Oral argument: Jan. 9, 2012
Appealed from: United States Court of Appeals for the Federal Circuit (Nov. 8, 2010)
PATENT, PATENT AND TRADEMARK OFFICE, NEW EVIDENCE, JUDICIAL REVIEW, DEFERENCE
Petitioner Gilbert Hyatt initiated a civil action under 35 U.S.C. § 145 against Respondent David Kappos, Director of the Patent and Trademark Office, after the PTO's Board of Patent Appeals and Interferences sustained rejections for seventy-nine of Hyatt’s patent claims. The district court disregarded new evidence presented by Hyatt, because he failed to present such evidence before the PTO when it was available, and granted Kappos summary judgment. The Federal Circuit initially affirmed, but later reversed the district court's ruling. Kappos argues that § 145 only affords Hyatt a review that is deferential to PTO determinations, and that new evidence can only be introduced if such evidence becomes available after the PTO proceedings. Hyatt counters that § 145 authorizes the district court to decide patent application de novo, and generally allows introduction of new evidence. The Supreme Court’s decision will clarify the procedure for judicial review of the patent application process.
