This case was last updated from PACER on 11/21/2021 at 06:58:50 (UTC).

Hyatt v. Hirshfeld

Case Summary

On November 3, 2021, Gilbert P. Hyatt (“Plaintiff”), represented by Mark Wendell DeLaquil of Baker & Hostetler LLP, filed an intellectual property lawsuit against Andrew Hirshfeld for performing functions and duties under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (“Defendant”). Plaintiff filed suit seeking declaratory relief among other relief for the alleged non-issuance of the United States Patent to be obtained by Plaintiff. This case was filed in the United States District Court in the Eastern District of Virginia. 

 

This is an action under the Patent Act, 35 U.S.C. § 145, to obtain a patent on patent application serial number 08/460,768 (Dkt. #475). Mr. Hyatt brings this civil action under 35 U.S.C. § 145 to obtain de novo consideration of his entitlement to a patent. 

 

In the complaint, Plaintiff has alleged that, “Rather than examine Mr. Hyatt’s applications in good faith, the PTO has engaged in an unprecedented decades-long campaign to prevent Mr. Hyatt from obtaining further patents on his inventions. That campaign included placing his applications in an administrative purgatory that one federal judge referred to as “never-never land,” ignoring applications until all potential terms on them expired, misrepresenting the PTO’s intent to act on Mr. Hyatt’s applications to federal court, “recycling” his applications when examiner rejections were reversed by administrative appeals, pulling allowed applications from issuance, and even representing in federal court that it intended to reject Mr. Hyatt’s applications.”

 

Plaintiff then alleged that, “The PTO rejected Subject Claims 45 and 84 for alleged lack of written description within the meaning of pre-AIA 35 U.S.C. § 112, first paragraph” and “The rejections of Subject Claims 45 and 84 under pre-AIA 35 U.S.C. § 112, for alleged lack of written description under pre-AIA 35 U.S.C. § 112, first paragraph, are erroneous.”

 

Plaintiff further alleged that, “The PTO rejected the Subject Claims and held the ’768 Application entirely forfeited under the equitable doctrine of prosecution laches” and “The prosecution laches rejection is erroneous because the PTO failed to warn Mr. Hyatt in advance of any specific actions or inaction of the risk of forfeiture of his rights under the Patent Act in or as to the ’768 Application and failed to warn Mr. Hyatt of what specific actions he should take or not take to avoid forfeiture.”

 

Similar allegations have been made by Plaintiff for the rejection of the Subject Claims in the Patent under “The Undue Multiplicity Rejections”, “The Obviousness Rejections” and “Derivative Objections”. In each of these allegations, Plaintiff has alleged the rejection of the Subject Claims to be erroneous. 

 

There is one claim of relief laid down by Plaintiff for the issuance of a patent by Defendant. 

 

In its prayer for relief, Plaintiff has requested the court to pass a decree that Mr. Hyatt is entitled to receive a patent for the ’768 Application on the Subject Claims; a decree authorizing the Director of the United States Patent and Trademark Office to issue a patent for the subject matter claimed in the Subject Claims of the ’768 Application; a decree that the derivative objections are unenforceable; and any other relief the court deems just and proper. 

 

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Case Details Parties Documents Dockets

 

Case Details

  • Case Number:

    1:21-CV-01226

  • Filing Date:

    11/03/2021

  • Case Status:

    Pending - Other Pending

  • Case Type:

    Intellectual Property - Patent

Judge Details

Presiding Judge

Michael S Nachmanoff

Referral Judge

Ivan D. Davis

 

Party Details

Plaintiff

Gilbert P. Hyatt

Defendant

Andrew Hirshfeld

Attorney/Law Firm Details

Plaintiff Attorney

Mark Wendell DeLaquil

Attorney at Baker & Hostetler LLP

1050 Connecticut Ave Nw, Suite 1100

Washington, DC 20036

 

Court Documents

#1

(#1) Complaint ( Filing fee $ 402, receipt number AVAEDC-8082427.), filed by Gilbert P. Hyatt. (Attachments: #1 Civil Cover Sheet)(DeLaquil, Mark) (Entered: 11/03/2021)

1 #1

Civil Cover Sheet

#2

(#2) Proposed Summons to the Attorney General of the United States by Gilbert P. Hyatt. (DeLaquil, Mark) (Entered: 11/03/2021)

#3

(#3) Proposed Summons to the Director of the U.S. Patent and Trademark Office by Gilbert P. Hyatt. (DeLaquil, Mark) (Entered: 11/03/2021)

#4

(#4) Proposed Summons to the U.S. Attorney for the EDVA by Gilbert P. Hyatt. (DeLaquil, Mark) (Entered: 11/03/2021)

#5

(#5) Report on the filing or determination of an action . by Gilbert P. Hyatt (Proposed AO 120 Form) (DeLaquil, Mark) Modified on 11/4/2021 (nneb, ). (Entered: 11/03/2021)

#6

(#6) Summons Issued as to Andrew Hirshfeld, U.S. Attorney and U.S. Attorney General NOTICE TO ATTORNEY: Please remove the headers and print two duplexed copies of the electronically issued summons for each Defendant. Please serve one copy of the summons and a copy of the Complaint upon each Defendant. Please ensure that your process server returns the service copy (executed or unexecuted) to your attention and electronically file it using the filing events, Summons Returned Executed or Summons Returned Unexecuted. (Attachments: #1 Notice to Attorney)(nneb) (Entered: 11/04/2021)

6 #1

Notice to Attorney

 

Docket Entries

  • 11/05/2021
  • DocketCase Reassigned to District Judge Michael S Nachmanoff. District Judge Anthony J Trenga no longer assigned to the case. (jlan) (Entered: 11/05/2021)

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  • 11/04/2021
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  • Docket(#6) Summons Issued as to Andrew Hirshfeld, U.S. Attorney and U.S. Attorney General NOTICE TO ATTORNEY: Please remove the headers and print two duplexed copies of the electronically issued summons for each Defendant. Please serve one copy of the summons and a copy of the Complaint upon each Defendant. Please ensure that your process server returns the service copy (executed or unexecuted) to your attention and electronically file it using the filing events, Summons Returned Executed or Summons Returned Unexecuted. (Attachments: #1 Notice to Attorney)(nneb) (Entered: 11/04/2021)

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  • 11/03/2021
  • DocketInitial Case Assignment to District Judge Claude M. Hilton and Magistrate Judge Theresa Carroll Buchanan. (nneb) (Entered: 11/04/2021)

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  • 11/03/2021
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  • Docket(#5) Report on the filing or determination of an action . by Gilbert P. Hyatt (Proposed AO 120 Form) (DeLaquil, Mark) Modified on 11/4/2021 (nneb, ). (Entered: 11/03/2021)

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  • 11/03/2021
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  • Docket(#4) Proposed Summons to the U.S. Attorney for the EDVA by Gilbert P. Hyatt. (DeLaquil, Mark) (Entered: 11/03/2021)

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  • 11/03/2021
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  • Docket(#3) Proposed Summons to the Director of the U.S. Patent and Trademark Office by Gilbert P. Hyatt. (DeLaquil, Mark) (Entered: 11/03/2021)

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  • 11/03/2021
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  • Docket(#2) Proposed Summons to the Attorney General of the United States by Gilbert P. Hyatt. (DeLaquil, Mark) (Entered: 11/03/2021)

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  • 11/03/2021
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  • Docket(#1) Complaint ( Filing fee $ 402, receipt number AVAEDC-8082427.), filed by Gilbert P. Hyatt. (Attachments: #1 Civil Cover Sheet)(DeLaquil, Mark) (Entered: 11/03/2021)

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