"Ruling that the U.S. Patent and Trademark Office's (USPTO's) affirmative defense was available in Hyatt's civil action to obtain patent rights under 35 U.S.C. § 145 under the law of the case, the Federal Circuit also rejected arguments that federal jurisdiction under Section 145 extended to the entirety of the Board's decision, including parts of those rulings in which the Board reversed examiner rejections."
"While the USPTO's argument that Hyatt engaged in unreasonable delay in prosecuting his patent applications was dismissed by the district court, the Federal Circuit found in Hyatt v. Hirshfeld (2021, Hyatt I) that the Office had satisfied its burden in proving prosecution laches, the same conclusion that the district court "[took] no pleasure" in reaching on remand after finding that "the complete trial record require[s] a singular result-judgment for the PTO.""
The Federal Circuit affirmed the D.C. district court's remand ruling that inventor Gil Hyatt's efforts to obtain patent rights from four 1995 applications were barred by prosecution laches. The court held that the USPTO's affirmative defense of prosecution laches was available in Hyatt's civil action under 35 U.S.C. § 145 under the law of the case. The Federal Circuit rejected arguments that Section 145 jurisdiction extended to the entirety of the Board's decision, excluding portions where the Board reversed examiner rejections. Hyatt I previously found the Office satisfied its burden proving prosecution laches, leading to judgment for the PTO on remand.
Read at IPWatchdog.com | Patents & Intellectual Property Law
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