Patent Law Practice Center

Hyatt v. Kappos: The En Banc Decision Makes Section 145 Actions More Attractive

The following post comes from Clement S. Roberts (Partner at Durie Tangri and Practice Center Contributor).

Two weeks ago, the Federal Circuit handed down an en banc decision in Hyatt v. Kappos overruling a panel decision and substantially changing the rules for admitting evidence in a §145 action.  Although the decision has not attracted much attention, Hyatt may make §145 actions substantially more attractive and meaningfully alter the strategic landscape for those applicants who wish to pursue their claims beyond a BPAI rejection.

After an applicant’s claims are rejected by the BPAI, the applicant has two basic options—either appeal the  decision to the Federal Circuit, or bring an action in district court under 35 U.S.C. §145.  If the applicant elects to appeal the decision to the Federal Circuit, the appeal is heard on the administrative record created by the PTO and pursuant to the substantial deference standard normal in judicial review of expert administrative proceedings.  In a §145 proceeding, however, some new issues can be raised and (prior to Hyatt) some new evidence could be submitted to the district court. (more…)

Federal Circuit Keeps Door Open For New Evidence In Section 145 Actions

Jeanne Gills, Partner at Foley & Lardner and Practice Center Contributor, sent along an article she wrote with colleagues, Stephen B. Maebius and Courtenay C. Brinckerhoff discussing the  recent Federal Circuit decision in the Hyatt v. Kappos en banc re-hearing.

On Monday, November 8, 2010, the Federal Circuit issued its decision in the en banc re-hearing of Hyatt v. Kappos (No. 2007-1066)). The en banc Court departed from the August 11, 2009 panel decision and held that a patent applicant may introduce new evidence against the USPTO in a district court action under 35 USC § 145 (“Civil Action to Obtain a Patent”) provided such evidence relates to issues that were raised before the USPTO. This decision will be welcomed by patent applicants who have received negative USPTO decisions on patentability, and reflects the realities—and difficulties—of marshalling evidence during patent prosecution. For additional background on the appeal, see Hyatt v. Kappos: Will a Bad Case Make Bad Law?.

The Panel Decision

After the USPTO Board of Patent Appeals and Interferences affirmed certain rejections of his patent application claims, Mr. Hyatt filed an action in the U.S. District Court for the District of Columbia under 35 USC § 145. To support his claim for a patent, Mr. Hyatt submitted a declaration to address the rejections. The district court granted the USPTO’s motion to exclude the declaration because Mr. Hyatt had been negligent in not submitting it during the USPTO proceedings. (more…)