Gideon Korrell Analyzes Hyatt v. Stewart and § 145’s Article III Limits
The Federal Circuit’s August 29, 2025, decision in Hyatt v. Stewart finally brings a very long patent dispute to an end. The court confirmed, once again, that the United States Patent and Trademark Office (USPTO) can use prosecution laches to block patent applications that have been delayed for many years. This is true even when an applicant files a civil action under 35 U.S.C. § 145. At the same time, the court made clear that Article III of the Constitution limits which claims a federal court can hear, especially when the Patent Trial and Appeal Board has already ruled in the applicant’s favor.
As Gideon Korrell explains, the decision highlights two important rules that still shape older patent cases. First, prosecution laches remains a strong defense in § 145 actions. Second, an applicant must show real harm for each claim to stay in federal court.
Background and Procedural History
Gilbert P. Hyatt began filing patent applications in the early 1970s. Just before June 8, 1995, the date when major international patent law changes took effect, he filed nearly 400 applications. These are often called the “GATT Bubble Applications.” The four applications involved in this case were part of that group.
After many years of examination, patent examiners rejected most of the claims. Hyatt appealed those rejections to the Board of Patent Appeals and Interferences. The Board agreed with some rejections and reversed others. Unsatisfied, Hyatt filed four civil actions under § 145 in the federal district court, asking the court to allow all claims.
The USPTO responded by raising defenses, including prosecution laches and invalidity. After earlier appeals and a remand, the district court held a long bench trial and ruled that prosecution laches applied. Hyatt appealed again, challenging both the use of prosecution laches and the court’s ruling on jurisdiction. The Federal Circuit affirmed the district court in full.
Prosecution Laches Remains Available in § 145 Actions
Hyatt argued that prosecution laches should not apply in § 145 cases. He claimed the doctrine conflicted with the Patent Act and later Supreme Court decisions on laches.
The Federal Circuit rejected this argument. The court explained that it had already decided this issue in an earlier appeal. Under the law-of-the-case doctrine, that earlier ruling still controlled. Hyatt could not reopen the same debate.
The takeaway, as Gideon Korrell has noted, is straightforward: prosecution laches is still available in § 145 actions when the facts support it.
Deference to the District Court’s Fact-Finding
Hyatt also argued that the district court made a mistake in finding prosecution laches based on the facts. He pointed to a 1992 Board decision in another application where laches had not been applied, claiming it justified his conduct.
The Federal Circuit found that this argument was not properly raised in the district court and was therefore forfeited. More importantly, the court stressed the strength of the trial record. After weeks of testimony and many exhibits, the district court found Hyatt’s delays unreasonable and harmful. Hyatt did not challenge those factual findings on appeal.
Once a district court builds a detailed record, reversing a prosecution laches ruling becomes very difficult.
Article III Standing Is Claim-Specific
The most important legal issue in the case involved Article III jurisdiction. Hyatt argued that the district court had authority over all claims in the § 145 action, including claims the Board had already ruled in his favor.
The Federal Circuit disagreed. Article III requires a real injury that a court can fix. While § 145 allows a dissatisfied applicant to sue, that does not remove constitutional limits.
Here, Hyatt did not show that he was harmed by the Board’s favorable rulings. A Board reversal does not automatically mean a patent will issue. Without proof of injury, the court had no jurisdiction over those claims.
Practical Takeaways
Hyatt v. Stewart offers several clear lessons:
Prosecution laches is still a powerful defense, even in § 145 actions.
Standing must be shown for each claim, not assumed as a group.
Arguments must be preserved early, especially in long and complex cases.
As Gideon Korrell’s analysis reflects, the decision confirms that § 145 actions are not limitless. Even unusual patent procedures are constrained by equity and the Constitution. Long delays may keep options open, but they also invite final and binding consequences.
