to tailor prosecution conduct in pursuit of patent rights.” Id. at 1365. Accordingly,

applicants must “not only comply with the statutory requirements and PTO regulations but must

also prosecute [their] applications in an equitable way that avoids unreasonable, unexplained delay

that prejudices others.” Id. at 1366 (citing Cancer Rsch., 625 F.3d at 729). “The PTO’s delay

therefore provides a weak reason to negate prosecution laches, which asks a separate

question . . . in light of the applicant’s prosecution conduct.” Id. On remand, the Court must focus

on delay attributable to Mr. Hyatt; delay caused by the PTO is only weakly relevant.

2. Unreasonable and Inexcusable Delay

After identifying these errors, the Federal Circuit turned to the merits and assessed whether

the factual record adduced during the PTO’s case-in-chief was sufficient to show unreasonable

and inexcusable delay and thereby shift the burden to Mr. Hyatt to prove that his delay was

9

reasonable or excusable under the circumstances or to prove lack of prejudice. 7 The Federal Circuit

concluded that the PTO had made the requisite showing.

First, the Federal Circuit found that under either the PTO’s or Mr. Hyatt’s measure of

delay, Mr. Hyatt had delayed filing his applications for a quantity of time sufficient to trigger

prosecution laches. Id. at 1367–68. Both parties measured delay as the difference between his

applications’ earliest claimed priority dates and their actual filing dates. Id. 8 The parties disagreed

over the earliest priority dates, but the Federal Circuit nevertheless found that Mr. Hyatt had

conceded at least seven years of delay. Id. at 1368.

Second, the Federal Circuit found that Mr. Hyatt’s approach to prosecuting his applications

“all but guaranteed indefinite prosecution delay.” Id. The Federal Circuit based this conclusion on

the PTO’s evidence that Mr. Hyatt’s applications contained complex priority chains and lengthy

specifications; that Mr. Hyatt repeatedly failed to identify written description support for his

claims; that Mr. Hyatt routinely amended his claims in a manner that effectively restarted

examination; and that this prosecution conduct created a “perfect storm” at the PTO that made it

virtually impossible for the Office to perform double-patenting analysis, determine priority dates,

or identify written description support. Id. The Federal Circuit noted other issues with Mr. Hyatt’s

applications, including his attempts to reclaim counts lost in an interference proceeding and his

failure to demarcate his applications per his agreement with Group Director Nicholas Godici. Id.

at 1368–69.

7

The Federal Circuit also affirmed this Court’s holding that the PTO may assert the defense of prosecution laches in

a Section 145 action and may do so even when it had not previously issued laches rejections or warnings during

prosecution of the patent application at issue. Hyatt II, 998 F.3d at 1362–63.

8

As detailed infra, FOF ¶¶ 48–50, patent applicants may claim the benefit of the filing date of an earlier application

under 35 U.S.C. § 120. This is known as “priority.”

10

Third, the Federal Circuit rejected various explanations for Mr. Hyatt’s conduct as

insufficient to justify his prosecution approach, including his goal of “correctly capturing his

inventions or steering clear of prior art” and that his conduct “was not literally violative of law or

PTO regulation.” Id. at 1369.

Fourth, the Federal Circuit compared Mr. Hyatt’s conduct to that deemed unreasonable in

Bogese, observing that “[Mr.] Hyatt’s pattern of conduct resembles, but goes well beyond,

Bogese’s consistent pattern of receiving a rejection on an application, filing a continuation

application without any amendments, and abandoning the original application. Id. (citing Bogese,

303 F.3d at 1364–65). The Federal Circuit noted that Mr. Hyatt’s “time-wasting process” affected

“nearly all of his [relevant] applications.” Id.

3. Prejudice

After concluding that the PTO had shown unreasonable and inexcusable delay and shifted

the burden to Mr. Hyatt, the Federal Circuit made findings concerning prejudice.

First, the Federal Circuit concluded that although prosecution laches ordinarily requires its

proponent to show intervening rights to establish prejudice—i.e., that members of the public

invested in, worked on, or used the claimed technology during the period of delay—an

unreasonable and unexplainable delay of six or more years suffices to raise a presumption of

prejudice that includes intervening rights. Id. at 1370. Accordingly, the PTO’s showing that Mr.

Hyatt unreasonably and inexcusably delayed filing his applications for at least seven years raised

a presumption of intervening rights that Mr. Hyatt bears the burden of rebutting. Id.

Second, the Federal Circuit concluded that where an applicant clearly abused the patent

examination system, the prejudice requirement is satisfied. Id. Based on the evidence adduced

during the PTO’s case-in-chief, the Federal Circuit found that Mr. Hyatt had, intentionally or

11

otherwise, engaged in a clear abuse of the PTO’s examination system that caused delay in the four

applications in suit. Id. Accordingly, “[b]arring significant evidence to the contrary from [Mr.]

Hyatt,” the PTO had demonstrated material prejudice stemming from Mr. Hyatt’s unreasonable

and inexcusable delay. Id. The Federal Circuit noted specific ways in which Mr. Hyatt’s clearly

abusive conduct had given rise to material prejudice, including because his conduct had made

ordinary compact prosecution impossible; the PTO had created a specialized art unit to examine

his applications; after 2013, the PTO had spent $10 million examining Mr. Hyatt’s applications

whereas he had only paid $7 million in fees; the art unit could barely reach its expected production

rate because of the complex nature of Mr. Hyatt’s applications; the amount of time it would take

the art unit to examine Mr. Hyatt’s approximately 400 applications was equivalent to the amount

of time ordinarily required to examine 40,000 normal applications; Mr. Hyatt’s applications had

forced the PTO to issue requirements to get examination back on track; and the PTO’s examiners

had spent inordinate amounts of time since 2013 preparing office actions. Id. at 1370–71.

4. Remand

The Federal Circuit then remanded the prosecution laches issue to this Court while

retaining jurisdiction over the PTO’s other defenses to patentability. The Federal Circuit gave this

Court specific guidance, explaining that it was remanding “to the district court for the limited

purpose of affording [Mr.] Hyatt the opportunity to present evidence on the issue of prosecution

laches, consistent with the standards set forth in this opinion.” Id. at 1371. The Federal Circuit

specifically limited the scope of this Court’s review on remand.

First, the Federal Circuit stated that the following explanations for Mr. Hyatt’s delay are

insufficient as a matter of law to explain or excuse his conduct: he completed examination of the

four applications in suit in a timely manner; his conduct prosecuting his other applications is

12

irrelevant; he filed his applications to cover a number of inventions he believed he had made; and

he met statutory requirements and followed PTO’s rules in prosecuting his applications. Id.

Second, the Federal Circuit clarified that Mr. Hyatt bears the burden of showing by a

preponderance of the evidence that he “had a legitimate, affirmative reason for his delay” that

“operate[s] to excuse [him] from responsibility for the sizable undue administrative burden that

his applications have placed on the PTO[,]” which “the record before [the Federal Circuit]

demonstrates to be extreme.” Id. at 1371–72. 9 The Federal Circuit noted that at a minimum, Mr.

Hyatt must “justify [his] decision to ignore Director Godici’s instruction to demarcate his

applications in 1995,” “justify his decision to adopt the specific prosecution approach that he

did—unique in its scope and nature—as detailed in the PTO’s Requirements,” and “justify his

failure to develop a plan for demarcating his applications over at least the 20 year period from

1995 to 2015.” Id. at 1372. Per the Federal Circuit, “[a]ny reasons that fall short of justifying those

decisions or omissions fail to negate that his delay has been unreasonable and unexplained.” Id.

Thus, Mr. Hyatt bears the burden of making these specific showings. Not every justification or

reason will suffice; Mr. Hyatt’s reasons must be persuasive enough to absolve him from

responsibility for the burden he placed on the PTO. See id. at 1372.

Third, the Federal Circuit directed this Court to consider two points regarding prejudice.

Id. The first was that any delay by Mr. Hyatt of more than six years shifts the burden to him of

showing that he has not caused the PTO or any third-party material prejudice. Id. The second was

that absent significant negating evidence, Mr. Hyatt’s prosecution conduct amounted to a clear

9

This Court in Hyatt I applied a preponderance standard to the PTO’s affirmative defense of prosecution laches.

332 F. Supp. 3d at 131. The Federal Circuit in Hyatt II stated that Mr. Hyatt’s burden on remand is by a preponderance

of the evidence, so the Court will presume that the same burden applies at the outset to the PTO. 998 F.3d at 1371–72.

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abuse of the PTO’s patent examination system, which suffices to establish prejudice even in the

absence of intervening rights. Id.

B. Other Sources of Law

In Personalized Media, the Federal Circuit evaluated the district court’s application of

Hyatt II to the facts of an unrelated infringement action. See generally Personalized Media,

57 F.4th 1346. Besides confirming that Hyatt II has not been superseded by more recent decisions,

Personalized Media confirmed two principles that are salient here. First, the fact that a patent

applicant complied with the law does not obviate their obligation to prosecute their applications

“in an equitable way.” Id. at 1354 (quoting Hyatt II, 998 F.3d at 1366). Accordingly, conduct that

was lawful or expressly permitted by the PTO may nevertheless support prosecution laches. See

id.; see also Hyatt II, 998 F.3d at 1369. Second, the fact that an applicant previously obtained many

patents does not by itself defeat prosecution laches or outweigh other evidence of unreasonable

conduct. See Personalized Media, 57 F.4th at 1356.

In Hyatt III, this Court concluded that the unclean hands doctrine is unavailable to Mr.

Hyatt because the PTO is enforcing a congressional mandate in the public interest. 2022 WL

17904225, at *5–8. Accordingly, this Court barred Mr. Hyatt from introducing evidence that the

PTO is “tainted with inequitableness or bad faith.” See id. at *5–6 (quoting United States v. Philip

Morris Inc., 300 F. Supp. 2d 61, 74–75 (D.D.C. 2004)). However, the Court permitted Mr. Hyatt

to introduce evidence that specific witnesses were biased against him. Id. at *17. The Court,

consistent with this ruling, will not consider implied or express allegations of bad faith on the part

of the PTO, though it will entertain particularized charges of bias against testifying witnesses.

Additionally, this Court in Hyatt III explained that evidence of PTO conduct may be

relevant for specific limited purposes. For example, to show that Mr. Hyatt was aware of PTO

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conduct that explains why he acted the way he did or to establish that administrative expense and

burden on the PTO was due to independent choices by the PTO and not Mr. Hyatt’s conduct. Id.

at *13. The Court will consider evidence of PTO conduct for these limited purposes, though its

focus, consistent with Hyatt II, will be on Mr. Hyatt.

C. The Court’s Duty on Remand

The Court’s duty on remand is clear. The Court must find facts based on the now-complete

trial record. Then, the Court must apply the legal standard articulated by the Federal Circuit in

Hyatt II, consistent with its instructions for further proceedings on remand. In doing so, the Court

must evaluate the totality of the circumstances while focusing on Mr. Hyatt’s—and not the

PTO’s—conduct.

Because the Federal Circuit has already evaluated the evidence adduced during the PTO’s

case-in-chief and explained its legal importance standing alone, this Court is bound, should it find

equivalent facts after reviewing the whole record, to give those facts the same legal weight the

Federal Circuit did. For example, if the Court’s factual findings confirm that Mr. Hyatt’s

applications and prosecution conduct are afflicted by the same characteristics and exemplary

figures that the Federal Circuit held in Hyatt II would constitute a clear abuse of the patent

examination system, then the Court must conclude that Mr. Hyatt clearly abused the patent

examination system and materially prejudiced the PTO. The Court is duty-bound to draw the legal

conclusion the Federal Circuit has already stated follows from those facts. In any event, even if

the facts shake out differently on consideration of the entire record than they did based solely on

the PTO’s case-in-chief, Mr. Hyatt still bears burdens of persuasion prescribed by the Federal

Circuit. The Court will hold Mr. Hyatt to those burdens.

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III. FINDINGS OF FACT

The Court’s findings of fact, set forth below pursuant to Rule 52(a), are based on the record

as a whole, including a four-week bench trial. 10 The PTO presented its case-in-chief during the

first phase of trial, which ran from October 6, 2017, to October 16, 2017. After the Federal Circuit

vacated in part and remanded to this Court, trial resumed on September 18, 2023, and concluded

on October 5, 2023. During the second phase of trial, Mr. Hyatt presented his case-in-chief,

followed by the PTO’s rebuttal case. In total, across both phases of trial, the PTO presented three

fact witnesses (Gregory Morse, Robert Clarke, and Vincent Turner) and one expert witness

(Stephen Kunin). Mr. Hyatt presented six fact witnesses, five of whom appeared live (Gilbert

Hyatt, Howard Goldberg, Edward Kazenske, Jessica Harrison, and John LeGuyader), and one of

whom appeared by deposition designation (Richard Bawcombe). Mr. Hyatt presented one expert

witness (Arthur Steiner).

The Court’s findings of fact are calibrated to the issues the Federal Circuit has indicated

are legally relevant. The Court will not reach factual disputes that cannot move the needle or are

directed to evidence the Federal Circuit or this Court have already deemed irrelevant or improper.

The Court will not acknowledge literally every factual dispute identified by the parties; some are

best regarded as legal arguments or are more efficiently resolved through broader findings that

necessarily subsume other issues. The Court’s findings reflect careful consideration of the

10

The Court’s factual findings are its own. Hyatt II undoubtedly dictates the legal significance of certain facts once

found by the Court. See, e.g., 998 F.3d at 1369 (explaining that certain prosecution conduct, including “delay[ing] in

presenting claims, . . . creat[ing] . . . an overwhelming, duplicative web of applications and claims, . . . and fail[ing]

to cooperate with the PTO” constitutes “a clear abuse of the patent system,” which establishes prejudice). However,

it does not require the Court to find facts that are no longer tenable now that the trial record is complete. See id. at 1371

(remanding so that Mr. Hyatt may present evidence on the issue of prosecution laches); Hyatt III, 2022 WL 17904225,

at *13 (explaining that Mr. Hyatt is entitled to present evidence that rebuts the PTO’s case). In finding the following

facts, the Court has exercised its independent judgment and reviewed all of the evidence, including Mr. Hyatt’s

testimony and rebuttals of the PTO’s evidence. Mr. Hyatt, therefore, has now received a full and fair hearing on

prosecution laches.

16

testimony of these witnesses along with the over five hundred documentary exhibits submitted by

the parties. 11

A. Parties

1. Plaintiff Gilbert P. Hyatt is a prolific inventor who has received more than seventy

issued patents. He is the applicant of and named inventor on four patent applications

that are the subject of the present matter. In each action, filed under 35 U.S.C. § 145,

Mr. Hyatt asks the Court to review the PTO’s final decision denying him a patent.

2. Katherine K. Vidal is the named defendant in these matters in her official capacity as

the Under Secretary of Commerce for Intellectual Property and Director of the United

States Patent and Trademark Office. The PTO is the federal agency responsible for

examining patent applications and for granting U.S. patents.

