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Applicant’s Unreasonable Delays During Patent Prosecution Can Lead to Prosecution Laches

In Hyatt v. Hirshfeld, No. 2018-2390 (Fed. Cir. June 1, 2021), the Federal Circuit vacated and remanded the district court’s rejection of the PTO’s arguments for prosecution laches. In 1995, Hyatt bulk-filed 381 patent applications during the “GATT Bubble,” each being a photocopy of one of 11 earlier applications. Hyatt’s GATT Bubble applications were atypically long and complex spanning hundreds of pages. Four of those applications were finally rejected. On appeal, the Board affirmed in part and added a § 101 rejection. Hyatt filed a § 145 action in a district court challenging the unpatentability rejections. The district court rejected the PTO’s arguments regarding prosecution laches. The PTO appealed.

As a threshold matter, the Federal Circuit held that the PTO could deny patent issuance and defend rejections on prosecution laches. Then, the Federal Circuit held that the PTO carried its burden of proof by showing that Hyatt delayed the prosecution for 12-28 years through unreasonable prosecution conduct, forcing the PTO to spend more than $10M to administer Hyatt’s claims. The Federal Circuit held that an applicant’s delays exceeding six years raised a presumption of prejudice, including intervening rights. Abusing the patent examination system shifted the burden of proof to Hyatt.

 Sumaia Tabassum also contributed to this article.

© 2021 Finnegan, Henderson, Farabow, Garrett & Dunner, LLPNational Law Review, Volume XI, Number 168
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About this Author

Christina Ji-Hye Yang Patent Litigation Attorney Finnegan Law Firm Washington, DC
Associate

Christina Ji-Hye Yang focuses her practice on patent litigation and client counseling in the areas of biotechnology and pharmaceuticals, with particular emphasis on Abbreviated New Drug Application (ANDA) cases.

Christina is involved in all phases of litigation, including pre-litigation analysis, fact discovery, and expert discovery. She also has experience in Section 337 litigation at the International Trade Commission (ITC) and post-grant proceedings at the Patent Trials and Appeals Board (PTAB), including inter partes reviews (IPRs). Christina has also advised clients in...

202-408-4465
Elizabeth Ferrill Patent Attorney Finnegan Law Firm
Partner

Elizabeth Ferrill is an “undisputed expert on design patents” who is “always updated and enlightening others with her deep knowledge,” “very involved in the design bar,” and “gives her clients an outstanding service” as noted in Intellectual Asset Management Patent 1000. She focuses her practice on all aspects of design patents, including prosecution, counseling, post-grant, and litigation.

Elizabeth counsels clients who hold design patents as well as those accused of infringement. She has experience with design patents related to consumer and industrial products, medical...

202 408 4445
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