Federal Circuit Upholds Prosecution Laches in Ruling Against Gilbert Hyatt

In Hyatt v. Stewart, Nos. 2018-2390 et al. (Fed. Cir. Aug. 29, 2025), the Federal Circuit affirmed the district court’s judgment for the PTO, holding that prosecution laches barred Gilbert Hyatt’s claims in four long-pending patent applications.

In the early 1970s, Hyatt filed nearly 400 patent applications, four of which are at issue. In each, the examiner rejected most claims, Hyatt appealed to the Board, and the Board affirmed rejections of certain claims. Hyatt later filed four actions under 35 U.S.C. § 145, seeking allowance of all claims. After the district court ruled in Hyatt’s favor, the PTO appealed, arguing that prosecution laches prevented issuance of Hyatt’s pending claims, and Hyatt cross-appealed, raising an Article III jurisdiction issue. The Federal Circuit remanded the prosecution laches issue and held Hyatt’s cross-appeals in abeyance.

On remand, the district court found Hyatt’s delays in prosecution unreasonable and prejudicial, warranting judgment for the PTO on prosecution laches. Hyatt appealed, and the remanded actions were consolidated with the appeals held in abeyance.

On appeal, Hyatt argued that prosecution laches should not apply in § 145 actions, which the Federal Circuit rejected under the law-of-the-case doctrine because it had already considered and rejected the same arguments in Hyatt v. Hirshfeld, 998 F.3d 1347 (Fed. Cir. 2021).  Hyatt also argued that his prosecution delays were justified by a 1992 Board Decision on one of his applications that reversed an examiner rejection based on prosecution laches. The court found that this argument had been forfeited because Hyatt did not raise it before the district court.

The Federal Circuit also affirmed the district court’s determination that it lacked Article III jurisdiction over certain pending claims because Hyatt failed to establish an injury in fact.  The Court concluded that Hyatt’s “bare allegation of dissatisfaction with the Board’s decision” was insufficient to establish Article III jurisdiction beyond the pleading stage.