B. Background

3. Each of the applications at issue in these cases was filed before June 8, 1995, the

effective date of the law that changed the term of a patent from 17 years from issuance

to 20 years from the effective filing date. 12 This change in the U.S. patent term was part

of the implementation of the Uruguay Round Agreements Act of the General

Agreement on Tariff and Trade (“GATT”). Tr. Oct. 6, 2017 PM (43:8–44:3) (Clarke);

Tr. Oct. 10, 2017 PM (20:8–14) (Morse).

4. To address circumstances where an applicant had the right under U.S. patent law to file

a new patent application to pursue claims that the applicant had disclosed in an earlier-

filed application (known as a “continuing application”), see generally FOF ¶¶ 59–63,

Congress required the PTO to promulgate rules to provide applicants further

examination, without loss of patent term, of additional patent claims that claim priority

to pre-GATT applications. Uruguay Round Agreements Act (“URAA”), Pub. L.

No. 103-465, § 532(a)(1), 108 Stat. 4809 (1994) (codified as amended at 35 U.S.C.

§ 154). The PTO’s rule implementing this legislation is 37 C.F.R. § 1.129 (“Rule 129”),

which was promulgated on April 25, 1995. See Changes to Implement 20-Year Patent

Term and Provisional Applications (“Final Rule”), 60 Fed. Reg. 20195, 20226–27

(Apr. 25, 1995); see also Tr. Oct. 6, 2017 PM (45:18–47:11) (Clarke).

5. To preserve the opportunity to obtain a 17-year pre-GATT patent term, many applicants

filed patent applications between April 25, 1995, when the PTO promulgated Rule 129,

and June 8, 1995, when the new patent term law went into effect. Applicants filed

approximately 52,000 applications during this period. Tr. Sept. 27, 2023 (1240:11–13)

11

Any finding of fact more appropriately characterized as a conclusion of law is adopted as such, and any conclusion

of law more properly characterized as a finding of fact is adopted as such.

12

See supra note 8.

17

(Goldberg). This surge in applications is known as the “GATT Bubble.” Tr. Oct. 6,

2017 PM (104:17–22) (Clarke).

6. Mr. Hyatt filed approximately 400 GATT Bubble applications. These applications,

including the four pending before the Court, are continuing applications that claim the

benefit of—priority to—the filing dates of many earlier filed applications, some of

which date to the late 1960s and early 1970s. If Mr. Hyatt were to receive a patent on

these applications, he would be entitled to a pre-GATT patent term that starts from the

date of issuance, not the effective filing date.

C. Pre-GATT Bubble Applications

1. Early Warnings

7. In the late 1960s, Mr. Hyatt began filing patent applications with the PTO.

PTX-569.00002. Mr. Hyatt became a registered patent agent in 1975. Tr. Sept. 25, 2023

(856:17–20) (Hyatt). Mr. Hyatt testified that he was familiar with patent prosecution

practices from the 1970s through the 1990s, and that he followed the Manual of Patent

Examining Procedure (“MPEP”) closely. Tr. Sept. 18, 2023 PM (131:17–23) (Hyatt).

However, PTO personnel told Mr. Hyatt on several occasions that his prosecution

conduct did not conform to PTO norms.

8. On May 11, 1973, in Application No. 05/135,040 (#104), 13 the examiner rejected Mr.

Hyatt’s pending claims for double patenting, warning him that he “may not claim the

same thing in two different applications.” DX2220-000005–06.

9. On August 1, 1975, in Application No. 05/101,881 (#101), Mr. Hyatt received an office

action in which the examiner claimed that he “continually added claims in response to

any Office Action. Applicant has thus continually increased the burden upon the Office

and particularly upon the Examiner.” DX2226-000002. The examiner noted that

“[t]hese added claims have been continually directed to new, diverse and different

inventions than were presented previously,” and that “[t]he sheer bulk of the application

and the complexity and number of issues, the number of outstanding claims, the number

of independent claims, etc.[,] all contribute to the mushrooming complexity of

examining this application to the extent that a proper and complete examineation [sic]

of all c[l]aims approaches unmanageability.” DX2226-000002. The examiner issued

written description rejections and noted that “[t]he specification is in a confused state

in view of the prolixity of new matter added to this application.” DX2226-000013. The

13

When referring to Mr. Hyatt’s applications, the Court will provide the serial number assigned to the application by

the PTO, followed by Mr. Hyatt’s docket number (e.g., Application No. 05/135,040 (#104)). The serial number is

denoted by “Application No.” followed by a specially formatted eight-digit number (e.g., Application No.

05/135,040). Mr. Hyatt’s docket number is denoted by the hashtag symbol followed by a three-digit number (e.g.,

#104). The Court will occasionally refer to Mr. Hyatt’s applications using only his docket numbers (e.g., the Court

will refer to “the #104 application”). The Court will do so only when it is exceedingly clear from context which

application the Court is referring to.

18

examiner further observed that Mr. Hyatt’s application imposed a “tremendous” burden

on the PTO’s ability to determine double patenting. DX2226-000017.

10. On November 16, 1978, in Application No. 05/860,257 (#157), Mr. Hyatt “was

informed that claims of the instant application cross-read on claims of related

applications and that the claims of the instant application are directed to multiple

inventions.” DX11-000001. Recognizing “the burden on the PTO for examination of

the instant application,” Mr. Hyatt sought “an opportunity to amend the claims . . . to

correct any cross reading and any multiple inventions before examination.”

DX11-000001.

11. On June 15, 1989, in Application No. 06/849,243 (#310), Mr. Hyatt was informed that

his application’s “disclosure[,] which encompasses 449 pages of text, w[h]ere 34

documents whose disclosures are incorporated by reference, and an untold number of

cross references to related applications and other documents, creates an unreasonable

and largely unnecessary burden on anyone attempting to understand applicant’s

invention.” DX2132-000008.

2. Successful Patent Prosecution

12. Despite these issues, between 1971 and 1997, Mr. Hyatt successfully prosecuted 75

patent applications to issuance as patents. See PTX-569.00002–03. In some instances,

prosecution concluded after only a few years. For example, Mr. Hyatt obtained a patent

on Application No. 06/160,871 (#168) on April 24, 1984, less than four years after he

filed the application on June 19, 1980. PTX-2008.0001. He obtained a patent on

Application No. 06/160,872 (#169) on January 1, 1985, less than five years after he

filed the application on June 19, 1980. PTX-2010.0001. He obtained a patent on

Application No. 06/425,731 (#191) on April 8, 1986, less than four years after he filed

the application on September 28, 1982. PTX-2011.0001. And he obtained a patent on

Application No. 07/343,112 (#325) on January 23, 1990, less than a year after he filed

the application on April 24, 1989. PTX-2020.0001.

3. Serial Prosecution Norms

13. Mr. Hyatt filed continuing, or “child,” applications in his prosecutions to pursue subject

matter disclosed in the “parent” or “ancestor” applications by establishing a “chain of

continuity” with the ancestor applications. E.g., Tr. Sept. 18, 2023 PM (99:19–22)

(Hyatt). Mr. Hyatt testified that filing continuing applications was a “common practice

among patent applicants at the time.” Tr. Sept. 19, 2023 AM (174:10–13) (Hyatt).

14. Mr. Hyatt testified that PTO was reluctant to examine continuing applications in

parallel with their ancestor applications before 1995. Tr. Sept. 26, 2023

(1062:25–1064:17) (Hyatt). He testified that for this reason, he chose to prosecute his

continuing applications serially—one after the other—often waiting to file child

applications until after allowance or abandonment of the parent application. Tr. Sept.

29, 2023 (1587:14–21) (Hyatt). Mr. Hyatt intended to maintain his serial prosecution

19

practice until the GATT transition forced him to file his applications in parallel or risk

losing the benefit of earlier priority dates. See Tr. Sept. 18, 2023 PM (124:19–21)

(Hyatt). This means that had the GATT transition not occurred, Mr. Hyatt would have

continued to file his applications serially for decades, if not centuries. See Tr. Sept. 19,

2023 AM (187:25–188:12) (Hyatt). For example, Mr. Hyatt counted at least 100

inventions in the 700 Family specification. DX233-000008; Tr. Sept. 18, 2023 AM

(58:19–59:3) (Hyatt). Assuming Mr. Hyatt pursued one application per invention and

took two years to prosecute each application, then following a serial prosecution

approach, it would have taken Mr. Hyatt approximately 200 years to prosecute each

invention disclosed in the 700 Family specification. 14

15. Mr. Hyatt testified that a March 16, 1992 decision by the Board of Patent Appeals and

Interferences (the “Board”) 15 reversing a prosecution laches rejection in Application

No. 07/128,659 (#315) persuaded him that his serial prosecution approach was

reasonable. PTX-1717.0009. In that decision, the Board explained that “35 U.S.C. 120

does not place a time limit on filing the continuing application; rather, all that is

required in this regard to preserve an earlier effective filing date as to common subject

matter is copendency or a continuous chain of copendency.” PTX-1717.0008. Mr.

Hyatt testified that this decision “reinforced [his] previous perception that [he] was

prosecuting [his] applications correctly.” Tr. Sept. 18, 2023 PM (138:6–21) (Hyatt).

That perception included the propriety of prosecuting continuing applications serially.

16. However, in a Reply Brief filed on September 15, 2020, appealing a prosecution laches

rejection in Application No. 08/455,320 (#380), Mr. Hyatt represented to the Board

that he “pursued many applications in parallel, rather than ‘waiting’ to file claims, both

before and during the ‘GATT bubble.’” PTX-836.51. Mr. Hyatt relied on his record of

parallel prosecution to distinguish his applications from the prosecution conduct

deemed unreasonable by the Federal Circuit in Bogese. PTX-836.51. He further argued

that “the pendency of parallel filings rebuts the accusation of delay.” PTX-836.52.

These prior representations are inconsistent with Mr. Hyatt’s trial testimony that he

could not prosecute his ancestor applications in parallel or that doing so would have

been futile. See Tr. Sept. 29, 2023 (1587:6–13) (Hyatt).

17. In fact, Mr. Hyatt often prosecuted his ancestor applications in parallel. See, e.g.,

PTX-1830.0002 (graphically illustrating parallel prosecution of ancestor applications);

PTX-1831.0002 (same); PTX-1832.0002 (same); PTX-1835.0002 (same);

PTX-1837.0002 (same); PTX-1839.0002 (same).

14

This estimate is conservative given the multi-year timeline typical of Mr. Hyatt’s successful patent prosecutions.

See DX268-000001–03; see also FOF ¶ 12.

15

The Board of Patent Appeals and Interferences is now known as the Patent and Trial Appeal Board. “Generally

speaking, they are the same body.” Tr. Oct. 6, 2017 PM (56:15–56:23) (Clarke).

20

4. Restrictions

18. When a patent applicant presents more than one independent or distinct invention in a

patent application, the PTO may require the applicant to restrict the application to a

single invention. MPEP § 803 (6th ed., Jan. 1995). 16 The office action containing such

a requirement is referred to as a “restriction.” MPEP § 802.02. “[F]iling a divisional

application in response to a restriction requirement, even if the filing occurs

immediately before issuance of the parent application” can constitute reasonable delay.

Hyatt II, 998 F.3d at 1361–62. During trial, Mr. Hyatt testified that his GATT Bubble

applications were divisional applications filed in response to restriction requirements

in his ancestor applications. E.g., Tr. Sept. 18, 2023 PM (124:14–24) (Hyatt); Tr. Sept.

19, 2023 AM (172:8–174:5) (Hyatt).

i. Finality

19. Mr. Hyatt testified that he needed to wait for pre-GATT restrictions in his ancestor

applications to become final before he could file continuing applications claiming

restricted inventions. E.g., Tr. Sept. 18, 2023 PM (123:18–124:18) (Hyatt). According

to Mr. Hyatt, “[o]nly a few, very few of the restriction requirements pre-1995 were

made final,” and “without the restriction requirement being made final, everything is

on hold relative to the prosecution of that application.” Tr. Sept. 18, 2023 PM

(129:7–15) (Hyatt). The non-finality of restrictions in Mr. Hyatt’s ancestor applications

through 1995 purportedly explains why he waited until shortly before the GATT

transition to file his continuing applications. However, Mr. Hyatt also testified that a

restriction not being “made final does not prevent [an applicant] from filing a divisional

application.” Tr. Sept. 18, 2023 PM (130:12–14) (Hyatt).

20. There were 63 restrictions in Mr. Hyatt’s ancestor applications before the GATT

transition on June 8, 1995. PTX-895. Of the 63, all but one became final well before

Mr. Hyatt filed his GATT Bubble applications. That is so because: (1) the applications

in which the restrictions appeared were no longer pending because examiners allowed

the applications; (2) the applications in which the restrictions appeared were no longer

pending because Mr. Hyatt abandoned the applications; (3) Mr. Hyatt did not challenge

the restrictions; and (4) the examiners had made the restrictions final.

21. Petitions challenging a restriction must be filed while an application is pending. MPEP

§ 818.03(c) (citing 37 C.F.R. § 1.144). Thirty-two (32) out of 63 of Mr. Hyatt’s pre-

GATT restrictions were no longer petitionable because the corresponding ancestor

application issued as a patent, and thus was no longer pending. Those restrictions are

described below:

16

All MPEP citations in this opinion are to the Sixth Edition, published January 1995.

https://www.uspto.gov/web/offices/pac/mpep/old/mpep_E6R0.htm [https://perma.cc/NJ7X-3C36]. The Court will

elsewhere omit this parenthetical information.

21

a. A restriction mailed on July 17, 1972, in Application No. 05/152,105 (#105).

PTX-895. The application issued as U.S. Patent No. 3,738,242 on June 12,

1973. DX268-000001.

b. A restriction mailed on November 17, 1972, in Application No. 05/229,213

(#106). PTX-895. The application issued as U.S. Patent No. 3,820,894 on June

28, 1974. DX2112-000001.

c. Restrictions mailed on January 27, 1976, May 28, 1976, January 24, 1977, April

9, 1979, and January 7, 1983, in Application No. 05/230,872 (#107). PTX-895.

The application issued as U.S. Patent No. 4,531,182 on July 23, 1985.

DX268-0000001.

d. Restrictions mailed on March 28, 1979, and July 3, 1979, in Application No.

05/232,459 (#108). PTX-895. The application issued as U.S. Patent No.

4,370,720 on January 25, 1983. DX268-000001.

e. A restriction mailed on March 27, 1975, in Application No. 05/288,247 (#110).

PTX-895. The application issued as U.S. Patent No. 4,121,284 on October 17,

1978. DX268-000001.

f. Restrictions mailed on April 25, 1977, July 30, 1979, and December 27, 1982,

in Application No. 05/291,394 (#111). PTX-895. The application issued as U.S.

Patent No. 4,396,976 on August 2, 1983. DX268-000001.

g. A restriction mailed on April 11, 1975, in Application No. 05/325,941 (#114).

PTX-895. The application issued as U.S. Patent No. 4,060,848 on November

29, 1977. DX268-000001.

h. Restrictions mailed on September 19, 1974, and February 14, 1975, in

Application No. 05/366,714 (#118). PTX-895. The application issued as U.S.

