We are pleased to share the latest from our friends at PatentDocs.org, the Biotech and Pharma Patent Law and News Blog. The authors, Donald Zuhn and Kevin Noonan, are partners at McDonnell Boehnen Hulbert & Berghoff, LLP, and contribute to Patent Docs on a daily basis. Today’s post is entitled, “Kappos v. Hyatt (2012),” and it discusses a 9-0 opinion written by Justice Thomas in which the United States Supreme Court firmly sided with applicant Hyatt regarding both the extent of new evidence that a dissatisfied applicant can produce during a §145 proceeding and the standard of review to be applied by the district court to such evidence.
The Supreme Court held that, “there are no evidentiary restrictions beyond those already imposed by the Federal Rules of Evidence and the Federal Rules of Civil Procedure,” echoing the Federal Circuit majority. In regards to the issue of the standard of review, the Supreme Court held that “the district court must make a de novo finding when new evidence is presented on a disputed question of fact.”
Here is an excerpt:
In an opinion written by Justice Thomas, the Court reviewed the history of § 145 and its predecessor statutes as well as its own jurisprudence regarding the questions of whether new evidence could be adduced and the standard of review to be applied by district courts. With regard to the first issue, the Court held that “there are no evidentiary restrictions beyond those already imposed by the Federal Rules of Evidence and the Federal Rules of Civil Procedure,” echoing the Federal Circuit majority. As for the standard of review, the Court held that “the district court must make a de novo finding when new evidence is presented on a disputed question of fact.”
The Court’s reasoning on the first issue was based on the distinctions between review sought under 35 U.S.C. § 145 with direct review to the Federal Circuit under 35 U.S.C. § 141. Citing Zurko, the opinion states that one important distinction between these two statutory provisions is the ability for an applicant to “present new evidence to the district court that was not presented to the PTO,” which is “significant” because the Office did not “generally” accept oral testimony. The opinion recognizes that it has not spoken on whether there were any limitations on the new evidence or the appropriate standard of review of such evidence, which it supplies in this decision.
A clue to the basis for this decision comes from one way the opinion characterizes the PTO position: “[b]oth of these arguments share the premise that §145 creates a special proceeding that is distinct from a typical civil suit filed in federal district court and that is thus governed by a different set of procedural rules” based on “background principles of administrative law and pre-existing practice under a patent statute that predated §145.” But the Court finds these arguments unavailing, based on the plain meaning of the statutory language: “[b]y its terms, §145 neither imposes unique evidentiary limits in district court proceedings nor establishes a heightened standard of review for factual findings by the PTO.”
To read, “Kappos v. Hyatt (2012)” in full, please click here.