CAFC Rules New Evidence OK in BPAI Appeal to District Court

By Gene Quinn
November 9, 2010

Yesterday, November 8, 2010, the United States Court of Appeals for the Federal Circuit issued a decision in a case that will likely have limited applicability for most, but will definitively add another weapon in the arsenal of those who wish to challenge the final determinations of the United States Patent and Trademark Office. In a peculiar oddity (redundancy on purpose) those who choose to challenge the final determinations on patentability of the Board of Patent Appeals and Interferences (BPAI) can elect to either proceed directly to the United States Court of Appeals for the Federal Circuit, or they can elect to proceed to the United States Federal District Court for the District of Columbia. The question presented and considered by the full Court at the Federal Circuit was whether new evidence (i.e., evidence not previously presented to the USPTO) can be presented to the District Court when challenging a decision of the BPAI. The short answer — YES.  However, without new evidence at the District Court the Federal Circuit must continue to give deference to the USPTO on further appeal.

Under the patent laws, a patent applicant who is dissatisfied with the decision of the Board regarding a patent application may choose one of two paths. Pursuant to 35 U.S.C. 141, the applicant may appeal the Board’s decision to the Federal Circuit, which will review the Board’s decision only on the record that was before the Patent Office. Alternatively, pursuant to 35 U.S.C. 145, the applicant may file a civil action in the District Court for the District of Columbia and the court will determine whether the applicant “is entitled to receive a patent for his invention . . . as the facts in the case may appear.” 35 U.S.C. § 145. Hyatt v. Kappos presented the issue of what limitations exist on an applicant’s right to introduce new evidence in a § 145 civil action.

Before proceeding to the specific ruling of the Federal Circuit, this area of law is particularly strange, hence my referring to it above as a peculiar oddity. Not only is there a dual path out of the USPTO to challenge the Board, but an appeal must go to the District Court for the District of Columbia and none of the 93 other Federal District Courts spread across the United States.

More peculiar still, thanks to the Supreme Court’s ruling in Dickinson v. Zurko, 527 U.S. 150 (1999), the Federal Circuit must grant deference to the determinations of the Patent Office, as required by the Administrative Procedures Act. On this front the Supreme Court in Zurko stated succinctly at the start of the opinion that:

The Administrative Procedure Act (APA) sets forth standards governing judicial review of findings of fact made by federal administrative agencies. 5 USC 706. We must decide whether section 706 applies when the Federal Circuit reviews findings of fact made by the Patent and Trademark Office (PTO). We conclude that it does apply, and the Federal Circuit must use the framework set forth in that section.

In Zurko the question was whether deference was required to be given that would lead to a dual standard of review, which would change depending upon whether the case proceeded from the Board directly to the Federal Circuit versus when the case was first routed through the District Court for the District of Columbia. The Supreme Court gave lip service to this problem, basically telling the Federal Circuit they should figure it out when it mattered, which they did in Mazzari v. Rogan, which was decided by the Federal Circuit in 2003.

The issue in Mazzari presents itself as a result of the patent applicant choosing to go to the United States District Court for the District of Columbia. The Federal Circuit explained (citations omitted):

A decision by the PTO is reviewed on the administrative record of an agency hearing provided for by statute. Therefore, a reviewing court, whether this court or the district court, applies the “substantial evidence” standard of review to findings of fact made by the board.

If the parties choose to present additional evidence to the district court, as they did here, the district court would make de novo factual findings if the evidence is conflicting. We then would review the district court’s legal conclusions without deference and its de novo factual findings under the traditional court/court standard of review, clear error. Because this case is before us on summary judgment, however, we review a district courts grant of summary judgment de novo and construe the facts in the light most favorable to the non-movant.  Obviousness is a question of law with underpinning factual findings.

As a result of the Supreme Court acknowledging and dismissing the Federal Circuit’s concern of a dual standard of review in Zurko, and the aforementioned statement from Mazzari, it seemed strange to me that there was any viable question relating to whether new evidence could be introduced at the District Court for the District of Columbia.