Patent No. 3,986,022 on October 12, 1976. DX268-000001.

i. Restrictions mailed on July 14, 1975, and January 4, 1979, in Application No.

05/476,743 (#125). PTX-895. The application issued as U.S. Patent No.

4,364,110 on December 14, 1982. DX268-000001.

j. Restrictions mailed on December 27, 1977, and June 26, 1979, in Application

No. 05/522,559 (#127). PTX-895. The application issued as U.S. Patent No.

4,209,852 on June 24, 1980. DX268-000001.

k. Restrictions mailed on September 9, 1976, and December 9, 1976, in

Application No. 05/550,231 (#128). PTX-895. The application issued as U.S.

Patent No. 4,209,843 on June 24, 1980. DX268-000001.

22

l. A restriction mailed on August 17, 1977, in Application No. 05/754,660 (#135).

PTX-895. The application issued as U.S. Patent No. 4,486,850 on December 4,

1984. DX268-000001.

m. Restrictions mailed on November 29, 1979, and February 19, 1980, in

Application No. 05/860,256 (#153). PTX-895. The application issued as U.S.

Patent No. 4,829,419 on May 9, 1989. DX268-000001.

n. A restriction mailed on April 21, 1981, in Application No. 05/860,257 (#157).

PTX-895. The application issued as U.S. Patent No. 4,371,923 on February 1,

1983. DX268-000001.

o. A restriction mailed on September 9, 1985, in Application No. 05/950,901

(#164). PTX-895. The application issued as U.S. Patent No. 4,225,225 on

September 30, 1980. DX268-000002.

p. Restrictions mailed on October 20, 1981, and June 2, 1982, in Application No.

06/160,872 (#169). PTX-895. The application issued as U.S. Patent No.

4,491,930 on January 1, 1985. DX268-000002.

q. A restriction mailed on December 5, 1986, in Application No. 06/676,769

(#304). PTX-895. The application issued as U.S. Patent No. 4,744,042 on May

10, 1988. DX268-000002.

r. Restrictions mailed on July 1, 1991, and November 22, 1991, in Application

No. 07/495,808 (#330). PTX-895. The application issued as U.S. Patent No.

5,339,275 on August 16, 1994. DX268-000002.

22. Seven (7) out of 63 of Mr. Hyatt’s pre-GATT restrictions were no longer petitionable

because Mr. Hyatt had abandoned the corresponding ancestor application. Those

restrictions are described below:

a. Restrictions mailed on April 8, 1975, and August 1, 1975, in Application No.

05/101,881 (#101). PTX-895. Proceedings terminated in the application no later

than February 4, 1981. PTX-1835.0002–03; see also PTX-932.14222–29

(United States Court of Customs and Patent Appeals decision affirming the

examiner’s rejection of the #101 application).

b. A restriction mailed on December 16, 1974, in Application No. 05/495,349

(#126). PTX-895. Mr. Hyatt abandoned the application when he failed to seek

judicial review of the Board’s April 30, 1986 decision on Mr. Hyatt’s request

for reconsideration. DX2128-000001–04.

c. A restriction mailed on August 28, 1980, in Application No. 05/860,260 (#152).

PTX-895. Mr. Hyatt expressly abandoned the application on April 20, 1987.

DX2130.

23

d. A restriction mailed on April 13, 1981, in Application No. 05/860,254 (#151).

PTX-895. Mr. Hyatt abandoned the application when he failed to seek judicial

review of the Board’s July 28, 1983 decision affirming the examiner’s rejection.

DX2129-000001–06.

e. A restriction mailed on January 31, 1985, in Application No. 06/223,959

(#175). PTX-895. Mr. Hyatt expressly abandoned the application on June 12,

1989. DX2131.

f. A restriction mailed on July 14, 1986, in Application No. 06/661,649 (#301).

PTX-895. Mr. Hyatt abandoned the application on March 14, 1989, when he

failed to pay the issue fee after receiving a notice of allowance. DX2218.

23. Eight (8) out of 63 of Mr. Hyatt’s pre-GATT restrictions became final when he elected

to prosecute one claimed invention “without traverse,” meaning he acquiesced in the

restriction and forfeited his right to petition the requirement. Tr. Sept. 27, 2023

(1247:15–19) (Goldberg). Those restrictions are described below:

a. A restriction mailed on July 20, 1978, in Application No. 05/849,812 (#145).

PTX-895. Mr. Hyatt elected “without traverse” on August 15, 1978.

DX2221-000001.

b. A restriction mailed on May 19, 1986, in Application No. 06/662,211 (#302).

PTX-895. Mr. Hyatt elected “without traverse” on July 23, 1986. PTX-945.165.

c. A restriction mailed on January 8, 1987, in Application No. 06/663,094 (#303).

PTX-2255.0004. Mr. Hyatt elected “without traverse” on February 5, 1987.

PTX-2255.0004.

d. A restriction mailed on December 18, 1989, in Application No. 07/059,286

(#313). PTX-895. Mr. Hyatt’s April 23, 1990 response did “not traverse [the]

restriction and constructive election.” DX2135.000008.

e. A restriction mailed on September 27, 1990, in Application No. 07/279,592

(#319). PTX-895. Mr. Hyatt elected “without traverse” on November 29, 1990.

PTX-1162.0175.

f. A restriction mailed on September 27, 1990, in Application No. 07/289,355

(#321). PTX-895. Mr. Hyatt elected “without traverse” on March 22, 1991.

PTX-1046.18262.

g. A restriction mailed on May 18, 1990, in Application No. 07/357,570 (#324).

PTX-895. Mr. Hyatt elected “without traverse” on June 19, 1990.

PTX-932.13665.

24

h. A restriction mailed on October 23, 1990, in Application No. 07/506,642

(#332). PTX-895. Mr. Hyatt elected “without traverse” on November 26, 1990.

DX2134.

24. Two (2) out of 63 of Mr. Hyatt’s pre-GATT restrictions became final when he failed

to traverse the restriction, effectively acquiescing in it and forfeiting his right to petition

that requirement. MPEP § 818.03(c). Those restrictions are described below:

a. A restriction mailed on September 13, 1988, in Application No. 05/849,812

(#145). PTX-895. Mr. Hyatt’s July 9, 1991 response did not traverse the

restriction. DX2222. Instead, Mr. Hyatt canceled certain claims as “being

directed to a non-elected invention” without traversing the restriction.

DX2222-000002.

b. A restriction mailed on February 22, 1988, in Application No. 06/662,211

(#302). PTX-895. Mr. Hyatt’s June 24, 1988 response did not traverse the

restriction. PTX-945.69–76. Instead, it “affirm[ed]” his election without

traversing. PTX-945.70.

25. Thirteen (13) out of 63 of Mr. Hyatt’s pre-GATT restrictions were made final by the

examiner. Those restrictions are described below:

a. Mr. Hyatt identified restrictions dated December 5, 1972, and May 11, 1973, in

Application No. 05/135,040 (#104). PTX-895. The May 11, 1973 restriction

repeats the December 5, 1972 restriction and makes it “Final.”

DX2220-000003.

b. Mr. Hyatt identified restrictions dated August 23, 1973, January 11, 1974,

March 14, 1974, and September 13, 1974, in Application No. 05/302,771

(#112). The January 11, 1974 restriction repeats the August 23, 1973 restriction

and makes it “final.” DX2207-000002. The September 13, 1974 restriction

repeats the March 14, 1974 restriction and makes it “Final.” DX2205-000002.

c. Mr. Hyatt identified a restriction dated April 21, 1988, in Application No.

07/059,286 (#313). In an advisory action dated June 27, 1988, the examiner

stated that the restriction would “not be withdrawn.” DX2136-000002.

d. Mr. Hyatt identified a restriction dated March 1, 1989, in Application No.

06/849,243 (#310). In an office action dated June 22, 1989, the examiner stated

that Mr. Hyatt’s arguments directed to the restriction were “not deemed to be

persuasive.” DX2132-000002. In his response dated November 15, 1989, Mr.

Hyatt did not further dispute or attempt to traverse the March 1, 1989 restriction.

PTX-937.228–47.

e. Mr. Hyatt identified a restriction dated July 29, 1991, in Application No.

07/419,911 (#326). In an office action dated April 3, 1992, the examiner stated

25

that the restriction was “deemed proper” and “therefore made FINAL.”

DX2133-000003.

f. Mr. Hyatt identified restrictions dated July 23, 1992, and July 19, 1993, in

Application No. 07/774,159 (#344). In an office action dated November 24,

1992, the examiner stated that the July 23, 1992 restriction was “deemed

proper” and “therefore made FINAL.” DX2215-000002. In an office action

dated May 12, 1994, the examiner stated that the July 19, 1993 restriction was

“deemed proper” and “therefore made FINAL.” DX2214-000002.

g. Mr. Hyatt identified a restriction dated August 17, 1992, in Application No.

07/357,570 (#324). In an office action dated January 11, 1993, the examiner

stated that the restriction was “deemed proper” and “therefore made FINAL.”

DX2210-000035.

h. Mr. Hyatt identified a restriction dated August 5, 1993, in Application No.

08/034,627 (#349). In an office action dated November 29, 1994, the examiner

made the restriction “FINAL.” PTX-943.210.

26. The sole remaining pre-GATT restriction was issued on April 8, 1991, in Application

No. 06/848,017 (#307). PTX-895. None of Mr. Hyatt’s GATT Bubble applications are

children of this application. DX231.

27. Accordingly, Mr. Hyatt did not need to wait for pre-GATT restrictions in his ancestor

applications to become final before filing his continuing applications. The written

record contradicts Mr. Hyatt’s testimony that the non-finality of restrictions in his

ancestor applications caused him to delay filing his continuing applications until shortly

before the GATT transition.

28. Thirty-two (32) out of 63 restrictions date to the 1970s. PTX-895. Twenty-two (22) out

of 63 date to the 1980s. PTX-895. Even if Mr. Hyatt were correct that these restrictions

were non-final as of the GATT transition, that means Mr. Hyatt passively waited for

approximately 6 to 23 years for the PTO to make these restrictions final, rather than

actively seeking their finalization.

ii. Number of Non-Elected Species

29. Mr. Hyatt testified that the impending GATT transition caused him to file divisional

applications to protect restricted species (i.e., independent inventions) in his ancestor

applications. FOF ¶ 18.

30. The total number of species in the 63 pre-GATT restrictions issued in Mr. Hyatt’s

ancestor applications is 206. PTX-895; see also Tr. Sept. 18, 2023 PM (122:22–123:2)

(Hyatt). However, the total number of non-elected species in the 63 pre-GATT

restrictions is lower. The number of non-elected species is lower than the total number

of species because the PTO requires applicants to respond to restriction requirements

26

by making a “provisional election of one invention for prosecution.” 37 C.F.R. § 1.143;

see also MPEP § 818.03(b). Accordingly, to determine the total number of non-elected

species, the total number of restricted species (206) must be reduced by the number of

species that Mr. Hyatt elected in his ancestor applications (49). 17 This gives a total of

157 non-elected species.

31. The total number of non-elected species in Mr. Hyatt’s ancestor applications (157) is

less than half of the approximately 400 GATT Bubble applications that Mr. Hyatt filed.

32. For example, the total number of non-elected species in the applications that Mr. Hyatt

claims are ancestors to the 700 family is 6. PTX-1838.0002 (showing claimed

ancestors); PTX-895 (showing number of restricted species). The 700 Family includes

100 applications. Tr. Sept. 18, 2023 PM (96:22–97:2) (Hyatt); see also PTX-271.00001

(grouping application families by docket number).

33. As a further example, the total number of non-elected species in the application that

Mr. Hyatt claims is the ancestor to the 600 family is three. PTX-1836.0002; PTX-895.

The 600 Family includes 29 applications. PTX-271.00001.

34. Thus, Mr. Hyatt did not file a number of GATT Bubble applications commensurate

with the number of restricted species in his ancestor applications.

35. Mr. Hyatt’s testimony that he filed his GATT Bubble applications in response to

restrictions in his ancestor applications is inconsistent with prior representations to this

Court. Mr. Hyatt previously represented that he “filed about 100 patent applications [in

the 700 Family] in 1995 because an initial count of inventions contained in the [700

Family] specification exceeded 100 inventions.” DX233-000008. Mr. Hyatt further

stated that he “made sure . . . to file enough applications to address the quantity of

inventions described in [his] large and diverse disclosures.” DX233-000008. In his

2017 opening statement, counsel for Mr. Hyatt stated that Mr. Hyatt “went and he

counted what he believed to be the inventive features in those applications. That count

led to 400 patent applications. So he submitted 400 patent applications.” Tr. Oct. 6,

2017 AM (59:17–20) (Plaintiff’s Opening Statement). Mr. Hyatt has made similar

representations to the PTO. PTX-828.14081–82; see also PTX-2250.4297. In other

words, Mr. Hyatt has historically tied his decision to file GATT Bubble applications in

the manner that he did to the number of inventions he counted in his disclosures, not

the existence of restricted species in his ancestor applications.

36. Mr. Hyatt’s testimony that he filed his GATT Bubble applications in response to

restrictions in his ancestor applications is inconsistent with his other trial testimony.

Mr. Hyatt testified that to protect each invention “in [his] 11 [application] families, [he]

filed numerous applications that were copies of the ancestor application.” Tr. Sept. 18,

17

The number of elected species is less than the total number of pre-GATT restrictions (63) because 14 of these

restrictions simply repeated prior restrictions and made them final. E.g., DX2220-000003. Accordingly, there were no

species in these 14 restrictions for Mr. Hyatt to elect. Mr. Hyatt only made elections in the 49 pre-GATT restrictions

with listed species.

27

2023 AM (58:19–23) (Hyatt). He further testified that because the 700 Family’s

specification disclosed “at least 100 inventions,” he “filed 100 copies of the ancestor

application, so that [he] could focus each one of them on a different one of the

inventions” he had disclosed. Tr. Sept. 18, 2023 AM (58:24–59:3) (Hyatt). In other

words, during trial, Mr. Hyatt tied his decision to file GATT Bubble applications in the

manner that he did to the number of inventions he counted in his disclosures.

37. During trial, Mr. Hyatt attempted to reconcile his earlier contention that he filed a

certain number of GATT Bubble applications based on the number of inventions he

believed he had disclosed with his more recent contention that he filed divisional

applications to protect restricted species. He testified that he filed more GATT Bubble

applications than he had restricted species because the restricted species in his ancestor

applications were broad, and he expected to narrow them in his continuing applications

by adding many narrower claims to cover the same inventions. Tr. 10/2/23 PM

(1780:21–1781:9) (Hyatt). The Court finds this explanation unpersuasive and not

credible. If Mr. Hyatt’s applications had been directed to broad restricted species, such

that he needed to add many narrower claims, he could have done so by adding narrower

claims to a single application drawn to that species rather than filing additional

applications. Mr. Hyatt did not explain why adding more claims required additional

applications rather than additional claims per application.

