Thank You For Submiting Feedback!
Supreme Court of the United States
January 9, 2012, Argued; April 18, 2012, Decided
[*433] Justice Thomas delivered the opinion of the Court.
The Patent Act of 1952, 35 U. S. C. § 100 et seq., grants a patent applicant whose claims are denied by the Patent and Trademark Office (PTO) the opportunity to challenge the PTO's decision by filing a civil [***710] action against the Director of the PTO in federal district court. In such a proceeding, the applicant may present evidence [**1694] to the district court that he did not present to the PTO. This case requires us to consider two questions. First, we must decide whether there are any limitations on the applicant's ability to introduce new evidence before the district court. For the reasons set forth below, we conclude that there are no evidentiary restrictions [****6] beyond those already imposed by the Federal Rules of Evidence and the Federal Rules of Civil Procedure. Second, we must determine what standard of review the district court should apply when considering new evidence. On this [*434] question, we hold that the district court must make a de novo finding when new evidence is presented on a disputed question of fact. In deciding what weight to afford that evidence, the district court may, however, consider whether the applicant had an opportunity to present the evidence to the PTO.
The Patent Act of 1952 establishes the process by which the PTO examines patent applications. A patent examiner first determines whether the application satisfies the statutory prerequisites for granting a patent. 35 U. S. C. § 131. If the examiner denies the application, the applicant may file an administrative appeal with the PTO's Board of Patent Appeals and Interferences (Board). § 134. If the Board also denies the application, the Patent Act gives the disappointed applicant two options for judicial review of the Board's decision. The applicant may either: (1) appeal the decision directly to the United States Court of Appeals for the Federal Circuit, pursuant to [****7] § 141; or (2) file a civil action against the Director of the PTO in the United States District Court for the District of Columbia pursuant to § 145.1
In a § 141 proceeding, the Federal Circuit must review the PTO's decision on the same administrative record that was before the PTO. § 144. Thus, there is no opportunity for the applicant to offer new evidence in such a proceeding. In [****8] [*435] Dickinson v. Zurko, 527 U. S. 150, 119 S. Ct. 1816, 144 L. Ed. 2d 143 (1999), we addressed the standard that governs the Federal Circuit's review of the PTO's factual findings. We held that the Administrative Procedure Act (APA), 5 U. S. C. § 701 et seq., applies to § 141 proceedings and that the Federal Circuit therefore should set aside the PTO's factual findings only if they are “ 'unsupported by substantial evidence.' 527 U. S., at 152, 119 S. Ct. 1816, 144 L. Ed. 2d 143 (quoting 5 U. S. C. § 706).
Full case includes Shepard's, Headnotes, Legal Analytics from Lex Machina, and more.
566 U.S. 431 *; 132 S. Ct. 1690 **; 182 L. Ed. 2d 704 ***; 2012 U.S. LEXIS 3107 ****; 102 U.S.P.Q.2D (BNA) 1337; 80 U.S.L.W. 4333; 23 Fla. L. Weekly Fed. S 275; 2012 WL 1314010
DAVID J. KAPPOS, UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR, PATENT AND TRADEMARK OFFICE, Petitioner v. GILBERT P. HYATT
Prior History: [****1] ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT.
Hyatt v. Kappos, 625 F.3d 1320, 2010 U.S. App. LEXIS 23117 (Fed. Cir., 2010)
Disposition: 625 F. 3d 1320, affirmed and remanded.
district court, Patent, new evidence, proceedings, factual findings, de novo, principles, cases, patent application, equity practice, introduce, administrative record, civil action, rules of evidence, ordinary course, deferential, invention, additional evidence, judicial review, reasons, courts
Administrative Law, Judicial Review, Standards of Review, De Novo Standard of Review, Patent Law, US Patent & Trademark Office Proceedings, Appeals, Administrative Record, General Overview, Jurisdiction & Review, De Novo Review, Subject Matter Jurisdiction, Substantial Evidence, Specifications, Description Requirement, Filing Requirements, Reviewability, Exhaustion of Remedies