The original panel of the Federal Circuit that heard the Hyatt appeal explained “it is beyond question that in appropriate circumstances new evidence may be submitted to the district court in a § 145 action…” But the majority then went on to defer to what they referred to as “general practice” among federal courts “in some 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.” Oddly, the panel majority concluded that the Administrative Procedure Act (APA) imposed restrictions on the admission of new evidence in a § 145 action. Ultimately, evidence Hyatt wanted to introduce was excluded because the failure to submit the evidence in his declaration earlier was negligent, which lead the majority of the panel to conclude that “it is clear from the record that Hyatt willfully refused to provide evidence in his possession in response to a valid action by the examiner.”

The trouble with the panel majority in the original Hyatt appeal is that it ignored the fact that the only reason to proceed from the Board to the District Court would be to present new evidence, otherwise the path leading to the CAFC through the District Court would just be added expense for no reason. The majority also ignored the fact that the Supreme Court acknowledged in Zurko that the dual appeal option does, in fact, allow for new evidence to be submitted to the District Court and that new evidence, having been entertained for the first time by the District Court would be reviewable by the Federal Circuit outside of the APA deference it must provide to the USPTO. The Supreme Court explained in Zurko (citations omitted):

[T]he Circuit and its supporting amici believe that a change to APA review standards will create an anomaly. An applicant denied a patent can seek review either directly in the Federal Circuit, see 35 U. S. C. §141, or indirectly by first obtaining direct review in federal district court, see §145. The first path will now bring about Federal Circuit court/agency review; the second path might well lead to Federal Circuit court/court review, for the Circuit now reviews Federal District Court factfinding using a “clearly erroneous” standard. The result, the Circuit claims, is that the outcome may turn upon which path a disappointed applicant takes; and it fears that those applicants will often take the more complicated, time-consuming indirect path in order to obtain stricter judicial review of the PTO’s determination.

We are not convinced, however, that the presence of the two paths creates a significant anomaly. The second path permits the disappointed applicant to present to the court evidence that the applicant did not present to the PTO. Ibid . The presence of such new or different evidence makes a factfinder of the district judge. And nonexpert judicial factfinding calls for the court/court standard of review. We concede that an anomaly might exist insofar as the district judge does no more than review PTO factfinding, but nothing in this opinion prevents the Federal Circuit from adjusting related review standards where necessary.

Returning to the en banc decision in Hyatt v. Kappos, this history seems calculated to lead to but one conclusion, which was that reached by the majority of the en banc Court; namely that there is no limit on the evidence that can be supplied in a § 145 appeal from the Board. The Federal Circuit, per Judge Moore, explained:

The particular significance of a § 145 civil action is that it affords an applicant the opportunity to introduce new evidence after the close of the administrative proceedings—and once an applicant introduces new evidence on an issue, the district court reviews that issue de novo. Thus, an applicant’s ability to introduce new evidence is the hallmark of a § 145 action. It is the primary factor that distinguishes a civil action under § 145 from an appeal.

The Federal Circuit went on to announce its ruling:

We hold that 35 U.S.C. § 145 imposes no limitation on an applicant’s right to introduce new evidence before the district court, apart from the evidentiary limitations applicable to all civil actions contained in the Federal Rules of Evidence and Federal Rules of Civil Procedure. In doing so, we reject the Director’s proposal that only “new evidence that could not reasonably have been provided to the agency in the first instance” is admissible in a § 145 action. Dir. Br. at 8. While the proceedings before the Patent Office do not limit the admissibility of new evidence in the district court, they may be considered by the district court if they cast doubt on the reliability of late-produced evidence, as with inconsistent statements or new recollections of previously forgotten events. As with any evidence introduced in a civil action, the district court as factfinder may give less weight to evidence introduced by an applicant in a § 145 action if the district court questions its credibility or reliability. Because the district court abused its discretion when it excluded Mr. Hyatt’s declaration under the wrong legal standard, we vacate the decision of the district court and remand.

