Troy v. Samson Manuf. Co., 758 F.3d 1322 (Fed. Cir. July 11, 2014) (Prost, Bryson, MOORE) (D. Mass.: Young) (3 of 5 stars)

Federal Circuit vacates judgment in a section 146 review of an interference. The district court refused to consider the junior party’s new evidence of reduction to practice in July 2004 because the issue was not raised in the PTO—only a different, earlier date had been previously alleged. 

That refusal was incorrect under Hyatt v. Kappos, 132 S. Ct. 1690 (2012), which held that a party may present any new evidence in a section 145 proceeding that is not barred by the Federal Rules of Evidence or Civil Procedure. Hyatt’s holding applied equally to new evidence on “new issues” not raised at the PTO: “Introducing new evidence on a new issue in a civil action is not barred by any Federal Rule of Evidence or Federal Rule of Civil Procedure.” Slip op. at 6. Federal Circuit precedent suggesting such evidence was inadmissible “is no longer viable following the Supreme Court’s Hyatt decision.” Id. Moreover, Hyatt applied equally to section 145 and 146 proceedings. Both sections began as a single provision in the 1839 Patent Act, and, after they were broken up, they still contained parallel language. In fact, Section 146 is more explicit that new evidence is permissible because it does not require the PTO record to be used at all, thus “contemplating a fresh start in the district court.” Id. at 10. No Supreme Court precedent required treating sections 145 and 146 differently—Morgan v. Daniels, 153 U.S. 120 (1894), dealt with the district court’s standard of review when it used the same evidence as the PTO, not whether it could consider new evidence.