The Court vacated and remanded the district court’s decision affirming the order of the Board of Patent Appeals and Interferences (Board) cancelling all claims of Stephen Troy’s U.S. Patent No. 7,216,451. In affirming the Board’s order, the district court refused to consider an affidavit and deposition submitted by Troy as evidence of reduction to practice on the basis that the evidence was not previously presented to the Board. On appeal, the Federal Circuit found the district court’s decision was inconsistent with Supreme Court precedent in Kappos v. Hyatt, 132 S. Ct. 1690, 1700-01 (2012). “Based on the Supreme Court’s holding in Hyatt that there are no limits on the admissibility of evidence in such civil actions except those in the Federal Rules of Evidence and the Federal Rules of Civil Procedure, we conclude that new evidence on new issues is admissible in such proceedings.” “We find it impossible to reconcile the limitation on evidence that Samson and the PTO seek with the Supreme Court’s unequivocal language, analysis, and holding inHyatt.” “Turning to the case before us, we vacate the district court’s decision and remand with instructions to consider the new evidence and arguments raised by Mr. Troy in his district court filings.”
Troy v. Samson Manufacturing Corp., 2013-1565, Decided July 11, 2014.