The majority opinion in the en banc proceeding found Judge Newman filing a concurring opinion. She wrote:

I join the en banc court’s holding that new evidence may be provided in a civil action brought in the district court under 35 U.S.C. §145. However, the court also holds that when no new evidence is provided, the findings and rulings of the PTO receive the same deferential treatment in the district court as would apply if the cause were not a civil action under section 145, but instead were an Administrative Procedure Act direct appeal to the Federal Circuit under 35 U.S.C. §141. That is not the statutory plan.

The statutory plan is designed to differ from such a duplicative procedure, not to create it. Nonetheless, the court today holds that for those issues for which the applicant relies on the same evidence as was before the patent examiner, the ruling of the PTO is not determined de novo but is reviewed with APA deference, identically to the section 141 appeal, except that the decision is initially made by one judge in the district court, en route to three-judge review if appeal is then taken to the Federal Circuit. No party presented or even contemplated such a redundant procedure, and no amicus discussed it. It is contrary to statute, to precedent, and to almost two centuries of legislative policy.

Judge Newman went on to say: “Neither the APA nor Zurko obliterated the purpose or changed the structure of the section 145 action as a full de novo proceeding.”

It is no great secret that I almost universally agree with Judge Newman, so it won’t be a surprise to anyone that I agree with her here as well. I understand why the majority of the Federal Circuit adopted the APA deferential review standard when no new evidence is submitted to the District Court, but that is simply not required by Zurko. In fact, the exact opposite seems required by any fair reading of Justice Breyer’s decision in Zurko.

While many may be tempted to believe the Justice Breyer meant to suggest that the review by the de novo review by the Federal Circuit would be limited to where there is new evidence, the specific and unambiguous language of Justice Breyer says the exact opposite. In fact, Justice Breyer recognized the anomaly in the standard of review pointed out by the CAFC with respect to the situation where the District Court does nothing more than review what was considered by the USPTO. The anomaly recognized by Justice Breyer couldn’t exist unless Judge Newman’s view of a §145 proceeding being de novo is correct.

One final point regarding Judge Newman’s dissent is her rebuttal of the argument raised by the PTO Solicitor and Judges Dyk and Gajarsa in dissent; namely that applicants will withhold winning evidence from the examiner in order to introduce it on appeal to the District Court for the District of Columbia. Judge Newman succinctly, and correctly, points out in the only footnote of her concurring/dissent:

The PTO Solicitor and my colleagues in dissent argue that applicants will deliberately withhold evidence in their possession, in order to spring it on the district court under section 145. I share the view of the amici curiae that it is unlikely that applicants will withhold winning evidence from the examiner, in favor of a multi-year and expensive civil action in the district court.

I understand that the PTO Solicitor has to make arguments and represent the Office, but the argument that an applicant would withhold evidence and embark on a long, drawn-out and expensive appeals process that first goes through the Board, then to the District Court and ultimately to the Federal Circuit is absurd on its face. First, it has been known since Zurko that a potentially more applicant friendly standard of review is offered by going through the District Court, yet it remains rare. Second, the thought that any applicant would willingly hide evidence that shows they are entitled to a patent demonstrates an acute unfamiliarity with the patent process and the mindset of applicants. For crying out loud, there are upwards of 480,000 applications filed every year and even with appeals growing rather sharply there are less than 20,000 appeals. Applicants want patents, not ridiculous legal bills and years of uncertainty.

So the moral of this story is this: if you want to submit new evidence in the District Court proceeding you can without restriction, but without new evidence to submit you might as well go straight to the CAFC because Judge Newman’s view of a §145 proceeding being de novo did not win the day.  So an appeal to the District Court for the District of Columbia is probably a lot less attractive than it was previously in most cases, which should make them all the more rare.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded 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.

