In a civil action brought pursuant to 35 U.S.C. § 145, new evidence is generally admissible, and the issues that it raises must be reviewed de novo.

Hyatt v. Kappos, No. 2007-1066 (Fed. Cir. Nov. 8, 2010) (en banc).

In an action filed against the Director of the PTO in federal district court pursuant to 35 U.S.C. § 145, an applicant attempted to admit evidence that he failed to present during the examination process. The district court refused to consider the evidence, reasoning that it “need not consider evidence negligently submitted after the end of administrative proceedings.” A divided panel for the Federal Circuit affirmed.

Thereafter, in an en banc decision, the Federal Circuit vacated and remanded the district court’s decision. It held that “the only limitations on the admissibility of evidence applicable to a § 145 proceeding are the limitations imposed by the Federal Rules of Evidence and the Federal Rules of Civil Procedure.” The plain language of § 145, as well as its legislative history, belied the Director’s argument that “Congress intended that only evidence that could not have reasonably been presented to the [PTO] in the first instance is admissible in § 145 proceedings.” Nevertheless, an applicant’s failure to introduce evidence before the PTO may raise questions as to its reliability. Under such circumstances, a district court is justified in giving that evidence less weight.

Moreover, the Federal Circuit explained that when no new evidence is admitted in a § 145 proceeding, the district court’s review is confined to the administrative record. The PTO’s factual findings are to be reviewed under the Administrative Procedure Act’s substantial evidence standard. In contrast, when new evidence is admitted, the district court must consider that evidence, as well as the administrative record. It must then make de novo findings “with respect to factual issues to which the new evidence relates.”

A copy of the opinion can be found here.