The Solicitor General filed a brief opposing review in Hyatt v. Squires, asking the Supreme Court to leave the Federal Circuit’s prosecution laches doctrine undisturbed. The brief points to prior Supreme Court denials in Lemelson Medical, Barr Laboratories, and Personalized Media Communications, which involved challenges to the Federal Circuit’s authority to use prosecution laches to defeat patent rights when applicants complied with statutory deadlines. Gilbert Hyatt filed 381 patent applications in the period before the 1995 GATT amendment changed the patent term. The applications were largely continuations of earlier filings and grew into a very large claim portfolio. USPTO processing used special procedures and included many USPTO-initiated delays. Hyatt did not miss statutory deadlines and later sued to obtain issuance. Lower courts ruled against him using prosecution laches.
"The Solicitor General has now filed the government's brief in opposition in Hyatt v. Squires, No. 25-1049, urging the Supreme Court to leave the Federal Circuit's prosecution laches doctrine undisturbed. The court previously denied parallel cases in: Lemelson Medical, Educational & Research Foundation v. Symbol Technologies, Inc., 537 U.S. 825 (2002), Barr Laboratories, Inc. v. Cancer Research Technology Ltd., 565 U.S. 977 (2011), and Personalized Media Communications, LLC v. Apple Inc., 144 S. Ct. 290 (2023)."
"All three of these cases involved variations on the same theme: a direct challenge to the Federal Circuit's authority to use prosecution laches to defeat patent rights when the applicant has complied with every statutory deadline Congress prescribed. Petitioner Gilbert Hyatt is, in the government's understated description, a "prolific patent filer and litigant." 31 years ago, during the months before the 1995 GATT amendment changed the U.S. patent term from seventeen years from issuance to twenty years from filing, Hyatt filed 381 patent applications, more than any other applicant during what the Federal Circuit has called the "GATT Bubble.""
"Each application was a photocopy of one of eleven earlier filings, each hundreds of pages long and eventually amended to include roughly 300 claims apiece for a total of approximately 115,000 claims across the portfolio. Hyatt's filings sat in the top 0.02% of all applications by claim count per patent. The USPTO ultimately assembled a 12-examiner unit dedicated to processing his portfolio under special procedures (including many USPTO initiated delays), and prosecution of the four applications at issue here extended for decades. But Hyatt never missed a statutory deadline and eventually sued in district court to get his patents issued."
"The district court ruled for the agency on prosecution laches after a three-week bench trial and the Federal Circuit affirmed in August"
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