Hyatt v. Stewart: Why Petrella and SCA Hygiene Don't Save Long-Delayed Patent Prosecutions

"The Federal Circuit's new opinion in Hyatt v. Stewart affirms a bench-trial judgment that the USPTO may invoke prosecution laches to defeat four of Gilbert Hyatt's pre-GATT civil actions under 35 U.S.C. § 145. The panel treated the availability of prosecution laches in §145 as settled by Hyatt v. Hirshfeld ("Hyatt I"), 998 F.3d 1347 (Fed. Cir. 2021), and rejected Hyatt's renewed argument that the Supreme Court's recent decisions on laches (Petrella and SCA Hygiene) foreclose an equitable time-bar in patent-issuance litigation."

"But neither Hyatt I nor this new Hyatt decision dug deeply into the question of whether §145 actions permit a prosecution-laches defense after Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U.S. 663 (2014), and SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC, 580 U.S. 328 (2017). Those decisions restrict laches laches to "gap-filling" situations where no statute of limitations is available."

"As I explain below, I think Hyatt loses this one because there is no statute of limitations governing the overall patent prosecution timeline. Now to be clear, I think the situation should be different for post-URAA patents whose term is measured as 20 years from the application filing date. That 20-year term creates the very statute of limitations that obviates the need for laches."

The Federal Circuit affirmed that the USPTO may invoke prosecution laches to bar four pre-GATT §145 civil actions by Gilbert Hyatt. The court relied on Hyatt v. Hirshfeld (Hyatt I) and rejected arguments that Supreme Court decisions in Petrella and SCA Hygiene foreclose an equitable time-bar in patent-issuance litigation. The district court's prejudice findings were affirmed and Hyatt's cross-appeal was dismissed for lack of Article III injury regarding claims reversed by the Board. Uncertainty remains about prosecution laches' availability after Petrella/SCA Hygiene, and en banc review may revisit reliance on the Symbol line. Post-URAA patents face a 20-year term that creates a statutory temporal limit reducing the need for laches.

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