Famed inventor vindicated in patent office suit

Widely recognized for his achievements in computer technology, inventor Gilbert P. Hyatt received nearly 75 patents between 1970 and 1997. But then the Patent and Trademark Office (PTO) stopped awarding him patents, instead blocking action on his pending applications. When Hyatt sued to compel the issuance of three of the patents, the PTO sought to use the case as a vehicle to kill all of his pending applications through a finding of “prosecution laches.”

Subsequently, Hyatt retained BakerHostetler to assist in what many considered to be a lost cause. We developed an aggressive strategy: turn the tables on the PTO by showing that it had engaged in abusive conduct and therefore was not entitled to equitable relief. After extensive discovery and four bench trials, the U.S. District Court for the District of Columbia ordered the PTO to issue Hyatt three patents, finding the agency’s treatment of the inventor “somewhere between vexing and outright galling.”

Hyatt also turned to our attorneys to obtain review of the Office of Management & Budget’s decision to deny a Paperwork Reduction Act (PRA) petition challenging PTO regulations. Our team won a reversal of the district court’s dismissal in the U.S. Court of Appeals for the Ninth Circuit, resulting in the first decision ever to establish a successful route to enforce the PRA in court.