Supreme Court Affirms Patent Applicants' Freedom To Introduce New Evidence In District Court Actions Under 35 U.S.C. § 145

Patent applicants who are dissatisfied with a rejection by the Board of Patent Appeals and Interferences have two options for review. They can appeal directly to the Federal Circuit, which will review the Board's decision on the record before the U.S. Patent and Trademark Office. Alternatively, 35 U.S.C. § 145 provides that an applicant may "have remedy by civil action against the Director" of the Patent Office in the United States District Court for the District of Columbia. The primary issue in Kappos v. Hyatt was what limitations, if any, exist on an applicant's right to submit new evidence that was not before the Patent Office in such a district court action.

Today, the United States Supreme Court held that there are no limitations on new evidence in a section 145 action beyond those already present in the Federal Rules of Evidence and the Federal Rules of Civil Procedure. The Court also held that if an applicant submits new evidence in a section 145 action, the district court must make de novo factual findings that take into account the new evidence as well as the administrative record before the Patent Office. The Court noted, however, that the district court may consider whether the new evidence could have been presented to the Patent Office when deciding what weight to give it.

Factual and Procedural Background

This case involved a 1995 patent application submitted by Gilbert Hyatt. Hyatt's application included a 238-page specification and 40 pages of figures. During prosecution, he amended the application to recite a total of 117 claims. The examiner issued a final office action rejecting all claims on various grounds, including lack of written description as required by 35 U.S.C. § 112, ¶ 1. Hyatt appealed to the Board, which affirmed the written description rejections for 79 of the claims.

Hyatt then filed a civil action against the Director of the Patent Office under 35 U.S.C. § 145. The Director moved for summary judgment of invalidity, arguing that the pending claims were invalid for failure to comply with the written description requirement. Hyatt opposed the motion. In support of his opposition, Hyatt submitted an extensive declaration identifying portions of the specification that allegedly described the limitations at issue. The district court found that Hyatt had acted negligently by failing to submit his declaration to the Patent Office, excluded Hyatt's newly submitted evidence, and granted the Director's motion for summary judgment.

Hyatt appealed, and a divided panel of the Federal Circuit initially affirmed. The majority stated that it was the "general practice" in...