Supreme Court Affirms Hyatt, Confirms Availability Of New Evidence, De Novo Review In Section 145 Actions

18 April 2012 PharmaPatents Blog
Authors: Courtenay C. Brinckerhoff

On April 18, 2012, the U.S. Supreme Court decided Kappos v. Hyatt, which raised questions regarding the ability to introduce new evidence and the applicable standard of review when a patent applicant challenges the USPTO’s refusal to grant a patent in a district court  proceeding under 35 USC § 145 (“Civil Action to Obtain a Patent”).  The Supreme Court affirmed the decision of the en banc Federal Circuit, holding that “there are no evidentiary restrictions beyond those already imposed by the Federal Rules of Evidence and the Federal Rules of Civil Procedure,” and that “when new evidence is presented on a disputed question of fact,” the district court must “make a de novo finding.” The Court agreed with the Federal Circuit that the district court may “consider whether the applicant had an opportunity to present the evidence to the PTO” when deciding how much weight the new evidence should be given. This decision will be welcomed by patent applicants who have received negative USPTO decisions on patentability, and reflects the realities — and difficulties — of marshalling evidence during patent prosecution.


A patent applicant who is denied a patent after appealing to the USPTO’s Board of Appeals and Interferences has the option of either appealing directly to the Federal Circuit under 35 USC § 141 or challenging the USPTO decision in district court under 35 USC § 145. While the Federal Circuit would review the USPTO decision on the record that was before the agency, the applicant can introduce new evidence in a district court proceeding.  In Hyatt, the USPTO had argued that only evidence that could not have been submitted to the USPTO (such as live testimony) should be admitted by the district court, and that the district court still should give deference to the USPTO’s decision.

The Supreme Court Decision

The Supreme Court reviewed the statutory language, general principles of administrative law, and the “evidentiary and procedural rules that were in effect when Congress enacted § 145 in 1952.” After undertaking this analysis, the Court stated:

[W]e conclude that a district court conducting a §145 proceeding may consider “all competent evidence adduced . . . and is not limited to considering only new evidence that could not have been presented to the PTO.” Thus, we agree with the Federal Circuit that “Congress intended that applicants would be free to introduce new evidence in §145 proceedings subject only to the rules applicable to all civil actions, the Federal Rules of Evidence and the Federal Rules of Civil Procedure.”

On the standard of review, the Court explained:

As we noted in Zurko, the district court acts as a factfinder when new evidence is introduced in a §145 proceeding. . . . The district court must assess the credibility of new witnesses and other evidence, determine how the new evidence comports with the existing administrative record, and decide what weight the new evidence deserves. As a logical matter, the district court can only make these determinations de novo because it is the first tribunal to hear the evidence in question.

The Court, like the Federal Circuit, recognized that some consideration must be given to the USPTO’s role as the agency charged with granting patents. The Court addressed this concern by noting that a district court may give deference to the USPTO through the weight that it accords the new evidence:

Though the PTO has special expertise in evaluating patent applications, the district court cannot meaningfully defer to the PTO’s factual findings if the PTO considered a different set of facts. . . . For this reason, we conclude that the proper means for the district court to accord respect to decisions of the PTO is through the court’s broad discretion over the weight to be given to evidence newly adduced in the §145 proceedings.

The Concurring Opinion

Justice Sotomayor wrote a concurring opinion (joined by Justice Breyer) that expresses the view that equitable principles would permit a district court to exclude new evidence in a § 145 Civil Action under certain, limited circumstances. Although Justice Sotomayor would not exclude evidence that was not presented to the USPTO “due to ordinary negligence, a lack of foresight, or simple attorney error,” she would permit the district court to exercise its “equitable authority to exclude evidence” when the applicant’s “conduct before the PTO calls into question the propriety of admitting evidence presented for the first time in a §145 proceeding,” such as if the evidence at issue was “‘deliberately suppressed’ from the PTO or otherwise withheld in bad faith.”

A Useful Option for Applicants

Although §145 civil actions are relatively uncommon, this Supreme Court decision confirms that they can be a useful option for patent applicants who disagree with the USPTO’s refusal to grant their patent, but would like to present new evidence to shore up their case. Indeed, because patentability issues often are not fully developed until the case reaches the USPTO Board of Appeals and Interferences (when the ability to submit new evidence is severely limited), patent applicants often resort to reopening prosecution or filing continuation applications to develop a stronger record. The Hyatt decision makes clear that a §145 civil action could be a viable alternative to another round of prosecution, and might offer faster resolution of patentability issues.

This blog is made available by Foley & Lardner LLP (“Foley” or “the Firm”) for informational purposes only. It is not meant to convey the Firm’s legal position on behalf of any client, nor is it intended to convey specific legal advice. Any opinions expressed in this article do not necessarily reflect the views of Foley & Lardner LLP, its partners, or its clients. Accordingly, do not act upon this information without seeking counsel from a licensed attorney. This blog is not intended to create, and receipt of it does not constitute, an attorney-client relationship. Communicating with Foley through this website by email, blog post, or otherwise, does not create an attorney-client relationship for any legal matter. Therefore, any communication or material you transmit to Foley through this blog, whether by email, blog post or any other manner, will not be treated as confidential or proprietary. The information on this blog is published “AS IS” and is not guaranteed to be complete, accurate, and or up-to-date. Foley makes no representations or warranties of any kind, express or implied, as to the operation or content of the site. Foley expressly disclaims all other guarantees, warranties, conditions and representations of any kind, either express or implied, whether arising under any statute, law, commercial use or otherwise, including implied warranties of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Foley or any of its partners, officers, employees, agents or affiliates be liable, directly or indirectly, under any theory of law (contract, tort, negligence or otherwise), to you or anyone else, for any claims, losses or damages, direct, indirect special, incidental, punitive or consequential, resulting from or occasioned by the creation, use of or reliance on this site (including information and other content) or any third party websites or the information, resources or material accessed through any such websites. In some jurisdictions, the contents of this blog may be considered Attorney Advertising. If applicable, please note that prior results do not guarantee a similar outcome. Photographs are for dramatization purposes only and may include models. Likenesses do not necessarily imply current client, partnership or employee status.

Related Services