Warning & Disclaimer: The pages, articles and comments on do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of Read more.

Discuss this

There are currently 34 Comments comments.

  1. step back November 9, 2010 10:37 pm

    Kudos to Hyatt for fighting back on behalf of all inventors.

    Kudos to Newman J. for sticking up for inventor rights.

  2. West Coast Guy November 10, 2010 9:21 am


    Please watch your nomenclature. The dissatisfied applicant does not “appeal” to the district court. If you would like to lump both paths of post-BPAI action into one term, may I suggest “judicial review.”

  3. West Coast Guy November 10, 2010 9:41 am

    No more “substantial evidence” — aka “any evidence” — limitation of judicial review. Now, even if the Office has substantial evidence ot support its conclusion, the applicant is no longer burdened with having to meet the higher bar of substantial evidence.

    In a trial, I am sure that the PTO can raise defenses such as unclean hands, bad faith, and the like. If there has been an intentional withholding of evidence during prosecution, then the PTO should be able to elicit the applicant’s reasons of why he withheld the evidence. If the admissible facts show less than good faith, then I can’t see the court willing to order a patent to issue.

    I doubt the there will be a substantial rise of § 145 judicial reviews because (1) the logical and financial challenges of having to try the matter in DC are formidable and (2) the applicant bears his own expenses. There is one benefit I see: oral testimony from the real PHOSITA (and not the fictitious person created by an examiner) will be allowed. If the applicant has the resources and faces a KSR-based rejection, it would be worth fighting if the applicant believes the examiner doesn’t have an understanding of the art.

  4. EG November 10, 2010 11:23 am


    I would be careful in calling a Section 145 action an “appeal.” It really is a civil action (like a court challenge to a petition within the PTO) with the appeal then being to the Federal Circuit if the applicant is dissatisfied with the result in the DC district court.

    I too agree with Newman that the Zurko “substantial evidence” standard shouldn’t apply. Again, we’re talking about a civil action, not a direct appeal from a BPAI decision.

  5. patentsoldier November 10, 2010 11:31 am

    This decision will promote least cost disclosure before the PTO and maximum disclosure before the district court for economically important cases, whereas before this decision best reasonable disclosure before the PTO was the goal.

    The decision also short circuits the 145 process by all but ensuring the applicant wins based upon unopposed, new evidence. A competent lawyer will win such a one-sided proceeding, thus the federal circuit’s rationale for why 145 will rarely be used (loser pays) is irrelevant. I predict 145 will become a very popular means to get a pro forma allowance on economically important cases. What that means for IP community as a whole is a serious concern.

  6. Gene Quinn November 10, 2010 1:20 pm

    West Coast Guy-

    I will take exception to what you say about my nomenclature. It is now abundantly clear that what occurs is an appeal to the District Court for the District of Columbia. There is no longer a de novo review, so absent new evidence all that occurs is an extra layer of appeal. Even with the facts as submitted to the district court all they can do is conduct an appellate review providing deference under the APA.

    Your point is taken, but it does seem that there is something of a mess now and an already under utilized procedural path will almost certainly become still further under utilized to the point of irrelevance.

    Wouldn’t you agree?


  7. Gene Quinn November 10, 2010 1:23 pm


    Like West Coast Guy, I understand your calling it a civil action, but if it were a civil action then Judge Newman’s view would have won the day and it would have been a de novo review. If it is not a de novo review I don’t know how you can call it anything other than an appeal.

    I understand the semantics involved, but it just seems intellectually dishonest to call it anything other than an appeal, although I do agree that you and WCG are likely more correct than I on the nomenclature.


  8. Gene Quinn November 10, 2010 1:25 pm

    Patent Soldier-

    Can you elaborate on this: “I predict 145 will become a very popular means to get a pro forma allowance on economically important cases.”

    It seems to me that regardless of who would win at the District Court there will be an appeal to the CAFC, so the interim step is to supplement the record and was, until Monday, to get a different standard of review.