38. The only explanation the Court can divine is that Mr. Hyatt believed he would need

additional applications pursuing narrower claim sets to avoid the PTO issuing post-

GATT restriction requirements. See Tr. Oct. 2, 2023 PM (1781:3–16) (Hyatt). To that

point, Mr. Hyatt suggested that he should have filed more transitional applications than

he did because the PTO ultimately issued a substantial number of post-GATT

restriction requirements. See Tr. Oct. 2, 2023 PM (1781:10–16) (Hyatt). But this

explanation—that he filed more GATT Bubble applications than there were non-

elected species in anticipation of future restrictions—is inconsistent with his testimony

that he filed a certain number of applications based on the number of inventions he

believed he had disclosed. It is inconsistent with Mr. Hyatt’s concession that he filed

his GATT Bubble applications to protect both restricted species and unclaimed—i.e.,

never before presented and, therefore, never before broadly restricted—inventions.

Hyatt Resp. 32 (citing Tr. Sept. 18, 2023 PM (124:21–24, 140:1–9) (Hyatt) and Tr.

Sept. 19, 2023 AM (172:8–174:5) (Hyatt)). And it is inconsistent with Mr. Hyatt’s

testimony that he believed Rule 129 authorized him to claim more than one invention

in a GATT Bubble application, which indicates Mr. Hyatt believed post-GATT

restriction requirements would not be a problem so long as he paid the requisite fees.

See Tr. Oct. 2, 2023 AM (1740:10–23) (Hyatt). Mr. Hyatt is not credible on this point.

39. Mr. Hyatt’s shifting explanations and representations to this Court on this point are

incapable of neat resolution except by recourse to his originally proffered explanation

that he filed a certain number of GATT Bubble applications based on the number of

inventions he believed he had disclosed. The discrepancy between the total number of

GATT Bubble applications (approximately 400) and the total number of non-elected

species in Mr. Hyatt’s ancestor applications (157) fatally undermines Mr. Hyatt’s more

28

recent contention that he filed divisional applications to protect restricted species. The

Court concludes that Mr. Hyatt filed his GATT Bubble applications to protect the

inventions he believed he had disclosed, regardless of whether they were previously

restricted.

5. #303 Application

40. Mr. Hyatt abandoned Application No. 06/663,094 (#303) rather than pay the issue fee

and receive a patent on allowed claims. On October 6, 1988, the PTO informed Mr.

Hyatt that claims 1–10 (as renumbered) in the application were allowable.

DX260-000001. If Mr. Hyatt had paid the $280 issue fee, the PTO would have issued

him a patent on those claims. DX260-000001. Instead, Mr. Hyatt abandoned the

application in favor of a continuation-in-part application, Application No. 07/289,355

(#321). PTX-060.00003. That continuation-in-part application became the parent of

Mr. Hyatt’s 700 Family of applications.

41. Mr. Hyatt testified at trial that he abandoned the #303 application and filed a

continuation-in-part to obtain consideration of new prior-art references that called into

question the patentability of claims the examiner had allowed in the #303 application.

Tr. Sept. 22, 2023 (711:20–712:18) (Hyatt). The Court does not credit Mr. Hyatt’s

testimony that he abandoned the #303 application to ensure he obtained a valid patent

rather than to delay issuance and pursue other unrelated claims.

42. Mr. Hyatt did not use the #321 application to submit the allowed claims to the examiner

for consideration. Instead, he filed “nearly identical” claims. DX233-000012

(emphasis in original). Although similar, these claims are not the same as the claims

allowed in the #303 application. DX233-000068. Additionally, Mr. Hyatt introduced

several claims drawn to new subject matter. See PTX-1046.18315 (showing 57 total

claims). This caused the examiner to issue a restriction requirement in the #321

application. PTX-1046.18278. In response, Mr. Hyatt elected a group of claims that did

not include any of the “nearly identical” claims from the #303 application. Compare

DX1640-000001 (electing “without traverse . . . the group II invention including claims

11-21”) with DX233-000069–71 (representing that claims 23 and 31–38 of the #321

application correspond to the #303 application allowed claims). Put differently, Mr.

Hyatt did not elect any of the claims previously allowed in the #303 application for

examination in the #321 application. Mr. Hyatt’s testimony that he abandoned the #303

application to obtain review of the allowed claims in light of new prior-art references

is inconsistent with his decision not to elect any of those claims (more precisely, the

“nearly identical” claims filed in the #321 application) for examination.

43. Further, if Mr. Hyatt wanted his allowed claims examined in light of new prior art

references, he could have filed a file wrapper continuation (“FWC”) under 37 C.F.R.

§ 1.62. MPEP § 201.06(b). The FWC rule provided a streamlined process for

reconsidering the patentability of allowed claims in view of new prior art. See MPEP

§ 609B(3); see also DX233-000011–12. Filing a FWC containing the allowed claims

from the #303 application would not have prevented Mr. Hyatt from also filing a

29

continuation-in-part application directed to new subject matter. Mr. Hyatt used the

FWC rule in other applications, but not here. PTX-1833.0002–03; PTX-1834.0002–03.

44. Mr. Hyatt attempted to reinsert his previously allowed claims in a different application

nearly ten years after he prevented them from issuing. Tr. Oct. 10, 2017 PM

(9:21–12:4) (Morse); Tr. Oct. 12, 2017 PM (38:24–41:18) (Kunin). Specifically, more

than ten years after abandoning the #303 application, Mr. Hyatt filed claims in another

application, Application No. 08/458,004 (#713), that were substantially similar to the

allowed claims in the #303 application. DX131-000039–40 (explaining substantial

subject matter correspondence between allowed claims in the #303 application and

claims in the #713 application); PTX-5007, Slide 30 (showing claims side-by-side).

The claims in the #303 application were originally allowed on October 6, 1988; Mr.

Hyatt effectively refiled them in the #713 application on December 22, 1998. Tr. Oct.

10, 2017 PM (10:7–18) (Morse).

D. GATT Bubble Applications

1. Application Families

45. As of October 2013, there were 399 applications pending with the PTO that name Mr.

Hyatt as the inventor and were filed before June 8, 1995 (the effective date of the GATT

transition). DX144-000004. Mr. Hyatt filed 381 of these applications between April 6,

1995, and June 7, 1995. DX253-000005–16. Three hundred and thirty one (331) of

those applications were filed in the eight days before the 20-year term went into

effect—from May 31, 1995, to June 7, 1995. DX253-000007–16. On June 5, 1995

alone, Mr. Hyatt filed 65 applications. DX253-000011–13. On June 6, he filed another

115 applications. DX253-000013–16.

46. Mr. Hyatt groups his GATT Bubble applications into 11 families according to his

assigned docket numbers. PTX-271.00001. Each of Mr. Hyatt’s families corresponds

to a family of applications identified in the PTO’s Requirements. E.g.,

DX140-000005–07. 18 Mr. Hyatt’s applications within the same family share an

identical specification. PTX-271. Those families are described below:

a. The 360 Family contains Mr. Hyatt’s GATT Bubble applications with docket

numbers 360 through 369. PTX-271.00001. This family’s general subject

matter is “analog memory.” Tr. Sept. 18, 2023 AM (59:24–60:1) (Hyatt). This

family corresponds to the PTO’s Family 1. DX200-000005–06. Mr. Hyatt

provided the Court with a chart showing five ancestor applications for this

family and an earliest priority date of October 25, 1977. PTX-1830.0002–03.

The chart further shows that Application No. 08/429,272 (#360), a member of

the family, was filed on April 24, 1995. PTX-1830.0003. Contrary to Mr.

Hyatt’s chart, this family actually claims priority to 36 applications, with an

earliest claimed priority date of December 28, 1970, the filing date of

18

The “PTO’s Requirements” refers to the 2013 Requirements, detailed infra, FOF ¶¶ 228–231.

30

Application No. 05/101,881 (#101). PTX-1069.17624–27. The earliest

identical specification for this family was filed on March 13, 1990, in

Application No. 07/493,061 (#329). DX1486-000052.

b. The 370 Family contains Mr. Hyatt’s GATT Bubble applications with docket

numbers 370 through 393. PTX-271.00001. This family’s general subject

matter is “illumination control systems.” Tr. Sept. 18, 2023 PM (81:9–11)

(Hyatt). This family corresponds to the PTO’s Family 11. DX69-000007–08.

Mr. Hyatt provided the Court with a chart showing three ancestor applications

for this family and an earliest priority date of June 4, 1973. PTX-1831.0002–03.

The chart further shows that Application No. 08/456,138 (#382), a member of

the family, was filed on May 31, 1995. PTX-1831.0003. Contrary to Mr.

Hyatt’s chart, this family actually claims priority to 29 applications, with an

earliest claimed priority date of December 28, 1970, the filing date of

Application No. 05/101,881 (#101). PTX-836.6365–68. The earliest identical

specification for this family was filed on December 3, 1987, in Application No.

07/128,659 (#315). DX1486-000052.

c. The 410 Family contains Mr. Hyatt’s GATT Bubble applications with docket

numbers 410 through 439. PTX-271.00001. This family’s general subject

matter is “signal processing technology.” Tr. Sept. 18, 2023 PM (85:7–10)

(Hyatt). This family corresponds to the PTO’s Family 7. DX46-000005–07. Mr.

Hyatt provided the Court with a chart showing four ancestor applications for

this family and an earliest priority date of February 14, 1975.

PTX-1832.0002–03. The chart further shows that Application No. 08/426,554

(#435), a member of the family, was filed on April 21, 1995. PTX-1832.0003.

Contrary to Mr. Hyatt’s chart, this family actually claims priority to 34

applications, with an earliest claimed priority date of December 28, 1970, the

filing date of Application No. 05/101,881 (#101). PTX-826.17232–34. The

earliest identical specification for this family was filed on April 7, 1986, in

Application No. 06/849,243 (#310). DX1486-000052.

d. The 450 Family contains Mr. Hyatt’s GATT Bubble applications with docket

numbers 400 through 409, 440 through 442, and 450 through 499.

PTX-271.00001. This family’s general subject matter is “visual processing for

host systems, where the host system performs various functions.” Tr. Sept. 18,

2023 PM (87:7–11) (Hyatt). This family corresponds to the PTO’s Family 9.

DX27-000005–07. Mr. Hyatt provided the Court with a chart showing two

ancestor applications, with an earliest priority date of June 15, 1983.

PTX-1833.0002–03. The chart further shows that Application No. 08/464,995

(#442), a member of the family, was filed on June 5, 1995. PTX-1833.0003.

Contrary to Mr. Hyatt’s chart, this family actually claims priority to 43

applications, with an earliest claimed priority date of November 24, 1969, the

filing date of Application No. 04/879,293 (#100). DX27-000008–09. The

earliest identical specification for this family was filed on June 15, 1983, in

Application No. 06/504,691 (#193). DX1486-000052.

31

e. The 500 Family contains Mr. Hyatt’s GATT Bubble applications with docket

number 500 through 548. PTX-271.00001. This family’s general subject matter

is “memory architecture.” Tr. Sept. 18, 2023 PM (88:17–20) (Hyatt). This

family corresponds to the PTO’s Family 12. DX179-000005–07. Mr. Hyatt

provided the Court with a chart showing three ancestor applications, with an

earliest priority date of October 18, 1984. PTX-1834.0002–03. The chart further

shows that Application No. 08/470,080 (#529), a member of the family, was

filed on June 6, 1995. PTX-1834.0003. Contrary to Mr. Hyatt’s chart, this

family actually claims priority to 14 applications, with an earliest claimed

priority date of February 14, 1975, the filing date of Application No. 05/550,231

(#128). PTX-002.00897–98. The earliest identical specification for this family

was filed on October 18, 1984, in Application No. 06/662,211 (#302).

PTX-1834.0003.

f. The 550 Family contains Mr. Hyatt’s GATT Bubble applications with docket

numbers 550 through 569. PTX-271.00001. This family’s general subject

matter is “computer architecture,” especially that pertaining to “computer

machine control.” Tr. Sept. 18, 2023 PM (90:15–19) (Hyatt). This family

corresponds to the PTO’s Family 2. DX158-000005–06. Mr. Hyatt provided the

Court with a chart showing four ancestor applications for this family and an

earliest priority date of December 28, 1970. PTX-1835.0002–03. The chart

further shows that Application No. 08/470,075 (#567), a member of the family,

was filed on June 6, 1995. PTX-1835.0003. Contrary to Mr. Hyatt’s chart, this

family actually claims priority to 10 applications. DX158-000007. December

28, 1970, the filing date of Application No. 05/101,881 (#101), is the correct

priority date. DX2204. The earliest identical specification for this family was

filed on December 27, 1989, in Application No. 07/457,451 (#327).

DX1486-000052.

g. The 600 Family contains Mr. Hyatt’s GATT Bubble applications with docket

numbers 600 through 628. PTX-271.00001. This family’s general subject

matter is improvement on memory systems. Tr. Sept. 18, 2023 PM (93:1–3)

(Hyatt). This family corresponds to the PTO’s Family 8. DX140-000005–07.

Mr. Hyatt provided the Court with a chart showing one ancestor application for

this family and an earliest priority date of December 2, 1988.

PTX-1836.0002–03. The chart further shows that Application No. 08/434,424

(#604), a member of the family, was filed on May 3, 1995. PTX-1836.0003.

Contrary to Mr. Hyatt’s chart, this family actually claims priority to 43

applications, with an earliest claimed priority date of December 28, 1970, the

filing date of Application No. 05/101,881 (#101). DX61-000002–06. The

earliest identical specification for this family was filed on December 2, 1988,

in Application No. 07/279,592 (#319). DX1486-000052.

h. The 650 Family contains Mr. Hyatt’s GATT Bubble applications with docket

numbers 650 through 678. PTX-271.00001. This family’s general subject

32

matter is “fault tolerant systems associated with the [370 Family’s] illumination

control technology.” Tr. Sept. 18, 2023 PM (95:22–96:1) (Hyatt). This family

corresponds to the PTO’s Family 6. DX129-000005–06. Mr. Hyatt provided the

Court with a chart showing three ancestor applications and an earliest priority

date of June 4, 1973. PTX-1837.0002–03. The chart further shows that

Application No. 08/458,579 (#677), a member of the family, was filed on June

1, 1995. PTX-1837.0003. Contrary to Mr. Hyatt’s chart, this family actually

claims priority to 34 applications, with an earliest claimed priority date of

December 28, 1970, the filing date of Application No. 05/101,881 (#101).

DX129-000006–07. The earliest identical specification for this family was filed

on October 10, 1989, in Application No. 07/419,911 (#326). DX1486-000052.

i. The 700 Family contains Mr. Hyatt’s GATT Bubble applications with docket

numbers 700 through 799. PTX-271.00001. This family’s general subject

matter is “image processing.” Tr. Sept. 18, 2023 PM (96:11–13) (Hyatt). This

family corresponds to the PTO’s Family 10. DX144-000005–07. Mr. Hyatt

provided the Court with a chart showing two ancestor applications for this

family and an earliest priority date of October 19, 1984. PTX-1838.0002–03.

