The U.S. Court of Appeals for the Federal Circuit recently considered whether evidence not introduced during proceedings at the U.S. Patent and Trademark Office (USPTO) could be considered by a district court in a 35 U.S.C. §145 action. The Court held that such actions are not truly de novo. Rather, restrictions on the introduction of new evidence should be considered in light of the patentee’s conduct before the PTO. Hyatt v. Doll, Case No. 07-1066 (Fed. Cir. Aug. 11, 2009) (Michel, C. J.) (Moore, J., dissenting).

Hyatt, a registered patent agent, prosecuted his own patent application dealing with computer and software technology. The application consisted of 117 claims, a 238-page specification and 40 pages of drawings. The patent examiner rejected all 117 of Hyatt’s claims for, inter alia, a lack of adequate written description. Hyatt chose not to disclose to the Board of Patent Appeals and Interferences (Board) or the examiner the particular sections in the specification that dealt with particular limitations. The Board affirmed most of the examiner’s rejections. After Hyatt’s request for rehearing was denied, he filed suit in the U.S. District Court for the District of Columbia under 35 U.S.C. §145. Shortly thereafter, the USPTO filed a motion for summary judgment which Hyatt opposed. In support of his opposition, Hyatt proffered his own declaration and his request for rehearing before the Board. The USPTO objected to the declaration on the ground that Hyatt failed to submit it before the Board in a timely manner. The court agreed, finding that Hyatt had been negligent in failing to submit the declaration to the examiner or the Board. The court granted the USPTO’s motion for summary judgment based solely on the record before the Board. Hyatt appealed.

The Federal Circuit agreed with the D.C. district court’s decision to exclude the declaration offered by Hyatt. After tracing the history of §145 actions, the Court determined that the Administrative Procedures Act (APA) limits evidence in §145 actions. Thus, the Court concluded that a §145 trial is not truly de novo. Further, the Court found that the negligence standard (adopted by some judges) inappropriately implied a duty where the submission of information often is up to the judgment of the patentee.

Instead of the existing negligence standard, the Federal Circuit focused on the “pertinent factors” concerning whether new evidence should be admitted. Here, ostensibly, the pertinent factors included Hyatt’s failure to provide information sought by the examiner, his failure to cooperate with the USPTO, his willful decision to “keep the PTO in the dark” and his lack of an acceptable excuse. While focusing on these case-specific factors, the Court explicitly decided to “express no opinion as to admissibility of evidence in … factual scenarios that may arise in the future.” Instead, the Court held that whether or not new evidence should be permitted must be answered in light of the patentee’s actions before the USPTO.