CAFC Grants En Banc Review of BPAI to District Court Appeal

By Gene Quinn
March 1, 2010

On February 17, 2010, the United States Court of Appeals for the Federal Circuit issued an order in Hyatt v. Kappos vacating the previous decision issued by a 3 judge panel on August 11, 2009, when the case was then styled Hyatt v. Doll.  Chief Judge Michel wrote for the court and was joined by Judge Dyk, with Judge Moore providing a strong dissent.  The primary issue in Hyatt v. Dudas was whether the district court properly excluded evidence.  An appeal was taken from the Board of Patent Appeals within the Patent Office to the United States Federal District Court for the District of Columbia pursuant to 35 U.S.C. 145.  Hyatt argued that a plaintiff in a § 145 action is entitled to submit additional evidence subject to no limitations other than those imposed by the Federal Rules of Evidence.  Not surprisingly, the Patent Office disagreed, arguing that § 145 actions are at least partly a form of appeal of PTO decisions and that evidence not submitted to the PTO through negligence must be properly excluded at the district court.

In the now vacated August 11, 2009 decision the Federal Circuit, after an exhaustive history, summed up by saying:

In sum, it has been the general practice of federal courts for over eighty years in certain circumstances to exclude evidence which a party could and should have introduced before the Patent Office but did not despite an obligation to do so. Our own cases likewise have not adopted a de novo standard for trial. We have said that “[c]learly, the applicant does not start over to prosecute his application before the district court unfettered by what happened in the PTO.” On the other hand, it is beyond question that in appropriate circumstances new evidence may be submitted to the district court in a § 145 action (subject, at least, to the Federal Rules of Evidence).

(citations omitted). The Federal Circuit then went through a history of the Administrative Procedures Act and concluding that “admitting new evidence without restriction would defeat the purpose of the APA, as applicants could then always submit new evidence whenever they desired de novo review…”

Pulling no punches, Judge Moore, in dissent, wrote:

The majority takes away this patent applicant’s fundamental right to a “civil action to obtain [a] patent” as granted by Congress in 35 U.S.C. § 145. Today the majority decides that a patent applicant may not introduce the inventor’s declaration in a § 145 proceeding before the district court because the inventor had an “affirmative duty” or “obligation” to disclose this evidence to the PTO. His failure to fulfill his affirmative duty, by not disclosing evidence he could have disclosed to the PTO, results in such evidence being excluded from the district court § 145 proceeding.

The August 11, 2009 panel decision is now no longer, and Hyatt’s petition for rehearing was denied.  After polling the judges of the Federal Circuit, however, rehearing en banc was granted on the following issues:

(a) Are there any limitations on the admissibility of evidence in section 145 proceedings? In particular—

(i) Does the Administrative Procedure Act require review on the agency record in proceedings pursuant to section 145?
(ii) Does section 145 provide for a de novo proceeding in the district court?
(iii) If section 145 does not provide for a de novo proceeding in the district court, what limitations exist on the presentation of new evidence before the district court?

(b) Did the district court properly exclude the Hyatt declaration?

The appellant’s brief is due on or before March 31, 2010, with the USPTO brief due within 28 days of the appellant’s brief. The appellant then has the opportunity to supply a reply brief, if any, within 14 days after service of the USPTO brief. Assuming all parties take the full time and a reply brief is submitted the papers will all be filed on or before May 12, 2010. An oral argument will be held with the date being announced at an unspecified time in the future.

Assuming my travel schedule permits, I will attend the Federal Circuit en banc hearing in person. In the wake of Zurko and Mazzari, this could be an important decision to keep an eye on moving forward.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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