The chart further shows that Application No. 08/457,208 (#711), a member of

the family, was filed on June 1, 1995. PTX-1838.0003. Contrary to Mr. Hyatt’s

chart, this family actually claims priority to six applications, with an earliest

priority date of June 15, 1983, the filing date of Application No. 06/504,691

(#193). PTX-001.05093–94. The earliest identical specification for this family

was filed on October 19, 1984, in Application No. 06/663,094 (#303). Tr. Oct.

2, 2023 AM (1751:5–13) (Hyatt).

j. The 800 Family contains Mr. Hyatt’s GATT Bubble applications with docket

numbers 800 through 829. PTX-271.00001. This family’s general subject

matter is “duty cycle modulated illumination control systems.” Tr. Sept. 18,

2023 PM (99:3–6) (Hyatt). This family corresponds to the PTO’s Family 5.

DX75-000005–06. Mr. Hyatt provided the Court with a chart showing five

ancestor applications for this family and an earliest priority date of June 4, 1973.

PTX-1839.0002–03. The chart further shows that Application No. 08/454,879

(#816), a member of the family, was filed on May 31, 1995. PTX-1839.0003.

Contrary to Mr. Hyatt’s chart, this family actually claims priority to 30

applications, with an earliest claimed priority date of December 28, 1970, the

filing date of Application No. 05/101,881 (#101). PTX-2212.2292–95. The

earliest identical specification for this family was filed on May 25, 1989, in

Application No. 07/357,570 (#324). DX1486-000052.

k. The 850 Family contains Mr. Hyatt’s GATT Bubble applications with docket

numbers 850 through 869. PTX-271.00001. This family’s general subject

matter is “sound and speech processing.” Tr. Sept. 18, 2023 PM (100:3–6)

(Hyatt). This family corresponds to the PTO’s Family 4. DX196-000006–07.

Mr. Hyatt provided the Court with a chart showing two ancestor applications

for this family and an earliest priority date of January 22, 1973.

33

PTX-1840.0002–03. The chart further shows that Application No. 08/486,151

(#855), a member of the family, was filed on June 6, 1995. PTX-1840.0003.

Contrary to Mr. Hyatt’s chart, this family actually claims priority to 19

applications, with an earliest claimed priority date of December 28, 1970, the

filing date of Application No. 05/101,881 (#101). DX196-000008. The earliest

identical specification for this family was filed on November 9, 1977, in

Application No. 05/849,812 (#145). DX 1486-000052.

2. Pre-Filing Delay

47. Mr. Hyatt delayed filing his GATT Bubble applications for 12 to 26 years. FOF ¶ 51.

Even if the Court were to credit his claimed priority dates, that would mean he delayed

filing for 6 to 24 years, or 11 to 24 years, excluding the 600 Family. Id. In other words,

Mr. Hyatt has conceded significant pre-filing delay. Mr. Hyatt further delayed by

amending his claims late in prosecution, effectively presenting new claims for

examination decades after he could have first filed them. FOF ¶ 56. For instance, in

certain of his applications, Mr. Hyatt delayed 46 years before presenting claims for

examination. Id.

i. GATT Bubble Applications

48. Mr. Hyatt’s GATT Bubble applications claim priority to a series of applications filed

from the late 1960s through the 1980s. A claim of priority to those earlier applications,

if valid, would give Mr. Hyatt the benefit of the filing date of those applications.

35 U.S.C. § 120. Put differently, a valid claim of priority would require the PTO to

treat Mr. Hyatt’s GATT Bubble applications as if they were filed on those earlier dates.

Id. Thus, if Mr. Hyatt’s priority claims to those earlier applications are proper, Mr.

Hyatt’s GATT Bubble applications, which were filed in 1995, would be treated as if

they were filed decades earlier. Id.

49. For Mr. Hyatt’s priority claims to be valid, his earlier applications have to provide

adequate support for the inventions claimed in his GATT Bubble applications. Id. More

precisely, those earlier applications must provide written description and enablement

support for his later claims. Id.; see also 35 U.S.C. § 112.

50. By claiming priority to those earlier applications, Mr. Hyatt represented to the PTO

that he believed his earlier applications provided written description and enablement

support for his later claims. Accordingly, Mr. Hyatt represented to the PTO that he

could have filed his later claims with his earlier applications.

51. Mr. Hyatt waited decades to file his later claims rather than include them with his earlier

applications. The below table shows the approximate magnitude of filing delay across

Mr. Hyatt’s GATT Bubble applications. The table shows delay based on the Court’s

findings respecting Mr. Hyatt’s claimed priority dates (“Actual Filing Delay”), as well

as delay based on the priority dates presented in Mr. Hyatt’s charts (“Admitted Filing

Delay”), which the Court has now largely rejected. FOF ¶ 46.

34

Family Hyatt Chart Actual Claimed Filing Date 19 Admitted Actual Filing

Priority Date Priority Date Filing Delay 20 Delay 21

360 10/25/1977 12/28/1970 4/24/1995 (#360) 17 years 24 years

370 6/4/1973 12/28/1970 5/31/1995 (#382) 22 years 24 years

410 2/14/1975 12/28/1970 4/21/1995 (#435) 20 years 24 years

450 6/15/1983 11/24/1969 6/5/1995 (#442) 12 years 26 years

500 10/18/1984 2/14/1975 6/6/1995 (#529) 11 years 20 years

550 12/28/1970 12/28/1970 6/6/1995 (#567) 24 years 24 years

600 12/2/1988 12/28/1970 5/3/1995 (#604) 6 years 24 years

650 6/4/1973 12/28/1970 6/1/1995 (#677) 22 years 24 years

700 10/19/1984 6/15/1983 6/1/1995 (#711) 11 years 12 years

800 6/4/1973 12/28/1970 5/31/1995 (#816) 22 years 24 years

850 1/22/1973 12/28/1970 6/6/1995 (#855) 22 years 24 years

52. Mr. Hyatt significantly delayed presenting his GATT Bubble applications for

examination, with delays ranging from 12 to 26 years. Even if the Court were to adopt

the priority dates presented in Mr. Hyatt’s charts, the delay range would be 6 to 24

years. Excluding the applications that comprise the 600 Family, the delay range would

be 11 to 24 years. In other words, Mr. Hyatt has conceded significant periods of pre-

filing delay in his GATT Bubble applications.

53. Mr. Hyatt has indicated that he would have waited even longer to file his continuing

applications if not for the GATT transition. Mr. Hyatt previously represented to this

Court that he was “forced by the change of law to provide in co-pending applications

for all inventions that [he] would need to cover,” and therefore “could not wait to file

19

The Court used the filing dates provided in Mr. Hyatt’s charts as exemplars for the whole family when calculating

the delays displayed in this summary chart. PTX-1830.0003 (360 Family); PTX-1831.0003 (370 Family);

PTX-1832.0003 (410 Family); PTX-1833.0003 (450 Family); PTX-1834.0003 (500 Family); PTX-1835.0003 (550

Family); PTX-1836.0003 (600 Family); PTX-1837.0003 (650 Family); PTX-1838.0003 (700 Family);

PTX-1839.0003 (800 Family); PTX-1840.0003 (850 Family).

20

The Court rounded each year to the nearest integer. For example, there were 24 years, 5 months, and 9 days of pre-

filing delay in the 550 Family. That amounts to approximately 24.44 years of pre-filing delay. Rounding that number

to the nearest integer yields 24 years of pre-filing delay, which is what appears in the table.

21

See supra note 20.

35

until after examination of some claims to address additional subject matter later

because filing after June 8, 1995 would have resulted in loss of patent term.”

DX233-000009. Examiners noted that this meant Mr. Hyatt “was simply waiting and,

if not for the change in law in 1995, he would have waited even longer” to file

additional applications. PTX-2250.1983 (emphasis in original). Mr. Hyatt included

similar language in his appeal briefs, but eventually stopped including it in his filings.

DX1922-000047 & n.8.

ii. Presenting Newly Amended Claims

54. In addition to delaying filing his GATT Bubble applications, Mr. Hyatt delayed

presenting amended claims for examination. As detailed infra, FOF ¶¶ 122–142, Mr.

Hyatt routinely filed amendments in his GATT Bubble applications that shifted his

claims to new inventions and restarted examination years after he initially filed his

applications.

55. By amending his claims while maintaining his claimed priority dates, Mr. Hyatt

represented to the PTO that he believed his earlier applications provided written

description and enablement support for his newly amended claims. Accordingly, Mr.

Hyatt represented to the PTO that he could have filed his newly amended claims with

his earlier applications.

56. Mr. Hyatt waited decades to file his newly amended claims rather than include them

with his earlier applications. The below table shows non-exhaustive examples of delay

in presenting amended claims for examination across many of Mr. Hyatt’s application

families. FOF ¶¶ 122–142. The table shows delay based on the Court’s findings

respecting Mr. Hyatt’s claimed priority dates (“Actual Filing Delay”), as well as delay

based on the priority dates presented in Mr. Hyatt’s charts (“Admitted Filing Delay”).

FOF ¶ 46.

36

Family Application Hyatt Chart Actual Amended Admitted Actual

Priority Claimed Date Filing Filing

Date Priority Date Delay 22 Delay 23

360 08/428,737 10/25/1977 12/28/1970 2/23/2015 37 years 44 years

(#361)

370 08/455,320 6/4/1973 12/28/1970 4/27/2017 44 years 46 years

(#380)

410 08/418,213 2/14/1975 12/28/1970 1/7/2016 41 years 45 years

(#412)

450 08/417,530 6/15/1983 11/24/1969 8/3/2015 32 years 46 years

(#450)

500 08/471,704 10/18/1984 2/14/1975 10/22/1998 14 years 24 years

(#514)

500 08/472,062 10/18/1984 2/14/1975 10/21/1996 12 years 22 years

(#524)

600 08/431,639 12/2/1988 12/28/1970 8/19/1998 10 years 28 years

(#601)

700 08/457,211 10/19/1984 6/15/1983 2/22/1999 14 years 16 years

(#708)

700 08/456,398 10/19/1984 6/15/1983 1/30/2002 17 years 19 years

(#717)

700 08/463,823 10/19/1984 6/15/1983 12/21/1996 12 years 14 years

(#758)

700 08/471,553 10/19/1984 6/15/1983 5/11/1999 15 years 16 years

(#783)

700 08/469,580 10/19/1984 6/15/1983 12/10/2015 31 years 32 years

(#789)

700 08/471,042 10/19/1984 6/15/1983 6/1/2015 31 years 32 years

(#798)

800 08/456,126 6/4/1973 12/28/1970 10/15/2014 41 years 44 years

(#817)

57. Mr. Hyatt significantly delayed presenting his newly amended claims for examination,

with delays in some applications reaching as high as 46 years. Mr. Hyatt’s delay in

presenting amended claims exceeded his delay in filing his GATT Bubble applications.

For example, Mr. Hyatt delayed 24 years in filing Application No. 08/428,737 (#361)

because he filed it on April 25, 1995, 24 years after his earliest claimed priority date

for the 360 Family. DX253-000006; FOF ¶ 51. Approximately 20 years later, on

February 23, 2015, Mr. Hyatt submitted an amendment that substantially rewrote claim

168 in the #361 application, shifting it to a new invention. FOF ¶ 135. In other words,

Mr. Hyatt introduced a substantially new claim for examination 44 years after his

earliest claimed priority date. FOF ¶ 56. That constituted additional delay, such that

22

See supra note 20.

23

See supra note 20.

37

Mr. Hyatt delayed at least 24 to 44 years in the #361 application—24 years to file the

application and 44 years to present newly amended claim 168 for examination. Even if

the Court were to adopt the priority dates presented in Mr. Hyatt’s charts, Mr. Hyatt

still would have delayed at least 18 to 37 years. Although this example is emblematic

of Mr. Hyatt’s amendment practice, Mr. Hyatt’s delay in presenting newly amended

claims is not limited to claim-shifting amendments.

3. Application Types

58. During trial, Mr. Hyatt testified that his GATT Bubble applications were divisional

applications filed in response to restriction requirements in his ancestor applications.

E.g., Tr. Sept. 18, 2023 PM (124:14–24) (Hyatt); Tr. Sept. 19, 2023 AM (172:8–174:5)

(Hyatt). Mr. Hyatt’s testimony is inconsistent with prevailing practices at the time and

the file histories of his GATT Bubble applications.

i. Prevailing Practice

59. The PTO allows an applicant to file one of three types of continuation applications:

continuation, continuation-in-part (“CIP”), and divisional. MPEP §§ 201.06–08; Tr.

Oct. 5, 2023 AM (2373:10–2375:3) (Kunin).

60. “A continuation is a second application for the same invention claimed in a prior

application and filed before the original becomes abandoned or patented.” MPEP

§ 201.07; see also Tr. Oct. 5, 2023 AM (2373:22–25) (Kunin).

61. “A continuation-in-part is an application filed during the lifetime of an earlier

application by the same applicant, repeating some substantial portion or all of the

earlier application and adding matter not disclosed in the said earlier case.” MPEP

§ 201.08 (emphasis in original); see also Tr. Oct. 5, 2023 AM (2374:8–15) (Kunin).

62. A divisional is “[a] later application for a distinct or independent invention, carved out

of a pending application and disclosing and claiming only subject matter disclosed in

the earlier or parent application.” MPEP § 201.06; see also Tr. Oct. 5, 2023 AM

(2374:20–2375:2) (Kunin). “The divisional application should set forth only that

portion of the earlier disclosure which is germane to the invention as claimed in the

divisional application.” Id.

63. There are two types of divisional applications: voluntary and involuntary. Tr. Oct. 5,

2023 AM (2376:21–2377:7) (Kunin). Voluntary divisionals involve situations where

“the applicant discloses but does not claim multiple inventions in an application, and

then chooses to file a divisional application claiming those disclosed but unclaimed

inventions.” Tr. Oct. 5, 2023 AM (2377:3–7) (Kunin). A voluntary divisional is

indistinguishable from a continuation. Tr. Oct. 3, 2023 AM (1944:17–1945:4)

(Steiner). Involuntary divisionals, in contrast, are filed “if the USPTO makes a

restriction requirement and then the applicant files a divisional application.” Tr. Oct. 5,

2023 AM (2376:–2377:2) (Kunin). Only involuntary divisionals qualify for safe harbor

38

protection under 35 U.S.C. § 121, whereby the earlier application may not be used as a

reference against the divisional. Tr. Oct. 5, 2023 AM (2377:8–11) (Kunin).

64. To be considered a divisional application, the claims of the application must be

“consonant” with the restriction: the applicant must “cabin[] that divisional to claims

that . . . corresponded [to] or . . . were consonant with the claims in the group that [the

applicant] didn’t elect.” Tr. Oct. 4, 2023 PM (2246:9–23) (Morse). Put differently, the

claims in the divisional must be drawn to substantially the same invention as the set of

claims that were restricted into the non-elected species corresponding to that divisional

application. If the applicant “went off in some other direction, it’s not a divisional that

gets that protection.” Tr. Oct. 4, 2023 PM (2246:22–23) (Morse).

