The Federal Circuit’s August 29, 2025 decision in Hyatt v. Stewart brings a long-running saga back to a firm stopping point. Once again, the court affirmed that the United States Patent and Trademark Office may rely on prosecution laches to defeat long-delayed patent applications, even when those applications are pursued through a civil action under 35 U.S.C. §145. At the same time, the court reinforced a distinct but equally important limit: Article III jurisdiction does not extend to claims for which the Board already ruled in the applicant’s favor, absent a concrete showing of injury.
Taken together, the decision underscores two principles that continue to shape post-GATT patent litigation. First, prosecution laches remains a viable, and potent, equitable defense in §145 actions. Second, dissatisfaction with a Board decision cannot be assumed wholesale; standing must be demonstrated claim by claim.
Background and Procedural Posture
Gilbert P. Hyatt began filing patent applications in the early 1970s. In the months leading up to June 8, 1995—the effective date of changes arising from the Uruguay Round Agreements—he filed nearly 400 applications commonly referred to as the “GATT Bubble Applications.” The four applications at issue in this appeal were among that group.
After years of examination, the patent examiner rejected most of the claims in each application. Hyatt appealed to the Board of Patent Appeals and Interferences. In each case, the Board affirmed some rejections and reversed others. Dissatisfied, Hyatt filed four civil actions under §145 in federal district court seeking allowance of all claims.
The PTO asserted affirmative defenses of prosecution laches and invalidity. The district court initially rejected those defenses as to the claims whose rejections had been affirmed by the Board, while concluding that it lacked jurisdiction over claims for which the Board had reversed the examiner. On appeal, the Federal Circuit vacated and remanded, holding that the district court had misapplied the standard for prosecution laches and directing further proceedings to address prejudice.
On remand, the district court conducted a nearly three-week bench trial and issued a detailed decision finding prosecution laches established and entering judgment for the PTO. Hyatt again appealed, challenging both the availability of prosecution laches in a § 145 action and the district court’s application of that doctrine. He also renewed his cross-appeal arguing that the district court had Article III jurisdiction over claims for which the Board had reversed the examiner.
The Federal Circuit affirmed across the board.
Prosecution Laches in §145 Actions
Hyatt’s principal argument was that prosecution laches should not be available as a defense in a §145 action. He contended that the doctrine is inconsistent with the Patent Act and foreclosed by later Supreme Court precedent addressing laches in other contexts.
The panel rejected this challenge as foreclosed by the law-of-the-case doctrine. In its earlier decision, the court had already held explicitly that prosecution laches is available in § 145 actions. That holding controlled the outcome here. The court emphasized that issues decided explicitly, or by necessary implication, continue to govern subsequent stages of the same case.
As a result, Hyatt’s renewed effort to relitigate the doctrinal viability of prosecution laches went nowhere. The court declined to revisit arguments it had already considered and rejected, reaffirming that the PTO may assert prosecution laches in a §145 proceeding when the record supports it.
Abuse of Discretion and the Remand Record
Hyatt next argued that, even if prosecution laches were available, the district court abused its discretion in finding the doctrine satisfied on the facts. His appellate theory focused narrowly on a 1992 Board decision that had rejected a laches-based rejection in a different application. Hyatt argued that this decision justified his prosecution conduct through 2002, when Federal Circuit precedent more clearly recognized prosecution laches in infringement actions.
The Federal Circuit found this argument forfeited. Hyatt had not meaningfully presented the theory to the district court, despite extensive post-trial briefing. As a result, the argument was not preserved for appeal.
The court also made clear that, forfeiture aside, the district court’s findings were supported by a voluminous record. Following a multi-week trial, hundreds of exhibits, and detailed factual findings, the district court concluded that Hyatt’s prosecution delays were unreasonable and prejudicial. Hyatt did not challenge those factual findings on appeal. Given that record, the Federal Circuit saw no abuse of discretion in the judgment for the PTO.
For practitioners, the takeaway is straightforward. Prosecution laches remains intensely fact-driven, and once a district court builds a comprehensive trial record and makes unchallenged findings, overturning that determination on appeal is an uphill climb.
Mootness of Other Defenses
Because prosecution laches was dispositive, the Federal Circuit did not reach the PTO’s alternative defenses of anticipation and lack of written description. Those issues were rendered moot by the laches ruling. The decision thus reinforces that prosecution laches can operate as a complete bar to patent issuance, independent of substantive patentability.
Article III Jurisdiction and the Cross-Appeal
The most conceptually interesting portion of the opinion may be the court’s treatment of Hyatt’s cross-appeal. Hyatt argued that the district court had Article III jurisdiction over all claims presented in the §145 action, including those for which the Board had reversed the examiner’s rejections.
The Federal Circuit disagreed. The court began with first principles: Article III requires a concrete case or controversy, including an injury in fact that is traceable to the challenged conduct and redressable by the court. While Congress may create statutory rights, it cannot dispense with these constitutional requirements.
Section 145 allows an applicant “dissatisfied” with a Board decision to bring a civil action. At the pleading stage, Hyatt’s bare allegation of dissatisfaction may have been sufficient. But standing must persist throughout the litigation. When jurisdiction is later contested, the party invoking federal jurisdiction must come forward with evidence of injury.
Here, Hyatt failed to do so. He did not argue—let alone prove—that he was harmed by the Board’s reversal of the examiner’s rejections. Nor was such harm apparent on the record. A Board reversal does not automatically entitle an applicant to immediate patent issuance; prosecution may continue until the PTO is satisfied that all legal requirements are met.
Absent a concrete injury tied to the Board’s favorable rulings, Hyatt lacked standing to pursue those claims in district court. Accordingly, the district court properly concluded that it lacked Article III jurisdiction over them.
Practical Implications
This decision offers several practical lessons.
First, applicants pursuing very old applications should expect prosecution laches to remain front and center, even in § 145 actions. Long delays, particularly when combined with prejudice to the public or the PTO, continue to pose existential risks to patent rights. Charles Gideon Korrell has observed that this case reinforces how equitable doctrines can still shape outcomes long after statutory timelines have been satisfied.
Second, § 145 actions are not jurisdictionally limitless. Even where an applicant challenges a single Board “decision,” standing must be shown for each set of claims placed before the court. Success before the Board does not automatically confer a justiciable controversy. As Charles Gideon Korrell notes, the Federal Circuit’s insistence on claim-specific standing reflects a broader trend toward tightening jurisdictional boundaries in patent cases.
Third, the opinion highlights the importance of issue preservation. Hyatt’s forfeited argument illustrates how even sophisticated litigants can lose potentially meaningful appellate points by failing to develop them fully in the trial court. Charles Gideon Korrell believes this aspect of the decision serves as a cautionary tale for anyone litigating complex, multi-decade prosecution records.
Conclusion
Hyatt v. Stewart closes another chapter in one of the most protracted patent disputes in modern Federal Circuit history. The court reaffirmed that prosecution laches remains a viable defense in §145 actions and that Article III standing cannot be assumed simply because claims are swept into a civil action.
For applicants, the decision is a reminder that time cuts both ways. Delay may preserve optionality, but it also invites equitable scrutiny. For the PTO, the opinion confirms that prosecution laches remains a meaningful tool in addressing extreme prosecution histories. And for the broader patent community, the case underscores that even extraordinary procedural vehicles like §145 actions are bounded by traditional constitutional limits.