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Role Of New Evidence In Patent Appeals To Be Decided By Supreme Court

WASHINGTON, D.C. - (Mealey's) The U.S. Supreme Court on June 27 agreed to take up a dispute over the proper procedures for courts to use in proceedings initiated under 35 U.S. Code Section 145, which allows applicants to file a civil action in a federal district court as an alternative to appealing to the Federal Circuit U.S. Court of Appeals a rejection of its application by the Board of Patent Appeals and Interferences (David J. Kappos v. Gilbert P. Hyatt, No. 10-1219, U.S. Sup.). 

The Federal Circuit - after rehearing the dispute between petitioner David J. Kappos, director of the U.S. Patent and Trademark Office (PTO), and respondent Gilbert P. Hyatt - ruled that an applicant's right to introduce new evidence before a district court in a challenge to a rejection is governed by standard rules of evidence and civil procedure and that there is no additional requirement that only evidence that could not reasonably have been provided in the agency proceedings is admissible. 

At issue in the dispute is an application by Hyatt directed to a computerized display system for processing image information.  An examiner rejected all of the claims on numerous grounds, and though the board overturned on most grounds, it affirmed rejections based on lack of written description and enablement.  Hyatt then filed a civil action in the U.S. District Court for the District of Columbia and submitted a written declaration regarding the portions of the specification that would describe the limitations at issue to one of skill in the art.  The PTO responded that the court should not consider that declaration because Hyatt did not previously submit it to the examiner or to the board.  The trial court agreed and granted summary judgment to the PTO.   

A divided Federal Circuit panel affirmed, with the dissenting judge arguing that an applicant's right to present new evidence in a Section 145 action is subject only to the Federal Rules of Evidence and Civil Procedure.  The Federal Circuit later agreed to en banc review of that question and the question of the level of deference a district court should apply.  In a November 2010 ruling, the full court overturned the original panel, finding that the statute "provides no indication that this civil action is somehow different from a customary civil action." 

In its petition for certiorari, the PTO presents two questions for review:  Whether the plaintiff in a Section 145 action may introduce new evidence that could have been presented to the agency in the first instance, and whether - when new evidence is introduced under Section 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. 

[Editor's Note:  Full coverage will be in the July 1 issue of Mealey's Litigation Report: Intellectual Property.  For all of your legal news needs, please visit] 

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