  9. West Coast Guy November 10, 2010 3:21 pm


    If anything, it will become more utilized in my opinion (although not widely utilized) — especially with 103 rejections where KSR is asserted by the Office as the rationale for the rejection.

    Before yesterday’s opinion, I saw the § 145 proceeding as an extra appellate layer — just another review. Now, the dissatified applicant gets “a trial de novo” if new evidence is introduced. In my opinion, this means a trial under the FRCP and the FRE which means the availability of both sides to conduct full discovery. This means the applicant has the ability to seek responses to interrogatories and admissions as well as depose Office personnel. Under yesterday’s holding, the qualifications of the examiner or other Office personnel are facts which go to credibility. The Office will have to more rigorously defend itself, and if there are facts in dispute (an applicant’s expert disagreeing with the examiner), then the trier of fact resolves the issue.

    With the introduction of new evidence, I do not see the § 145 action as a review.

  10. patentsoldier November 10, 2010 3:23 pm

    If the case is lost based on an unwillingness to expend budgetary resources to acquire new evidence necessary to counter the unrestricted, new evidence introduced by opposing counsel, I doubt the PTO would appeal.

    The big question is how routine would it be for the PTO NOT to contest the new evidence due to manpower and budget restraints? My guess is it would be routine. Otherwise, how could the agency afford a full blown trial on new issues for every 145 action (i.e., a second, substantially more expensive prosecution of the application)?

  11. step back November 10, 2010 5:34 pm


    I don’t think we can call it either an “appeal” or a full-fledged “civil action”.

    It is a mongrel action that falls somewhere in between.

    In a true “appeal” the court cannot (well should not) be making findings of fact based for example on demeanor of witnesses. In a sect. 145 action it is clear that the court can make such findings of fact.

    In a full fledged civil action, the USPTO would have the option of raising for the first time new bases for non-patentability, including engaging in discovery re inequitable conduct, etc. But they can’t do that either.

    So let’s call it a “remedial civil action” because sect. 145 says it is a “remedy”.

    35 U.S.C. 145 Civil action to obtain patent.
    An applicant dissatisfied with the decision … in an appeal under section 134(a) … may .. have remedy by civil action against the Director

  12. Lawrence S. Cohen November 10, 2010 5:45 pm

    My initial response instinctively, is like the commentator, that the action to a District Court, is a new case subject to the entry of evidence and findings of fact. As I see it, it gives an applicant a chance to have patentability decided as if in the first instance by a District Court.
    So, with the apparent disagreement about de novo vs. review, I did what my professors in law school advised, I looked at the statute. Section 145 says “An applicant …may…have remedy by a civil action against the Director in the ….District of Columbia [District Court]”.
    That language, to me, tracks numerous statutes that say, and overwhelming legal-logic, that one can sue in a U.S. District Court and have a trial there. The suit is against the Director for an order to the Director to issue the patent. I don’t see how the statute can be characterized as an appeal. I would not even want to use the term “de novo” because that term is used when an appellate court can hear a matter anew. This is simply a trial, like any other trial in a District Court. The Director submits his evidence and desired rulings asking that he be agreed with. The applicant submits his case. All to be decided according to the US Patent Law.

  13. Gene Quinn November 10, 2010 6:06 pm

    Patent Soldier-

    It is my understanding that the PTO would appeal every 145 action to the CAFC, as a matter of course, if they lose.


  14. Gene Quinn November 10, 2010 6:08 pm

    West Coast Guy-

    Interesting points. I guess I had always assumed the trial de novo given that Zurko specifically states that new evidence can be introduced. The only reason to for the CAFC to have heard the case en banc, in my opinion, was because the panel came out with a decision that seemed contrary to the previous precedent. So I wonder how many would view this as being newly the law. I guess it will wind up to be a matter of perception.

    I agree with you that in some cutting edge areas where KSR is preventing a path forward 145 is appropriate, and perhaps now with this decision even more attractive. We shall see what happens.



