Supreme Court to Consider: Patent Office Decisions Given Enough Weight?

On Monday, June 27, the United States Supreme Court granted certiorari in a case that could have a significant impact on district court appeals of decisions of the United States Patent and Trademark Office ("PTO"). The Court will review the en banc Federal Circuit decision, Hyatt v. Kappos, 625 F.3d 1320 (Fed. Cir. 2010), which gave district courts broad power to consider new evidence in cases challenging PTO decisions. The case has the potential to provide important limits on the ability of patent applicants to use district court proceedings to challenge decisions of the PTO.

BACKGROUND

Under 35 U.S.C. §§ 145 and 146, a patent applicant or a party to a patent interference dissatisfied with a decision of the Board of Patent Appeals and Interferences ("the Board") can choose two avenues of review. First, the applicant or party may appeal to the Court of Appeals for the Federal Circuit, which will review the Board's decision based only on the record submitted to the PTO. In that case, the Federal Circuit reviews the Board's decision under a deferential standard set forth in the Administrative Procedure Act.

Alternatively, a dissatisfied applicant or party may seek review by filing a civil action in district court. This avenue of review has often been referred to as a "hybrid" appeal / trial de novo. Although it has long been established that the district court "may" allow new evidence not previously submitted to the PTO in such an action, there has been much uncertainty regarding when a district court should allow such new evidence to be admitted. Many practitioners believed that there were inherent limits on proffering new evidence not previously submitted to the PTO. After all, the parties and the PTO itself had already spent significant time, money, and resources to resolve the underlying issues. In addition, the PTO has general expertise in reviewing patent applications and adjudicating interference proceedings. As a result, many practitioners believed that PTO decisions should be according some deference on appeal to district court.

THE FEDERAL CIRCUIT'S DECISION IN HYATT

The Federal Circuit's en banc decision in Hyatt v. Kappos, 625 F.3d 1320 (Fed. Cir. 2010) sought to resolve many of these questions. The Federal Circuit determined that in district court actions to review a PTO decision (1) there were essentially no limits on new evidence other than the ordinary rules of evidence and civil procedure, and (2) when new evidence has been...