In Chief Judge Rader’s first en banc case as chief judge of the U.S. Court of Appeals for the Federal Circuit, the Court will consider the scope of admissible evidence in §145 proceedings. Hyatt v. Kappos, Case No. 07-1066 (Fed. Cir. February 17, 2010).

In granting the rehearing en banc, the Court vacated the three-judge panel’s August 11, 2009 opinion and specifically requested briefing on three items: the Administrative Procedure Act’s relationship to §145 proceedings, whether §145 provides for a de novo proceeding and what limitations exist on the presentation of new evidence before in a §145 proceeding.

Plaintiff-appellant Gilbert P. Hyatt appealed to the Court, en banc, following an adverse ruling from the three-judge panel on August 11, 2009. Hyatt v. Doll, (see IP Update, Vol. 12, No. 8 ). In that opinion, the Court affirmed the district court’s grant of summary judgment in favor of the U.S. Patent and Trademark Office (USPTO). The district court’s grant of summary judgment was a direct result of the court’s decision to exclude a declaration because it was not submitted to the Board of Patent Appeals and Interferences (BPAI or the Board) during prosecution. The initial panel decision sidestepped the question of what standard governs admissibility of evidence in a §145 action, holding only that §145 actions are not truly de novo because of the requirements of the Administrative Procedures Act (APA). The panel explicitly “express[ed] no opinion as to admissibility of evidence in … factual scenarios that may arise in the future,” holding only that whether or not new evidence should be permitted must be answered in light of the patentee’s actions before the USPTO.