65. In 1995, it was generally understood that the terms “continuation,” “continuation-in-

part,” and “divisional” referred to distinct application types. Tr. Oct. 5, 2023 AM

(2375:4–8) (Kunin); Tr. Oct. 4, 2023 PM (Tr. 2224:16–2225:15) (Morse); Tr. Sept. 27,

2023 (1248:17–22) (Goldberg); cf. DX2109-000003 (Official Gazette notice dated

March 18, 2003). Although the PTO acknowledged that the application type was

“immaterial” to “the right [applicants possess] under [35 U.S.C. § 120],” MPEP

§ 201.11, the PTO otherwise treated these applications differently, see MPEP

§§ 201.06–.08, and the Federal Circuit acknowledged in a contemporaneous decision

that they differ by claiming different things, see Transco Prods. Inc. v. Performance

Contracting, Inc., 38 F.3d 551, 555 (Fed. Cir. 1994); see also Pfizer, Inc. v. Teva

Pharms. USA, Inc., 518 F.3d 1353, 1362 (Fed. Cir. 2008) (later decision clearly

distinguishing divisionals and continuations-in-part and declining to apply 35 U.S.C.

§ 121’s safe harbor to the latter); Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d

1340, 1354 (Fed. Cir. 2009) (later decision clearly distinguishing divisionals and

continuations and declining to apply 35 U.S.C. § 121’s safe harbor to the latter).

66. Mr. Hyatt understood that the terms “continuation,” “continuation-in-part,” and

“divisional” referred to distinct application types and used them accordingly. See, e.g.,

Tr. Sept. 28, 2023 (1505:7–1507:22) (Hyatt) (discussing PTX-003.01380,

PTX-1069.17624, PTX-826.17232, PTX-828.17782, PTX-286.08453, and DX2110).

Indeed, Mr. Hyatt was “very particular in the terms” he used when constructing his

applications. Tr. Sept. 19, 2023 PM (261:12–18) (Hyatt).

67. For example, in the “CROSS REFERENCE TO RELATED APPLICATIONS” section

in Mr. Hyatt’s 550 Family specification, Mr. Hyatt used the term “continuation” to

describe the relationship between the GATT Bubble applications in the 550 Family and

Application No. 07/457,451 (#327), but used the term “divisional” to describe the

relationship between Application No. 05/402,520 (#122) and Application No.

05/101,881 (#101). DX2204.

68. Similarly, in the “CROSS REFERENCE TO RELATED APPLICATIONS” section in

Mr. Hyatt’s 360 Family specification, Mr. Hyatt used the term “continuation” to

describe the relationship between the GATT Bubble applications in the 360 Family and

Application No. 08/254,818 (#350), but used the term “continuation in part” to describe

39

the relationship of Application No. 06/160,871 (#168) to 29 listed applications.

PTX-1069.17624–27. Mr. Hyatt used the term “divisional” to refer to the relationship

between Application No. 08/254,818 (#350) and Applications Nos. 08/283,374 (#351),

08/285,669 (#352), and 08/286,620 (#353). PTX-1069.17624. He also used the term

“divisional” to refer to the relationship between Application No. 06/520,277 (#195)

and Application No. 06/160,871 (#168). PTX-1069.17624.

ii. Designation in Mr. Hyatt’s Applications

69. To claim the benefit of an earlier filing date, a patent applicant must include in their

application a specific reference to the earlier application to which they claim priority.

MPEP § 201.11. That reference usually occurs in the first sentence of the specification.

Tr. Oct. 5, 2023 AM (2366:8–12) (Morse); Tr. Oct 3, 2023 AM (1944:7–15) (Steiner).

70. Mr. Hyatt included the required references to the applications to which he claimed

priority in a section entitled the “cross-reference to related applications” (often styled

“CROSS REFERENCE TO RELATED APPLICATIONS”). E.g., DX2204. In this

section of Mr. Hyatt’s GATT Bubble applications, he consistently denominated his

applications “continuation[s],” “continuation[s] in part,” or more generically,

“continuing applications.” E.g., PTX-1069.17624–27; see Tr. Sept. 19, 2023 AM

(176:12–177:4) (Hyatt). Mr. Hyatt did not designate any of his GATT Bubble

applications as divisionals.

71. Mr. Hyatt designated the following application families as “continuation[s]”: 360

Family (PTX-1069.17624); 410 Family (PTX-826.17232); 450 Family

(PTX-828.17782); 550 Family (DX2204); 600 Family (PTX-003.01380); 800 Family

(DX2110-000003).

72. Mr. Hyatt testified that the 650 Family and 800 Family applications “were really

continuations in part of the 370 [F]amily.” Tr. Sept. 18, 2023 AM (59:20–21) (Hyatt).

73. Mr. Hyatt designated the 500 Family a “continuation” of one application and a

“continuation in part” of another. DX225-000002.

74. Mr. Hyatt labeled his 700 Family applications “continuing application[s]” of two

ancestor applications, Applications No. 06/663,094 (#303) and Application No.

07/289,355 (#321). DX104-000002. The 700 Family applications further identified the

#303 application as a “continuation in part” of Application No. 06/661,649 (#301) and

Application No. 06/662,211 (#302). DX104-000002. During prosecution of

Application No. 08/457,211 (#708) and Application No. 08/456,398 (#717), both

members of the 700 Family that Mr. Hyatt had labeled “continuing application[s],” the

examiner noted that the “continuing application” label was “vague because it can be

interpreted as a continuation or a continuation-in-part.” DX112-000002 (#708

application); DX81-000004 (#717 application). Notably, the examiner did not indicate

that the term “continuing application” could be interpreted to refer to a divisional

application. DX112-000002; DX81-000004. In response, Mr. Hyatt stated that each

40

application was a “continuation.” DX112-000002; DX81-000004. Based on Mr.

Hyatt’s characterizations, the PTO would have treated these applications as

continuations, not divisionals. Tr. Oct. 5, 2023 AM (2379:14–2380:14) (Kunin).

75. The file history record demonstrates that Mr. Hyatt’s GATT Bubble applications are

continuations or continuations-in-part, not divisional applications.

76. Additionally, Mr. Hyatt’s prior representations to this Court, conflicting trial exhibits,

and passivity in the face of prior examiner findings that his applications are not

divisionals, further supports the Court’s conclusion that Mr. Hyatt’s GATT Bubble

applications are not divisional applications.

77. Mr. Hyatt previously represented to this Court that the applications in suit are

“continuation applications.” DX233-000008. In his Proposed Findings of Fact and

Conclusions of Law filed after the first phase of trial, he referred to the applications in

suit as continuations. ECF No. 200 ¶¶ 18, 26, 34, 41. He also described them as

“continuation[s]” in his brief before the Federal Circuit. Hyatt v. Vidal, No. 18-2390,

ECF No. 43 at 19, 22–24 (Fed Cir. Apr. 25, 2019).

78. Mr. Hyatt’s own trial exhibits referred to three of the four applications in

suit—Application No. 08/431,639 (#601), Application No. 08/457,211 (#709), and

Application No. 08/456,398 (#717)—as “continuation[s].” PTX-1585 (#601

application); PTX-1587 (#708 application); PTX-1589 (#717 application). He

identified Application No. 08/472,062 (#524) as a “New Application,” but not a

“divisional.” PTX-1583.

79. In Application No. 08/471,633 (#779), on March 23, 2020, the examiner issued a final

office action in which they responded to Mr. Hyatt’s arguments concerning prosecution

laches. PTX-2250.1725–988. The examiner found that “[n]one of [Mr. Hyatt’s]

pending applications appear to be proper divisions of prior applications.”

PTX-2250.1983. Mr. Hyatt filed two responses but did not dispute the examiner’s

determination that Mr. Hyatt’s applications are not divisionals. PTX-2250-0146–59,

0112–42. Although the Court does not defer to the examiner’s finding, the Court finds

Mr. Hyatt’s reticence in the face of it suggestive that he did not believe his applications

were divisionals and only developed this argument as a litigating position in

preparation for the second phase of trial.

80. Mr. Hyatt’s preliminary amendment practice also supports the Court’s conclusion that

Mr. Hyatt’s GATT Bubble applications are not divisional applications. Mr. Hyatt

testified that he did not file his applications with preliminary amendments because “[i]t

was impossible to file” them in the period between when Rule 129 became final and

the GATT implementation. Tr. Sept. 19, 2023 AM (187:19–24) (Hyatt). As detailed

infra, FOF ¶¶ 91–92, Mr. Hyatt anticipated that he would have more time to file

preliminary amendments before the PTO began examining his GATT Bubble

applications. When the PTO accelerated this timeline, he filed identical preliminary

amendments instead of filing amendments that focused his claims. See infra FOF

41

¶¶ 93–98. However, if Mr. Hyatt’s GATT Bubble applications were divisionals,

preparing his preliminary amendments would not have been difficult because Mr. Hyatt

had already written the claims for his ancestor applications in which the PTO issued

restriction requirements. Mr. Hyatt needed time to write new claims, which indicates

that he was not simply filing divisional applications directed to non-elected species.

81. The Court does not credit Mr. Hyatt’s testimony that his applications were divisionals

because, in addition to conflicting with the file history record and his prior

representations to this Court, it conflicts with his prior deposition testimony. Mr. Hyatt

stated during his deposition that the applications in suit are “continuations.”

DX2165-000095:1–6 (located at ECF No. 338-1). The Court does not credit his

explanation at trial that these statements resulted from a vague recollection made

without the benefit of recollection-refreshing documents or were inadvertent. Tr. Oct.

2, 2023 PM (1806:9–21, 1808:10–19) (Hyatt).

iii. Applications in Suit: Whether Directed to Non-Elected Species

82. Mr. Hyatt’s applications in suit are not directed to non-elected species from his ancestor

applications:

a. Application No. 08/472,062 (#524) is one of four applications in suit.

According to Mr. Hyatt, there are three ancestors to the #524 application:

Application Nos. 06/662,211 (#302), 07/815,644 (#345), and 08/034,627

(#349). See PTX-1834.0003. The #524 application is not directed to a non-

elected species from any of these three ancestor applications. Compare, e.g.,

PTX-002.00760–61 (extant claim 81 in the #524 application, which Mr. Hyatt

alleged is drawn to an invention restricted at claims 1–8 in the #302 application)

with PTX-945.454–55 (restricted claims 1–8 in the #302 application). 24

b. Application No. 08/431,639 (#601) is one of four applications in suit.

According to Mr. Hyatt, there is one ancestor to the #601 application:

Application No. 07/279,592 (#319). See PTX-1836.0003. The #601 application

is not directed to a non-elected species from the #319 application. Compare,

e.g., PTX-003.00849 (extant claim 94 in the #601 application, which Mr. Hyatt

alleged is drawn to an invention restricted at claims 51–57, 71–77, 84–91, 102,

103, and 112–118 in the #319 application) with PTX-1162.0206–34 (restricted

claims 51–57, 71–77, 84–91, 102, 103, and 112–118 in the #319 application). 25

c. Application No. 08/457,211 (#708) is one of four applications in suit.

According to Mr. Hyatt, there are two ancestors to the #708 application:

Application Nos. 06/663,094 (#303) and 07/289,355 (#321). See

24

Claims 1–8 in the #302 application, which the PTO labeled restricted species group “I,” are drawn to an “image

analysis system.” PTX-945.169.

25

Claims 51–57, 71–77, 84–91, 102, 103, and 112–118 in the #319 application, which the PTO labeled restricted

species group “IV,” are drawn to a “shared memory storage accessing.” PTX-1162.0177.

42

PTX-1838.0003. The #708 application is not directed to a non-elected species

from either of these two ancestor applications. Compare, e.g.,

PTX-004.05164–65 (extant claim 503 in the #708 application, which Mr. Hyatt

alleged is drawn to an invention restricted at claims 1–10 and 31–51 in the #321

application) with PTX-1046.18281–83, 18290–94 (restricted claims 1–10 and

31–51 in the #321 application). 26

d. Application No. 08/456,398 (#717) is one of four applications in suit.

According to Mr. Hyatt, there are two ancestors to the #717 application:

Application Nos. 06/663,094 (#303) and 07/289,355 (#321). See

PTX-1838.0003. The #717 application is not directed to a non-elected species

from either of these two ancestor applications. Compare, e.g., PTX-001.05025

(extant claim 129 in the #717 application, which Mr. Hyatt alleged is drawn to

an invention restricted at claims 15, 16, and 18–20 in the #303 application) with

DX261-000007–10 (restricted claims 15, 16, and 18–20 in the #303

application). 27

83. These examples further undermine Mr. Hyatt’s testimony that his GATT Bubble

applications are divisionals drawn to restricted species. They support the Court’s

conclusion that Mr. Hyatt’s GATT Bubble applications are not divisional applications.

4. GATT Transition

84. Mr. Hyatt filed his GATT Bubble applications in the days and weeks leading to the

effective date of the new 20-years-from-earliest-priority-date patent term regime. He

filed most of his applications during the six weeks between the date the PTO finalized

Rule 129, April 25, 1995, and the effective date of the patent term changeover, June 8,

1995. See DX144-000004; DX253-000006–16. Mr. Hyatt filed his GATT Bubble

applications as photocopies of approximately 11 ancestor applications. Tr. Sept. 18,

2023 AM (58:19–23) (Hyatt). Shortly after the changeover, the PTO began rejecting

his GATT Bubble applications. Tr. Sept. 19, 2023 PM (233:20–234:13) (Hyatt). In

response, Mr. Hyatt filed duplicate preliminary amendments in an attempt to delay

examination and stay off rejections. E.g., DX1841 (identical claim sets filed by Mr.

Hyatt in the 700 Family). Around this time, Mr. Hyatt met with Group Director

Nicholas Godici to discuss his applications. DX84-000001–02. During the meeting,

Mr. Hyatt agreed to focus his claims on a single different invention in each application.

DX84-000001–02. Mr. Hyatt made this promise despite lacking a “master plan” for

demarcating his applications. DX2000-69.

26

Claims 1–10 and 31–51 in the #321 application, which the PTO labeled restricted species group, “I,” are drawn to

a “display device and processor.” PTX-1046.18278.

27

Claims 15, 16, and 18–20 in the #303 application, which the PTO labeled restricted species group, “IV,” are drawn

to an “image processing system using image transformation.” PTX-2255.0002.

43

i. Window to File

85. The change to the patent term became law on December 8, 1994. URAA § 532(a)(1).

Mr. Hyatt testified that he did not begin filing his GATT Bubble applications

immediately after the patent term became law because he was waiting for the PTO to

publish final rules implementing the GATT legislation. Tr. Sept. 25, 2023 (922:13–19)

(Hyatt).

86. Four days after the change became law, the PTO published its proposed rule package

to “implement the changes related to patent term.” Changes to Implement 20-Year

Patent Term and Provisional Applications (“Draft Rule”), 59 Fed. Reg. 63951 (Dec.

