Kappos v. Hyatt

(1) Whether a plaintiff appealing the denial of a patent by the Patent and Trademark Office (PTO) through the use of a civil action in Federal District Court under 35 U.S.C. § 145 may introduce new evidence that was not initially presented to the PTO; and (2) whether factual questions related to the new evidence are to be reviewed de novo or whether the district court must give deference to the PTO's decision.

Mr. Hyatt submitted 117 patent claims to the PTO which were all rejected following his initial submission. He appealed to the Board of Patent Appeals (the Board) which approved some but not all of his claims. He then opted to file a civil action in Federal District Court under § 145 to determine if he was entitled to receive patents for the remainder of his claims pending submission of new evidence.

The U.S. District Court for the District of Columbia sustained the decision of the Board deciding that evidence which was not submitted in the original appeal to the Board was inadmissible. The Court of Appeals determined that although review under section 145 was not strictly confined to the agency record, it was also not reviewed entirely de novo. The Court of Appeals re-heard the case en banc and vacated the judgment of the Board. The Supreme Court granted certiorari to determine whether section 145 imposed any limitations on an applicant’s right to introduce new evidence at the District Court level and whether the standard of review should be de novo, or whether decisions by the PTO should be given greater deference.

Petitioners argue that section 145 should be construed to allow for only limited additional evidence to be presented to the district court. Further, allowing such limited evidence does not justify a complete break from settled principles of agency law, which traditionally provide for deferential review of agency decisions. These decisions are made by experts in the patent field and a de novo standard denies district courts the benefit of the agency’s judgment. Petitioners emphasize the Supreme Court’s recent decision in Microsoft Corp. v. i4i Ltd. requiring ‘clear and convincing evidence’ to invalidate a patent decision made by the PTO.