If You Care About the Patent System, Consider Filing an Amicus Brief in Hyatt

A Federal Circuit panel recently reached a final decision that, if not overturned, will destroy the U.S. patent system, and will ironically impact the most valuable patents disproportionately. The ruling was simple and continues a disturbing and inexplicable trend—a patent issued after more than six years in prosecution is presumed unenforceable as the result of prosecution laches.

The enormity of the problem cannot be understated. The Biden Administration left a historic backlog of patent applications, with almost 840,000 unexamined patent applications pending as of January 2025, and an overall total of 1.2 million pending patent applications. Although the Trump Administration has been able to cut the number of unexamined patent applications to approximately 800,000, the backlog remains historically large. And with no appreciable change in the incoming filing rate and few new examiners hired, we can expect this historic patent backlog to continue to fester. This backlog coupled with the Federal Circuits growing use of prosecution laches creates a perfect storm that will be catastrophic for any applicant or industry that relies on filing continuations—or even RCEs—to obtain the full, fair and justified scope of protection for innovations.

IPWatchdog has learned that Gilbert Hyatt intends to seek en banc review of the Federal Circuit’s prosecution laches doctrine. The issue that will be teed up for potential en banc rehearing by the Federal Circuit is: Whether the defense of “prosecution laches” may bar a claim for issuance of a patent that meets the statutory criteria for issuance under the Patent Act. Fundamentally, Hyatt is likely to ask the entire Federal Circuit to consider the continued viability of this doctrine in the wake of Petrella v. Metro-GoldwynMayer, Inc., 572 U.S. 663 (2014), and SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC, 580 U.S. 328 (2017). His petition for rehearing is due on October 13, which means amicus briefs supporting rehearing are due on or before October 20.

How We Got Here

Fifty years following enactment of the Patent Act of 1952, the Federal Circuit recognized the defense of prosecution laches to claims for patent infringement, holding in Symbol Technologies, Inc. v. Lemelson Med., Educ. & Rsch. Foundation, 277 F.3d 1361 (Fed. Cir. 2002), that unreasonable and unexplained delay in prosecution before the U.S. Patent and Trademark Office (USPTO) could render a patent unenforceable. Symbol’s holding rested on a series of Supreme Court decisions from the 1920s and 1930s applying the doctrine of laches to borrow statutory time-limits for prosecution actions for which the statute was silent as to timing—specifically, actions involving the filing of different types of “continuing applications”. The 1952 Act, however, provided for the timing of the filing of “continuing applications”, requiring that they be filed while the parent application remained pending. This was reinforced by the USPTO Board of Appeals in Ex parte Hyatt (1992). Obviously, the statutory authorization to file continuing applications and the statutorily defined time to file continuing applications suggests the Federal Circuit incorrectly decided Symbol Technologies.

Notwithstanding, the Federal Circuit subsequently extended Symbol’s prosecution laches doctrine to ex parte prosecution, authorizing the USPTO to assert it as a ground of rejection, and in Section 145 actions, where the USPTO could assert it as a defense to a claim for issuance of rejected claims. The latter decision, Hyatt v. Hirshfeld, 998 F.3d 1347 (Fed. Cir. 2021), recast the prosecution laches doctrine as a wide-ranging inquiry focusing not on any specific prosecution action but the entire course of prosecution including all statutory continuing application times, all statutory applicant response times, and all Patent Office delays. It also endorsed a presumption that a delay of more than six years in patent prosecution is “unreasonable, inexcusable, and prejudicial,” such that the application or patent in question is presumptively unenforceable. So, not only did the Federal Circuit not see the error in their ways, but they went further, flipping the burden onto the patent owner to defend what is supposed to be presumed to be an enforceable right, and guaranteeing that the USPTO is issuing and will continue to issue patents that are presumed unenforceable as of the moment the issue fee is paid and the patent right attaches.

The Supreme Court Disagrees

Perhaps unsurprisingly, the Federal Circuit has never attempted to square its prosecution laches doctrine with recent Supreme Court’s decisions that have held laches to be inappropriate where there is a statutorily defined period to act. Essentially, the Supreme Court in two intellectual property decisions—one dealing with copyrights and the other dealing with patents—has held that courts may not wield laches to override Congress’s judgments as to timing, which obviously not only makes sense but is actually what the law requires. See Petrella v. Metro-GoldwynMayer, Inc., 572 U.S. 663 (2014), and SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC, 580 U.S. 328 (2017). Both of these Supreme Court precedential cases hold that laches “is a gap-filling doctrine,” and where Congress prescribes timing obligations, such as with “a statute of limitations, there is no gap to fill.” SCA Hygiene, 580 U.S. at 335.

And just to be clear, there is a statute defining the time within which to file a patent application and there is also a statutorily defined time to respond to any and every action returned to the applicant by the patent owner. You must file a continuing application, for example, while there is a continuous and uninterrupted priority link to the parent application, which necessarily creates both rules and time limitations on when a continuing application may be filed. And if you do not respond to an action taken by the patent examiner within six months the case goes abandoned.

Framing the Arguments

Those who are inclined to enter the fray might consider filing an amicus brief that focuses on one or more of the following points:

• The availability of prosecution laches as doctrine is important question because prosecution laches is increasingly being asserted against patent holders and calling into question the value of patent portfolios. See Sonos v. Google. And a battle of industry giants could soon lead to billion-dollar lifesaving vaccine patents being wiped out because of prosecution laches. See GlaxoSmithKline Biologics SA v. Pfizer, Inc., 24-cv-00512 (D. Del.) (filed April 25, 2024).
• The “six-year presumption” of unreasonable delay and prejudice created by the Federal Circuit sweeps in an enormous number of issued patents, rendering them presumedly unenforceable under the Federal Circuit’s wide-ranging conception of prosecution laches at the time they are issued.
• This presumption of unenforceability functionally places a limit on the number of continuing applications that can be filed even though they are authorized by statute. When the USPTO attempted to do this with the failed claim and continuations rule package in 2007-2008, attempts to limit continuations were struck down and the USPTO remains under an injunction not to limit continuation filings. This would mean the USPTO must continue to issue and charge applicants fees for patents they know to be presumed unenforceable.
• The limited scope of judicial power under the doctrine of laches, as historically conceived and applied.
• The parallels between this case and SCA Hygiene, where the Federal Circuit identically disregarded controlling Supreme Court precedent on laches (Petrella and SCA Hygiene) and was reversed.
• The narrow scope of the laches doctrine applied in the 1920s and 1930s decisions cited by Symbol.
• The wide-ranging doctrine of prosecution laches recognized by the Federal Circuit was not “well established” at the time of the 1952 Act. See generally Minerva Surgical, Inc. v. Hologic, Inc., 594 U.S. 559, 571–72 (2021).
• The conflict between the Federal Circuit’s conception of prosecution laches and historical decisions addressing prosecution conduct like United States v. American Bell Tel. Co., 167 U.S. 224 (1897), and Overland Motor Co. v. Packard Motor Car Co., 274 U.S. 417 (1927).

Time to Get Involved

It is essential for the entire industry to get involved and urge the Federal Circuit to rehear this critically important issue en banc. Amicus briefs are limited to 2,600 words—so while time is short there is still time to act—and must be accompanied by a motion for leave to file. Those interested in filing an amicus brief should request consent for filing from Andrew Grossman (for the appellant) and Peter Ayers ([email protected]).