Jump the Shark Patent Style: Supremes Take Kappos v. Hyatt

The phrase “jump the shark“ comes from one particular scene in the television series “Happy Days.”  In the premiere episode for season 5, which aired on September 20, 1977, Arthur Fonzarelli (aka “The Fonz” or “Fonzie”) was challenged to jump a shark.  The water-skiing Fonz successfully jumped the shark and simultaneously spawned a new pop-culture phrase referring to the moment that a television show had run out of ideas.  A television show would “jump the shark” when the peak had been reached and it was believed that everything was downhill from there.  While that was not really a fair characterization of Happy Days given that it enjoyed many more years of popularity, over the years the phrase has broadly become synonymous with the moment when an undeniable decline has commenced.

By accepting cert. in Kappos v. Hyatt the United States Supreme Court has clearly and undeniably jumped the shark in terms of patents.  This case, which raises issues of such little importance to the greater scheme of patent law, is hardly appropriate for Supreme Court consideration.  The Supreme Court is wasting its time hearing this case and denying the slot to a far more important matter, which is nearly unconscionable.

Each year the United States Supreme Court receives upwards of 7,000 petitions for a writ of certiorari, which is the petition one must file in order to ask the Court to take the case.  The United States Supreme Court typically hears about 100 cases (plus or minus).  One would suspect that the cases heard by the Supreme Court for full consideration and a written opinion would be of the utmost importance to the Republic.  Those cases where there is either a fundamental matter of law, an issue that impacts a great many people or a case of tremendous importance for the administration of justice.  Simply stated, Kappos v. Hyatt does not qualify on any level for Supreme Court consideration.  Taking this case is an extreme and utter waste of precious judicial resources.

From a procedural standpoint, Kappos v. Hyatt comes to the Supreme Court after an en banc decision by the United States Court of Appeals for the Federal Circuit. The question presented and considered by the full Court 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 was — YES. However, without new evidence at the District Court the Federal Circuit must continue to give deference to the USPTO on further appeal. See CAFC Rules New Evidence OK in BPAI Appeal to District Court.

This case arises due to a oddity of patent law. 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.

It is true that the Federal Circuit was incorrect in its ruling in the case, then styled Hyatt v. Kappos. As Judge Newman pointed out in a concurring opinion, there is absolutely no statutory support for the distinction drawn by the majority, and the holding is inconsistent with the Supreme Court’s ruling in Dickinson v. Zurko. Newman 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.”

The fact that the Federal Circuit created an evidentiary distinction out of whole cloth does not mean that this case should be taken on appeal by the Supreme Court.  Remember, this is the same Court that decided to deny the petition of the State of Virginia to hear the constitutional challenge to Obamacare without requiring the case to be heard by the United States Court of Appeals for the Fourth Circuit.  For crying out loud — everyone in the country knows that the Supreme Court will eventually hear the case and make the ultimate decision on whether the individual mandate is constitutional, yet this enormously important issue that will affect over 30 million uninsured individuals, hundreds of thousands of businesses that provide medical insurance to employees and virtually every man, woman and child in the United States wasn’t important enough to decide sooner rather than later.  But they took Kappos v. Hyatt.  Absolutely absurd!

How many times do you suppose an issue has arisen relating to 35 U.S.C. 145 over the last 10 years?  A search of cases shows that the Federal Circuit has issued decisions in 5 such cases and the United States District Court for the District of Columbia has heard 7 such cases.  There were also a couple cases where the pro-se litigant tried to file an action under § 145 and filed a specious challenge (and I do mean specious) in the wrong district court.  The breakdown is as follows:

Federal Circuit cases relating to § 145 since October 1, 2000

• Hyatt v. Kappos
• Encyclopaedia Britannica, Inc. v. Alpine Elecs., Inc.
• Takeda Pharm. Co. v. Doll
• Mazzari v. Rogan
• Exxonmobil Chem. Patents, Inc. v. Rogan

DC District Court cases relating to § 145 since October 1, 2000

• Bally Gaming, Inc. v. Kappos
• Hitachi Koki Co. v. Doll
• Innovatit Seafood Sys., LLC v. Comm’r for Patents
• Putman v. Dudas
• Presley v. PTO
• Innovatit Seafood Sys., LLC v. Comm’r for Patents
• Galbreath v. Dudas

Miscellaneous District Court cases relating to § 145 since October 1, 2000

• Dunn v. Doll (N.D. CA)
• Boundy v. United States PTO (E.D. VA)

What is the Supreme Court thinking?  Perhaps the question really should be: is the Supreme Court thinking?

I do realize that beginning with October 1, 2000, does not create a true 10 year period.  That is, however, the beginning of Fiscal Year 2001 for the federal government, which will allow us to compare the number of patent applications filed from the start of FY 2001 through the end of FY 2010.

Over the 10 years between October 1, 2000 and September 30, 2010 there were a total of 4,247,741 U.S. patent applications filed, and a total of 1,880,738 U.S. patents issued.  During this time there were 14 cases relating to 35 U.S.C. 145, which means the issue is raised in .0003% of patent applications filed at the United States Patent and Trademark Office.

All those attorneys and parties who will have your petition for cert. denied are left with the sad reality that your case is not as important as a matter that statistically comes up in .00% of all patent applications filed at the USPTO.  So rather than take any number of important matters the Supreme Court has elected to delve into the ridiculously obscure.  And we are supposed to pretend that these 9 individuals represent the best and brightest lawyers and judges in the United States?  That is funny in a comic tragedy sort-of way.

Indeed, the Supreme Court has jumped the shark relating specifically to patents, but quite likely relating to law in general.