Supreme Court Holds That New Evidence and De Novo Review Apply in Section 145 Action

18 April 2012 Publication
Authors: Stephen B. Maebius Courtenay C. Brinckerhoff Jeanne M. Gills

Legal News Alert: Intellectual Property

A patent applicant who is denied a patent after appealing to the U.S. Patent and Trademark Office’s Board of Appeals and Interferences has the option of either appealing directly to the Federal Circuit or proceeding with a challenge in district court under 35 USC § 145 (§145 Civil Action). On Wednesday, April 18, 2012, the U.S. Supreme Court decided Kappos v. Hyatt (No. 10-1219), which raised questions regarding the ability to introduce new evidence and the applicable standard of review when a patent applicant brings such a §145 Civil Action. The 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 PTO decisions on patentability, and reflects the realities — and difficulties — of marshalling evidence during patent prosecution. For example, the Court’s ruling opens the door for a district court to consider certain types of new evidence (such as live witness testimony) in a §145 Civil Action that cannot be presented before the PTO, as well as other evidence that may not have been available to be presented during the PTO proceedings.

The Supreme Court Decision

In reaching its 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 PTO’s role as the agency charged with granting patents. The Court addressed this by noting that deference to the PTO may be given by the weight that the district court 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 PTO “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 PTO’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 PTO Board of Appeals and Interferences (when the ability to submit new evidence to the PTO 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. 

For additional background on the case, see Supreme Court Hears Oral Arguments in Section 145 Case (Kappos V. Hyatt).

For more information on this and other important legal developments, please visit our PharmaPatents Blog.

Legal News Alert is part of our ongoing commitment to providing up-to-the-minute information about pressing concerns or industry issues affecting our clients and colleagues. If you have any questions about this Alert or would like to discuss the topic further, please contact your Foley attorney or the following:

Stephen B. Maebius
Chair, IP Department
Washington, D.C.

Courtenay C. Brinckerhoff 
Chair, IP Law and Practice 
Washington, D.C.

Jeanne M. Gills
Vice Chair, IP Department
Chicago, Illinois