Patent and Trademark Office

Kappos v. Hyatt

Issues

Whether a plaintiff whose patent has been denied by the United States Patent and Trademark Office ("PTO") may present new evidence to the district court reviewing this denial, and whether the court must give deference to the PTO’s prior decision.

Court below

United States Court of Appeals for the Federal Circuit

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.

Questions as Framed for the Court by the Parties

When the United States Patent and Trademark Office ("PTO") denies an application for a patent, the applicant may seek judicial review of the agency's final action through either of two avenues. The applicant may obtain direct review of the agency's determination in the Federal Circuit under 35 U.S.C. 141. Alternatively, the applicant may commence a civil action against the Director of the PTO in federal district court under 35 U.S.C. § 145. In a § 145 action, the applicant may in certain circumstances introduce evidence of patentability that was not presented to the agency.

The questions presented are as follows:

1. Whether the plaintiff in a § 145 action may introduce new evidence that could have been presented to the agency in the first instance.

2. Whether, when new evidence is introduced under § 145, the district court may decide de novo the factual questions to which the evidence pertains, without giving deference to the prior decision of the PTO.

Petitioner Gilbert P. Hyatt applied to the United States Patent and Trademark Office (“PTO”) in 1995 to patent his invention of a “computerized display system for processing image information.” See Hyatt v. Kappos, 625 F.3d 1320, 1323 (Fed. Cir.