12, 1994). That rule package included a draft of Rule 129 that permitted an application

to have two submissions “considered on the merits after final rejection” under certain

circumstances. Id. at 63964. Mr. Hyatt, who was “tremendously interested in

technology and IP protection,” Tr. Sept. 18, 2023 PM (131:21–22) (Hyatt), was aware

of the efforts by the Japanese government to secure changes to the U.S. patent system

that culminated in the enactment of the URAA, Tr. Sept. 25, 2023 (917:22–918:5)

(Hyatt); see also Tr. Sept. 25, 2023 (912:22–913:7) (Hyatt). Additionally, Mr. Hyatt

testified that he “reviewed . . . the federal register where it was published after it was

signed.” Tr. Sept. 19, 2023 AM (171:11–16) (Hyatt). Accordingly, the Court concludes

that Mr. Hyatt was aware of the impending patent term changeover and knew of the

proposed rule changes within a reasonable time after they were published.

87. The final Rule 129, issued on April 25, 1995, contained substantively identical

provisions to the proposed Rule 129. Compare Draft Rule, 59 Fed. Reg. at 63964 with

Final Rule, 60 Fed. Reg. at 20226–27.

88. According to Mr. Hyatt, one of the reasons why he waited so long to file his GATT

Bubble applications is that the PTO did not publish its final rules until April 25, 1995.

He testified that it would not have been “practicable” to file his applications earlier. Tr.

Sept. 19, 2023 AM (173:15–22) (Hyatt). As a result, Mr. Hyatt had only “about six

weeks” to file his applications. Tr. Sept. 18, 2023 AM (171:23–172:1) (Hyatt). This

testimony is inconsistent with the file histories of his GATT Bubble applications.

89. Mr. Hyatt started filing GATT Bubble applications as early as April 6, 1995.

DX253-000005. In total, he filed 36 GATT Bubble applications (one of which he later

abandoned) before April 25, 1995. DX253-000005–06. At trial, Mr. Hyatt attempted

to justify this inconsistency with his other testimony by explaining that Application No.

06/849,243 (#310) was about to be issued as a patent and that he needed to file

continuing applications before it was issued or else lose his chain of continuity. Tr. Tr.

Oct. 2, 2023 AM (1692:12–1693:14) (Hyatt). However, several of the applications Mr.

Hyatt filed before April 25, 1995, were unrelated to the #310 application. Tr. Oct. 2,

2023 AM (1693:15–18) (Hyatt); Tr. Oct. 2, 2023 PM (1828:17–1829:24). Mr. Hyatt

was unable to explain why he filed these applications before April 25, 1995.

44

90. Mr. Hyatt filed his applications earlier when he believed it was advantageous for him

to do so, for example, to preserve a chain of continuing applications. His actions belie

his testimony that he needed to wait to file his GATT Bubble applications until after

the PTO finalized Rule 129 or that filing earlier would have been impracticable.

ii. Identical Preliminary Amendments

91. Mr. Hyatt filed his GATT Bubble applications as photocopies of approximately 11

ancestor applications. Tr. Sept. 18, 2023 AM (58:19–23) (Hyatt). Mr. Hyatt’s

photocopied claim sets were placeholders, and he did not intend for the PTO to examine

them. Tr. Sept. 25, 2023 (936:25–937:7) (Hyatt); DX2165-000097:21–98:4. Instead,

he intended to file preliminary amendments later that would differentiate the claim sets

in his applications. Tr. Sept. 25, 2023 (937:14–22) (Hyatt); DX167-000016. Mr. Hyatt

could have filed preliminary amendments contemporaneously with his GATT Bubble

applications but did not do so. Tr. Oct. 4, 2023 PM (2231:23–2233:14) (Morse); see

also Tr. Sept. 19, 2023 AM (186:20–21) (Hyatt).

92. Mr. Hyatt inferred from the PTO’s Official Gazette that he had approximately 20

months to file preliminary amendments before the PTO would begin examining his

GATT Bubble applications. Tr. Sept. 19, 2023 PM (231:13–232:12) (Hyatt). However,

due to the age of Mr. Hyatt’s applications in light of their claimed effective filing dates,

the PTO began examinations within weeks, not the months that Mr. Hyatt had expected.

Tr. Sept 19, 2023 PM (234:7–13) (Hyatt) (testimony that Mr. Hyatt began receiving

final office actions in his applications shortly after filing and before he had submitted

new claim sets); DX152-000002 (petition decision explaining that the PTO considered

“effective filing dates” in determining the order of examination) (emphasis in original).

Although Mr. Hyatt characterized the PTO as examining his applications “out of turn,”

Tr. Sept. 25, 2023 (937:20–22) (Hyatt), Director Godici contemporaneously explained

that the PTO considers the claimed priority date in selecting applications for

examination. DX152-000002. For example, in one application that claimed an October

17, 1984 priority date, Director Godici noted that “[t]he subject matter ha[d] been

before the Office for eleven years,” and therefore, it was “certain[l]y ripe for action.”

DX152-000002.

93. Once the PTO began issuing final office actions on his identical claim sets, Mr. Hyatt

began filing identical preliminary amendments to stay off rejections. E.g., DX120

(Application No. 08/457,211 (#708)). Mr. Hyatt filed identical amendments within his

application families, meaning, his amended applications contained the same claims; the

amendments did not focus his applications on distinct inventions. E.g., DX1841

(documenting 51 identical claim sets filed in the 700 Family between August 11 and

14, 1995); DX1842 (documenting 48 identical claim sets filed in the 500 Family on

August 23, 1995); see also Tr. Sept. 26, 2023 (1028:21–1029:2) (Hyatt) (testimony

concerning identical preliminary amendments in the 700 Family); Tr. Sept. 19, 2023

PM (244:3–10) (Hyatt) (testimony explaining that Mr. Hyatt filed substantially similar

or identical preliminary amendments in his applications).

45

94. Even where Mr. Hyatt’s claim amendments were not identical across applications in a

given application family, they were highly similar. For example, one examiner noted

that Mr. Hyatt added new claims 21–97 in approximately half of the applications in the

700 Family, and that “[t]hese new sets of claims only differed in substance from one

another by which adjective was used in which independent claim to modify the type of

‘information’ that was being ‘generated.’” DX1654-000004. Otherwise, the claims

appeared to be substantially identical.

95. In other applications, Mr. Hyatt filed identical claims back-to-back. E.g.,

DX1311-000002–03 (identical claims 90–91 in Application No. 08/471,704 (#514)).

He also filed identical preliminary amendments months apart. For example, in

Application No. 08/472,062 (#524), claim 16 filed on August 23, 1995, is identical to

claim 90 filed on December 29, 1995. Compare DX222-000003 (August 23, 1995

amendment) with DX223-000002 (December 29, 1995 amendment).

96. Mr. Hyatt did not intend for the PTO to examine these duplicate-amended claim sets.

Tr. Sept. 25, 2023 (944:8–11) (Hyatt). Instead, he amended his applications to avoid

final rejections and buy time to prepare additional preliminary amendments that would

introduce the claims he actually wanted examined. Tr. Sept. 19, 2023 PM (244:4–10)

(Hyatt); Tr. Sept. 25, 2023 (944:5–7, 945:3–8) (Hyatt); see also PTX-004.06653. In

other words, Mr. Hyatt interposed these identical preliminary amendments to delay

examination and prevent the PTO from issuing final rejections before he was ready to

present his claims. He did so by presenting claims that he never intended the PTO to

examine.

97. Mr. Hyatt testified that it was “improper” for the PTO to issue final office actions on

the basis of his original claim sets. Tr. Sept. 25, 2023 (945:3–8) (Hyatt). However, as

the MPEP explained, “[e]ach examiner will give priority to that applicant in his or her

docket, whether amended or new, which has the oldest effective U.S. filing date. Except

as rare circumstances may justify group directors in granting individual exceptions, this

basic policy applies to all applications.” MPEP § 708 (emphasis in original). Director

Godici explained this to Mr. Hyatt contemporaneously with the PTO issuing final office

actions in his unamended GATT Bubble applications. DX152-000002.

98. Mr. Hyatt further testified that he relied on guidance from Vincent Turner and other

PTO personnel that filing identical preliminary amendments would prevent the PTO

from issuing final rejections in his applications. Tr. Sept. 26, 2023 (1029:4–16) (Hyatt).

At the time, Mr. Turner was a PTO employee and, therefore, was prohibited from

providing legal advice to applicants. Tr. Oct. 4, 2023 AM (2157:23–2158:7) (Turner).

Mr. Turner credibly testified that he did not provide Mr. Hyatt with legal advice. Tr.

Oct. 4, 2023 AM (2164:21–23) (Turner). At most, Mr. Turner provided Mr. Hyatt with

generalized “guidance.” Tr. Oct. 4, 2023 AM (2165:4–8) (Turner). Mr. Hyatt indicated

that he relied on this guidance—which Mr. Turner could not confirm he had given—in

formulating his plan to file identical preliminary amendments and thereby forestall

examination. Tr. Sept. 19, 2023 PM (234:16–235:3) (Hyatt); Tr. Oct. 4, 2023 AM

(2169:14–2170:3) (Turner).

46

iii. Director Godici Meeting

99. Mr. Hyatt met with Director Godici on October 24, 1995, to discuss his preliminary

amendment practice. DX84-000001. The parties contest the content of an agreement

that Mr. Hyatt and Director Godici reached during that meeting.

100. Mr. Hyatt’s contemporaneous written meeting description recorded that: “Director

Godici met with the Applicant on October 24, 1995. The Applicant was asked to file

supplemental preliminary amendments that better focused the claims on a different

invention in each application in order to simplify examination and the Applicant

agreed.” DX84-000001–02 (emphasis added).

101. During trial, Mr. Hyatt testified that Director Godici “wanted different inventions, not

single inventions.” Tr. Oct. 2, 2023 AM (1741:21–1742:4) (Hyatt). Mr. Hyatt testified

that Director Godici wanted him to “focus the claims on a different invention, emphasis

on different, not on a singular ‘a.’” Tr. Oct. 2, 2023 AM (1747:5–8) (Hyatt). In other

words, Mr. Hyatt testified that he agreed to focus his applications but only to the extent

that he could still claim multiple inventions in a single application. See Tr. Oct. 2, 2023

AM (1741:24–1742:2) (Hyatt).

102. The Court does not credit Mr. Hyatt’s testimony that his agreement with Director

Godici permitted him to claim multiple inventions in a single application. The Court

finds that the plain meaning of Mr. Hyatt’s contemporaneous written description, read

in context, provides the substantive content for his agreement with Director Godici: a

promise to focus each application on a distinct (i.e., singular) invention.

103. Mr. Hyatt’s testimony is inconsistent with his contemporaneous written meeting

description. Mr. Hyatt used a singular indefinite article (“a”) in his memorialization of

his agreement with Director Godici. DX84-000001. The singular article indicates that

Mr. Hyatt agreed to focus his claims on a singular different invention in each

application. Mr. Hyatt is “very particular in the terms” he uses while prosecuting his

applications. Tr. Sept. 19, 2023 PM (261:12–18). Mr. Hyatt’s attempt to walk back his

use of the singular indefinite article, nearly three decades after he entered that language

in his prosecution file histories, is dubious at best. Cf. 37 C.F.R. § 1.2 (directing

applicants to conduct business with the PTO in writing and wholly discounting oral

promises, stipulations, and understandings as evidence of contested issues).

104. The Court’s reading of the contemporaneous written record is consistent with Mr.

Hyatt’s explanation for the number of GATT Bubble applications he filed. The Court

has found that Mr. Hyatt filed his applications based on the number of inventions

disclosed in his ancestor applications. FOF ¶ 39. For example, Mr. Hyatt testified that

the 700 Family’s specification disclosed “at least 100 inventions,” so he “filed 100

copies of the ancestor application.” Tr. Sept. 18, 2023 AM (58:24–59:3) (Hyatt). He

also represented in a sworn declaration that he “filed about 100 patent applications [in

the 700 Family] in 1995 because an initial count of inventions contained in the [700

Family] specification exceeded 100 inventions.” DX233-000008. In other words, when

47

Mr. Hyatt filed his applications in 1995, he had in mind a one-to-one correspondence

between his inventions and his applications—he filed the number of applications equal

to his number of disclosed inventions. The Court’s interpretation of the record—that

Mr. Hyatt agreed to focus each application on a singular different invention—is

consistent with Mr. Hyatt’s intended one-to-one correspondence. Mr. Hyatt’s current

testimony, in contrast, is inconsistent with his longstanding explanation for the number

of applications he filed because it would require that Mr. Hyatt believed in 1995 that

he had more inventions than he had filed applications. 28

105. Mr. Hyatt’s testimony is inconsistent with a later meeting summary submitted by his

then-attorney, Vincent Turner. On April 30, 1997, Special Patent Examiner (“SPE”)

Michael Razavi called Mr. Turner to discuss Mr. Hyatt’s applications.

DX2203-000002. According to Mr. Turner’s contemporaneous written summary, “SPE

Razavi stated that examination would be simplified if the claims were focused. In

particular, SPE Razavi suggests that the Applicant (1) focus each application on a

single invention; e.g., a topographical system rather than claims directed to many

different systems and (2) indicate the basis in the specification for the particular

claimed invention.” DX2203-000002 (emphasis added). SPE Razavi’s request to Mr.

Turner aligns with the Court’s reading of the contemporaneous written record of the

October 1995 Director Godici meeting.

106. Mr. Hyatt’s testimony is inconsistent with the general context in which Director Godici

asked him to focus his application. For example, on September 28, 1995, approximately

one month before he met with Director Godici, Mr. Hyatt spoke with Examiner Jeffrey

Brier concerning his applications. PTX-002.01101. Examiner Brier “indicated that

some of [Mr. Hyatt’s] applications had claims that were directed to multiple inventions.

In order to simplify the issues, the Applicant agreed to amend the claims to be more

focused.” PTX-002.01101; see also FOF ¶ 10 (identifying issues with Mr. Hyatt

submitting claims directed to multiple inventions as early as 1978). If the issue with

Mr. Hyatt’s applications was that his claims were directed to multiple inventions, then

it is unclear how Mr. Hyatt could resolve that issue and simplify examination except

by focusing each application on a single different invention. Accordingly, the best

interpretation of the record is that Mr. Hyatt promised Director Godici he would do so

shortly after Examiner Brier put him on notice.

107. Given the unfavorable written record, Mr. Hyatt introduced evidence that he relied on

a conversation with Jessica Harrison, an examiner who was then detailed to the MPEP

help desk, in which she relayed that Rule 129(b) permitted him to pursue multiple

28

The Court’s reading would be correct even if Mr. Hyatt’s applications were divisionals drawn to non-elected species

because Mr. Hyatt testified that he filed his applications based on his count of restricted and unclaimed inventions.

Hyatt Resp. 32 (citing Tr. Sept. 18, 2023 PM (124:21–24, 140:1–9) (Hyatt) and Tr. Sept. 19, 2023 AM (172:8–174:5)

(Hyatt)). Every distinct restricted and unclaimed invention should map to a single application in that scenario. The

Court’s interpretation of the agreement with Director Godici is consistent with that intended one-to-one

correspondence. In contrast, Mr. Hyatt’s proffered interpretation would mean he met with Director Godici believing

he had more inventions than he had filed applications, even though the PTO largely had not yet examined his claims

or identified additional distinct species. See PTX-895 (indicating that the PTO issued its first post-GATT restrictions

in Mr. Hyatt’s applications a few days before he met with Director Godici).

