Kappos v. Hyatt

A patent applicant’s ability to introduce new evidence in a civil 35 U.S.C. § 145 claim is limited only by the Federal Rules of Evidence (FRE) and the Federal Rules of Civil Procedure (FRCP). The district court is to review new evidence concerning a disputed question of fact de novo taking into account the administrative record of the Patent and Trade Office (PTO) as well as the new evidence.

Respondent 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) under 35 U.S.C. § 134 which approved some but not all of his claims. He then opted to file a civil action under § 145 to determine if he was entitled to receive patents for the remainder of his claims pending submission of new evidence. The trial court sustained the Board’s decision that evidence which was not submitted in the original appeal to the Board was inadmissible and limited its review to the administrative record giving deference to the PTO’s factual findings. The Court of Appeals for the Federal Circuit determined that review under § 145 was not strictly confined to the agency record, and that new evidence introduced would be subject only to the limitations of the FRE and the FRCP and would be reviewed entirely de novo. The Court of Appeals re-heard the case en banc and vacated the judgment of the Board.

The Supreme Court affirmed the Court of Appeals and held that Respondent’s ability to introduce new evidence in a § 145 claim was only limited by the FRE and the FRCP, and that if new evidence was presented, the district court must review the new evidence as well as the administrative record of the PTO de novo. The Court reasoned that § 145 did not impose unique evidentiary requirements in district court nor did it establish a heightened standard of review. The Court rejected the argument that principles of administrative law impose a deferential review of evidence in such cases, and determined that where new evidence is submitted the district court acts as a fact finder and should review de novo. The Court noted that Butterworth v. U.S. ex rel. Hoe guided their determination that a district court is not limited to considering only new evidence that could have been presented to the PTO and may instead consider all competent evidence.