  15. Gene Quinn November 10, 2010 6:10 pm


    I have to disagree. This is not really a trial like any other in a very important way. APA deference has to be given to findings of fact unless there is new evidence.

    So as step back says, “it is a mongrel action…”


  16. West Coast Guy November 10, 2010 8:46 pm


    In panel opinion, Judge Moore’s dissent was very passionate and persuasive. In my opinion, it was the main reason why the others voted to hear the matter en banc, and it was likely the reason why she was selected to write the en banc majority opinion.

  17. Gene Quinn November 11, 2010 1:00 pm


    You are probably right. Originally (i.e., after the panel Egyptian Goddess case) I had little hope for Judge Moore and feared that as an academic on the Court she was not the right person. Lately, however, it seems she has really found her sea-legs on the Court and while I don’t always agree with her I think she is becoming (if she hasn’t already become) an excellent Judge.


  18. JohnDarling November 11, 2010 4:07 pm

    “It is my understanding that the PTO would appeal every 145 action to the CAFC, as a matter of course, if they lose.”


    Where did this understanding come from? Hopefully not from somebody at the PTO. Shouldn’t the decision on whether to appeal a 145 action be decided on the merits, as opposed to just an automatic appeal?

  19. IANAE November 11, 2010 4:38 pm

    Shouldn’t the decision on whether to appeal a 145 action be decided on the merits, as opposed to just an automatic appeal?

    On the merits, it’s pretty evident that in all cases the PTO’s position (as stated by the Board) will be at odds with an adverse result in the 145 action.

    Unless the new evidence completely changes the character of the issue in dispute, I’d be surprised if they didn’t appeal as a matter of course.

  20. Gene Quinn November 11, 2010 5:16 pm


    It did not come from someone at the USPTO, but rather from an observer.

    I don’t know what I think really. I think it makes sense to appeal because a decision of the Board, the folks entrusted at the agency level to get it right, has been supplanted. It seems logical to want to force the CAFC to make the call so it would be precedential (presumably). So I think the observation was that the USPTO would almost certain appeal every time because otherwise they would be living with a decision that overturned the Board but wasn’t really precedential, so it could come up again and the Board do the same exact thing because they could feel not bound by the district court given it is a quasi de novo review and not an appeal.

    What a mess this mongrel 145 action is!


  21. anonymous November 11, 2010 6:14 pm

    I do not see the benefit of appealing all adverse results of 145 actions as a matter of course.

    Seeing as the Judiciary has just ruled that the Office and its machine (including the BPAI as a de facto poriton of that machine) has got it wrong, a blanket policy like atuomatically appealing will more likely than not simply cement the judiciary mindset that the Office is truly clueless.

  22. Gene Quinn November 11, 2010 6:24 pm


    Just to be clear, I am not suggesting there is a policy of appeal everything. That was an observation from a patent attorney who is a careful observer of the USPTO and one that seemed to make sense to me. There are so few 145 cases, and still fewer that the USPTO loses, that the data set is so small, but I think it is fair to say that over the past many Administrations have appealed not only when they think they are right, but when the there is a belief that the district court ruling would create confusion, perhaps even chaos, with respect to whether it is binding. So from the point of view that certainty is best for the agency and those who use the agency, I would not be offended even if there were a policy to appeal all 145 losses at the DC district.


  23. JohnDarling November 11, 2010 6:52 pm

    “On the merits, it’s pretty evident that in all cases the PTO’s position (as stated by the Board) will be at odds with an adverse result in the 145 action.”

    The PTO’s position, as stated by the Board, is based on the merits of the record in the PTO. The decision to appeal an order from the USDC DC to grant the applicant a patent should be based on the record of the 145 civil action.

    I don’t think having a precedential decision is, or should be, a basis for automatically appealing. Is it really in the PTO’s interest to have a precedential Federal Circuit decision that confirms that the BPAI’s findings are not supported by substantial evidence or their application of the law was in error? Is that a good use of the Federal Circuit’s time?