48

inventions in a single GATT Bubble application. Tr. Oct. 2, 2023 PM

(1846:19–1847:4) (Harrison); see also Tr. Sept. 19, 2023 AM (207:4–208:11) (Hyatt);

Tr. Oct. 2, 2023 AM (1740:10–23) (Hyatt). Any such conversation occurred in or after

December 1995 and therefore post-dated Mr. Hyatt’s meeting with Director Godici. Tr.

Oct. 2, 2023 PM (1842:9–13) (Harrison). Ms. Harrison was not involved in examining

Mr. Hyatt’s applications and had no personal knowledge of his applications or

examination history. Tr. Oct. 3, 2023 AM (1892:13–1893:7, 1900:2–12) (Harrison).

Accordingly, any such conversation between Mr. Hyatt and Ms. Harrison cannot

explain or clarify the specific agreement he reached with Director Godici at least one

month prior. At best, Mr. Hyatt’s conversation with Ms. Harrison may explain why he

disregarded his agreement with Director Godici. However, Mr. Hyatt did not record his

conversation with Ms. Harrison in writing, and Ms. Harrison credibly testified that she

did not give Mr. Hyatt legal advice. Tr. Oct. 3, 2023 AM (1906:21–1907:4) (Harrison).

iv. Plan to Demarcate

108. Mr. Hyatt admitted he lacked a “master plan” for prosecuting his GATT Bubble

applications. DX2000-69 (admission by Mr. Hyatt); Tr. Oct. 11, 2017 AM

(74:7–74:19) (Morse) (testimony describing Mr. Hyatt’s admission).

109. Although Mr. Hyatt later testified that he had a plan to focus his applications through

preliminary amendments, e.g., Tr. Sept. 19, 2023 PM (240:11–241:3) (Hyatt), Mr.

Hyatt failed to timely prepare his applications for examination, see FOF ¶¶ 91–98,

which undermines his testimony. Mr. Hyatt believed he had many more months to

prepare preliminary amendments than he reasonably should have expected based on

his effective filing dates, see FOF ¶¶ 92, 97, which suggests that when he filed his

applications, he at most intended to develop a plan to file focusing amendments, not

that he had already prepared one. Possessing the diffuse intention to focus applications

in the future is not the same as possessing an operationalizable plan to demarcate them.

And filing dozens of identical preliminary amendments evinces that Mr. Hyatt had

formulated a reactionary plan to delay, not a plan to demarcate. Mr. Hyatt did not have

a plan to demarcate during the GATT transition period.

110. Moreover, as detailed infra, FOF ¶¶ 160–168, Mr. Hyatt failed to abide by his

agreement with Director Godici to focus each of his applications on a single different

invention, and he failed to maintain consistent lines of demarcation between his

applications. Mr. Hyatt also routinely filed amendments that shifted his claims to new

inventions and restarted examination. FOF ¶¶ 122–142. The Court concludes from Mr.

Hyatt’s lack of plan during the GATT transition period, FOF ¶ 109, and his ultimate

failure to demarcate, FOF ¶¶ 122–142, 160–168, that he did not have a plan to

demarcate his applications between 1995 and 2015.

5. Complex Priority Chains

111. Mr. Hyatt’s applications claim priority to a large number of applications and a broad

range of priority dates:

49

a. The 360 Family claims priority to 36 applications, with claimed priority dates

starting December 28, 1970, to August 5, 1994. PTX-1069.17624–27; see also

FOF ¶ 46(a).

b. The 370 Family claims priority to 29 applications, with claimed priority dates

ranging from December 28, 1970, to April 27, 1990. PTX-836.6365–68; see

also FOF ¶ 46(b).

c. The 410 Family claims priority to 34 applications, with claimed priority dates

ranging from December 28, 1970, to April 7, 1986. PTX-826.17232–34; see

also FOF ¶ 46(c).

d. The 450 Family claims priority to 43 applications, with claimed priority dates

ranging from November 24, 1969, to April 6, 1995. DX27-000008–09; see also

FOF ¶ 46(d). Many of those priority claims stem from the 450 Family’s express

priority claim to Application No. 06/504,691 (#193), which incorporated by

reference another 42 applications, including Application No. 04/879,293

(#100), which was filed on November 24, 1969. PTX-828.17782–84.

e. The 500 Family claims priority to 14 applications, with claimed priority dates

ranging from February 14, 1975, to April 6, 1995. PTX-002.00897–98; see also

FOF ¶ 46(e).

f. The 550 Family claims priority to 10 applications, with claimed priority dates

ranging from December 28, 1970, to December 27, 1989. DX158-000007;

DX2204; see also FOF ¶ 46(f).

g. The 600 Family claims priority to 43 applications, with claimed priority dates

ranging from December 28, 1970, to September 4, 1990. DX61-000002–06; see

also FOF ¶ 46(g).

h. The 650 Family claims priority to 34 applications, with claimed priority dates

ranging from December 28, 1970, to May 25, 1989. DX129-000006–07; see

also FOF ¶ 46(h).

i. The 700 Family claims priority to six applications, with claimed priority dates

ranging from June 15, 1983, to December 22, 1988. PTX-001.05093–94; see

also FOF ¶ 46(i).

j. The 800 Family claims priority to 30 applications, with claimed priority dates

ranging from December 28, 1970, to April 27, 1990. PTX-2212.2292–95; see

also FOF ¶ 46(j).

50

k. The 850 Family claims priority to 19 applications, with claimed priority dates

ranging from December 28, 1970, to November 9, 1977. DX196-000008; see

also FOF ¶ 46(k).

112. Mr. Hyatt’s applications overlap in their priority claims. For example, the 360, 370,

410, 600, 650, 800, and 850 Families all claim priority to Application No. 05/101,881

(#101), which Mr. Hyatt filed on December 28, 1970. PTX-1069.17624 (360 Family);

PTX-836.6365 (370 Family); PTX-826.17232 (410 Family); DX61-000003 (600

Family); DX129-000006–07 (650 Family); PTX-2212.2292 (800 Family);

DX196-000008 (850 Family). The #101 application “is identified as a priority parent

in more than half of” Mr. Hyatt’s GATT Bubble applications. Tr. Oct. 4, 2023 PM

(2230:9–17) (Morse). The overlap in Mr. Hyatt’s priority claims between application

families indicates that they include overlapping technologies.

113. The PTO introduced an exhibit visually representing the overlapping nature of Mr.

Hyatt’s applications and their priority claims. DX231. Gregory Morse prepared the

exhibit using data exported from the PTO’s case database, PALM. Tr. Oct. 4, 2023 PM

(2267:21–2268:4) (Morse). Although Mr. Hyatt vociferously disputed the accuracy of

DX231 during his testimony, e.g., Tr. Sept. 21, 2023 (543:20–25) (Hyatt)

(characterizing DX231 as “absolutely false and absolutely horrible”), the Court has

been unable to replicate or confirm any of his claimed errors or deficiencies, e.g., Tr.

Sept. 21, 2023 (544:12–545:7) (Hyatt) (criticizing DX231 for connecting child

applications together even though they are not connected in the exhibit). Consequently,

the Court concludes that DX231 accurately represents the priority claims in Mr. Hyatt’s

applications and, to that extent, is a useful indicator of the complex, overlapping nature

of his priority claims as defined in his specifications.

114. The crux of Mr. Hyatt’s testimony and objections to the PTO’s evidence appears to be

that his priority date entitlements—as opposed to his unvarnished priority date

claims—are the proper objects of judicial inquiry into the reasonableness of his

prosecution conduct. See, e.g., Tr. Sept. 21, 2023 (524:16–19) (Hyatt) (testifying that

“examiners did not have any problems” determining the priority dates to which his

applications were entitled). In several applications, the PTO identified priority dates,

meaning they evaluated his priority claims against his ancestor applications and

determined the effective filing dates to which he was entitled. E.g., PTX-1799.00003.

The priority entitlements alleged by Mr. Hyatt (i.e., the chains of priority to which his

applications are entitled) are orders of magnitude simpler than his priority claims.

115. However, Mr. Hyatt’s complex priority claims burdened the PTO’s examination of his

applications. For example, Mr. Morse credibly testified that the complexity of Mr.

Hyatt’s priority claims caused examiners “trouble identifying the priority date for each

claim to appropriately apply art.” Tr. Oct. 10, 2017 AM (77:9–10) (Morse); Tr. Oct.

10, 2017 PM (23:6–24:1) (Morse). Moreover, the wide range of Mr. Hyatt’s priority

date claims compounded examiners’ difficulties because the rapid progression of

computer technologies over even relatively short periods of time meant that examiners

would need to search dramatically different prior art depending on the applicable

51

priority date. Tr. Oct. 10, 2017 PM (17:1–7) (Morse). The Court credits Mr. Morse’s

testimony that Mr. Hyatt’s complex priority claims impacted the burden on

examination “in terms of identifying written description support” and in “terms of

identifying the correct date for application of prior art.” Tr. Oct. 10, 2017 PM (34:4–7)

(Morse). The file history record demonstrates that examiners routinely engaged in

complicated reviews of dozens of ancestor applications to determine whether Mr. Hyatt

was entitled to his claimed priority dates. See, e.g., PTX-828.17286 (reviewing 42

ancestor applications); PTX-428.00003 (same); PTX-1799.0002–03 (same); see also

PTX-1800.0003 (failing “to find support” for subject matter in ancestor applications

after review); PTX-1809.0002 (same). The fact that the PTO was ultimately able to

determine priority dates in some of Mr. Hyatt’s applications does not mean that the

process of parsing his priority claims, reviewing his ancestor applications, and making

the determinations was trivial. Indeed, Stephen Kunin testified that Mr. Hyatt’s

complex priority claims, combined with his other prosecution conduct, made it

“extremely difficult” for the PTO “to conclude prosecution and examination” of his

applications. Tr. Oct. 13, 2017 AM (13:2–15:11) (Kunin).

116. Additionally, Mr. Hyatt’s testimony concerning his priority claims was not credible.

For example, Mr. Hyatt answered “yes” when asked on direct examination whether “all

it takes to determine that true ancestor relationship [of his applications] is to look at the

applications that are listed before the list of numbers” in the cross-reference to related

applications section of his specifications. Tr. Sept. 21, 2023 (549:14–20) (Hyatt). Mr.

Hyatt then contradicted himself on cross-examination. Tr. Sept. 28, 2023 (1468:3–5)

(Hyatt) (agreeing that “[w]hether [an application] appears before the list, or in the

list, . . . it’s one of [his] [a]ncestor [a]pplications.”).

117. In addition to contradicting himself on cross-examination, Mr. Hyatt also introduced

several exhibits that identified applications as ancestors of his GATT Bubble

applications even though they did not appear “before the list of numbers.” Tr. Sept. 21,

2023 (549:14–20) (Hyatt); compare, e.g., PTX-1830.0003 (identifying Application No.

05/844,765 (#143) as an ancestor of the 360 Family to which Mr. Hyatt claimed

priority) with PTX-1069.17626 (containing the #143 application within “the list of

numbers”). When confronted with these inconsistencies on cross-examination, Mr.

Hyatt became obstinate and, by his evident shift in demeanor and substantive position

based on the identity of his questioner, severely undermined the Court’s faith in the

accuracy of his testimony. Tr. Sept. 28, 2023 (1463:11–1466:25) (Hyatt); see FOF

¶ 247.

118. Mr. Hyatt’s testimony that examiners determining priority dates for his application

families would not consider continuation-in-part applications and would “know to

stop” at the earliest identical specification also is not credible. E.g., Tr. Oct. 2, 2023

AM (1754:18–23) (Hyatt) (discussing the 500 Family). Continuation-in-part

applications can obtain the benefit of filing dates of earlier ancestor applications, so

there is no reason why the PTO would categorically exclude them from consideration.

35 U.S.C. §§ 112, 120; MPEP § 201.11. Mr. Hyatt, in fact, included continuations-in-

part in his priority charts. E.g. PTX-1831.0003 (370 Family). And examiners routinely

52

reviewed his continuation-in-part ancestors for written description support when

determining priority for claims in his GATT Bubble applications. E.g.,

PTX-828.17286.

119. Furthermore, whether a particular patent claim is entitled to the benefit of a particular

filing date is evaluated on a claim-by-claim basis. Tr. Oct. 4, 2023 PM (2229:19–22)

(Morse). Accordingly, different patent claims in a single patent application may be

entitled to the benefit of different filing dates. See, e.g., DX2105-000007 (appeal brief

submitted by Mr. Hyatt in Application No. 08/454,878 (#383) contending that claim

105 has the benefit of a June 4, 1973 priority date while claims 213 and 276 have the

benefit of a December 28, 1970 priority date). There are many instances where Mr.

Hyatt claimed different priority dates within the same application or application family.

E.g., DX2107-000021. Mr. Hyatt’s testimony that examiners would “know to stop” at

the earliest identical specification is inconsistent with his actual priority claims. See Tr.

Oct. 2, 2023 AM (1754:18–23) (Hyatt).

120. Mr. Hyatt testified that he included many priority claims because “they [were]

necessary for the best mode requirement and for the avoidance of prior art in [his]

earlier applications.” Tr. Sept. 28, 2023 (1470:11–16) (Hyatt). This testimony is not

credible because Mr. Hyatt’s application families expressly claim “the benefit of the

filing dates of all of the above-listed applications.” E.g., PTX-1069.17627 (360 Family)

(emphasis added). None of Mr. Hyatt’s applications limit the purpose of the included

priority claims to meeting the best mode requirement or avoiding prior art. Mr. Hyatt

was unable to direct the Court to a single piece of evidence—other than his testimony,

which the Court does not credit—showing he relied on a priority claim for the best

mode requirement and the avoidance of prior art only and not to claim the benefit of an

earlier filing date. Mr. Hyatt included priority claims to claim priority—not solely to

satisfy other requirements.

121. Determining the effective filing date for Mr. Hyatt’s applications is far more

complicated than identifying the earliest identical specification. Examiners must

compare each of Mr. Hyatt’s claims to each application to which he claimed the benefit

of a priority date, including continuations-in-part. Mr. Hyatt’s application families

contained dozens of complex, overlapping priority claims. The volume of claims

burdened examination of Mr. Hyatt’s applications, even though the PTO made priority

date determinations in his applications. Mr. Hyatt’s testimony to the contrary is not

credible because it is contradictory and unsupported by the written record. Further, it

is not helpful because it conflates ostensibly simple priority date entitlements with Mr.

Hyatt’s unquestionably complex and burdensome priority claims.

6. Claim Shifting

122. Mr. Hyatt routinely filed amendments in his GATT Bubble applications that shifted his

claims to new inventions and restarted examination years after he initially filed his

applications. Substantially rewriting claims effectively restarted examination because

it required the PTO to perform a new written description analysis, double patenting

53

analysis, and prior art search. Tr. Oct. 10, 2017 PM (77:4–14, 86:5–88:15) (Morse).

Mr. Hyatt filed such amendments before and after the PTO issued the 2013

Requirements. Mr. Hyatt testified that his amendments did not shift his claimed

inventions and merely narrowed or conformed hi

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