Hyatt v. Kappos, 625 F.3d 1320 (Fed. Cir. 2010), cert. granted, slip op. (U.S. June 27, 2011) (No. 10-1219)

Yesterday the Supreme Court agreed to consider the role of new evidence in an appeal from a determination by the USPTO that certain technology is not patentable.

When the USPTO denies an application for a patent, the applicant may ask a federal district court to review that decision in a civil suit (under 35 U.S.C. § 145) or may choose to appeal the decision directly to the Federal Circuit (under 35 U.S.C. § 141). In a section 145 action at the district court, the applicant may—in certain circumstances—introduce new evidence to support its patent request.

USPTO Director David Kappos requested that the Court take this case after the Federal Circuit ruled (en banc) that patent applicants suing the USPTO in a section 145 civil suit are entitled to introduce new evidence in the district court that could have been (but was not) presented during the agency proceedings. (Read the en banc opinion here.) Importantly, the court also held that the district court must allow new evidence and that factual determinations affected by the new evidence must be decided de novo, even if the USPTO already made that factual determination.

This case presents important questions about the appropriate level of deference that should be given to the agency’s process and the scope of the subsequent civil suit. Section 145 itself is silent on these points.

The questions the Director presented to the Supreme Court are:

1. Whether the plaintiff in a Section 145 action may introduce new evidence that could have been presented to the agency in the first instance.

2. Whether, when new evidence is introduced under Section 145, the district court may decide de novo the factual questions to which the evidence pertains, without giving deference to the prior decision of the PTO.

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