  24. patentsoldier November 11, 2010 7:52 pm

    If a 145 action becomes common, here is what I think will become a typical dilemma.

    The applicant introduces (unrestriced) new evidence, usually declaration evidence from experts regarding a specific factual issue.

    Would the PTO hire their own expensive experts? Would they allow their examiners to submit declarations for use in this trial or otherwise participate? Would they even routinely take examiners off production to advise?

    If the answers to the above questions are no, then the new declaration evidence will be countered only by solicitor argument, if at all. In other words, an uncontested proceeding. So the applicant usually wins on fact specific evidence, not on broader issues. In this situation, would the PTO even bother appealing to the Federal Circuit?

    On the other hand, equitably it wouldn’t seem worthwile to secure a patent in this manner with an eye toward later enforcement at district court, so perhaps that will limit the popularity of introducing new evidence.

  25. Blind Dogma November 12, 2010 7:55 am


    How likely is it that the Office would not mount a response to the new evidence and push for an appeal on that same 145 action if they lose? Would they inexplicably be waiting for the appeal to mount their argument to the new evidence?

    Your equitable other hand argument seems as shakily grounded as well. There would be no new equitable considerations between the 145 case and the Office appeal of that 145 case. And neither case would so negatively impact enforcement of the patent – you are assuming the conclusion that you want to make by saying (and only saying, not showing any supporting argument) that such a negative impact will likely prevent those from choosing the 145 route.


    I don’t think that use of the Federal Circuit’s time is a metric the Office uses in any of its decisions. One only has to look at the massive Tafas debacle and David Boundy’s showing that the Office continued on its course well after knowledge of fatal errors doomed the Office efforts on procedural grounds to see that.

  26. West Coast Guy November 12, 2010 10:15 am

    When a § 145 trial is held, the dissatisfied applicant will possess a rebutable presumption that the claims-in-suit are patentable, right? The burden of proving unpatentability will lie with the PTO, right?

  27. patentsoldier November 12, 2010 10:17 am


    I didn’t suggest the PTO would appeal if they didn’t mount a response to new evidence and lost because of that. I’m questioning whether they would appeal under such circumstances.

  28. patentsoldier November 12, 2010 10:20 am


    I’m didn’t suggest the PTO would appeal if they didn’t mount a response to new evidence. I’m questioning whether they would appeal under such circumstances (if they lost because of the new evidence).

  29. IANAE November 12, 2010 11:07 am

    How likely is it that the Office would not mount a response to the new evidence and push for an appeal on that same 145 action if they lose? Would they inexplicably be waiting for the appeal to mount their argument to the new evidence?

    How likely was it for the applicant to inexplicably do the exact same thing, one level of review earlier?

  30. Blind Dogma November 12, 2010 11:19 am


    Try to keep up – there is no “inexplicable” one level earlier as that level is the 145 level under discussion wherein the new evidence is being brought in.

    When you go looking for arguments, at least try to make ones that make sense. This isn’t Patently-O where your glibness is so awe-inspiring.

  31. patentsoldier November 12, 2010 11:35 am

    My prior comment was to Blind Dogma, not John. Sorry, reading the thread on a smart phone screen.

    Blind Dogma, IANAE’s response helps me to get the gist of your comment. I would also add that, procedurally, it is not possible to routinely add new evidence on appeal to the federal circuit. My 7:52 pm post is premised on routine activity. The applicant will be able to routinely introduce new evidence at a 145 trial. The PTO however will not be able to routinely introduce new evidence if they appeal.

  32. Lawrence S. Cohen November 12, 2010 2:27 pm


  33. IANAE November 12, 2010 2:29 pm

    Mr. Cohen, you can’t just come in here and claim an isolated Gene.

  34. Gene Quinn November 12, 2010 8:22 pm

    Brilliant patent humor IANAE!

    -non isolated Gene