I discussed inventor Gilbert Hyatt and his on-going litigation with the U.S. Patent and Trademark Office (“USPTO”) regarding his substantial patent portfolio in my Aug. 11, 2016, blog post. He is the inventor of a single-chip microcomputer in the 1960s and reportedly licensed his invention for more than $150 million. He is the named inventor on at least 70 patents.

Mr. Hyatt apparently filed hundreds of patent applications prior to the change in the law that occurred in 1995 that limited the term of most patents to 20 years from the filing date of a patent application. The USPTO suspended the prosecution of those patents, so many of the applications remained pending for several years.

Ultimately, several of the applications were rejected, so Mr. Hyatt had to sue under 35 U.S.C. § 145 to try to obtain a court order to overturn those rejections.

The case progressed for many years until a district court judge issued two favorable decisions for Mr. Hyatt in Hyatt v. Iancu ("Hyatt Merits"), 332 F. Supp. 3d 83 (D.D.C. 2018) and Hyatt v. Iancu ("Hyatt Latches"), 332 F. Supp. 3d 113 (D.D.C. 2018). Mr. Hyatt also won a bench trial in which the Court ordered the USPTO to issue a patent covering some, but not all, of the claims of his patents. See Hyatt Merits, 332 F. Supp. 3d. at 112-13.

Mr. Hyatt also obtained a partial award of his attorneys’ fees through the Equal Access to Justice Act as a prevailing party to the original litigation. See 28 U.S.C. § 2412(b).

Unfortunately, Mr. Hyatt’s victory was reversed by the U.S. Court of Appeals for the Federal Circuit on June 1, 2021. See Hyatt v. Hirshfeld, 998 F.3d 1347, 1368 (Fed. Cir. 2021). The Federal Circuit also vacated the award of attorney’s fees on Oct. 12, 2021.