On June 27, 2011, the Supreme Court granted certiorari in Hyatt v. Kappos. This means that the Court will review the en banc Federal Circuit decision which held that there are virtually no limits on the new evidence that a patent applicant can introduce in a district court action under 35 USC § 145 ("Civil Action to Obtain a Patent").

I wrote about Hyatt's appeal and the Federal Circuit panel decision last July, and about the Federal Circuit en banc decision last November. Here, I briefly summarize the issues presented to the Supreme Court.

The Questions Presented for Certiorari

The Acting Solicitor General filed a petition for certiorari on behalf of the USPTO. The petition raised two questions:

  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.

On the first issue, the majority opinion of the Federal Circuit en banc decision held that "35 USC § 145 imposes no limitation on an applicant’s right to introduce new evidence before the district court."

On the second issue, the majority opinion of the Federal Circuit en banc decision held that "the district court . . . must make de novo fact findings with respect to factual issues to which the new evidence relates." On the other hand, the court stated that, for issues for which the applicant does not introduce new evidence, "the court reviews the case on the same record presented to the agency and . . . must apply the APA’s substantial evidence standard to Patent Office fact finding.

Judge Newman filed a separate opinion in which she agreed with the majority on the first issue, but not the second issue. She believes that § 145 provides for de novo review on all issues, regardless of whether new evidence is introduced.

Judge Dyk filed a 37-page dissenting opinion which was joined by Judge Gajarsa. Judge Dyk characterized the majority decision as "a remarkable departure from settled principles of administrative law," and would have adopted a standard based on the Administrative Procedures Act and limited new evidence in § 145 actions "to evidence, such as live testimony, that could not be presented to the PTO in the first instance."

How Will The Supreme Court Decide?

Although the Supreme Court has granted certiorari and affirmed patent cases, that outcome is still the exception rather than the rule. While I understand Judge Dyk's concerns from an administrative law perspective, I hope Hyatt—and amici—explain the realities of patent prosecution that make the ability to present new evidence in a district court proceeding such an important aspect of the right to judicial review.