Reprinted with permission.
Contributing Author on 2012/05/03
Add comments May 032012
The Supreme Court has issued a new patent law opinion
that could signal a greater need for expert testimony in patent-related civil actions in federal
In the April 18 opinion,
Kappos v. Hyatt, the Supreme Court resolved a question that had divided the U.S. Patent
and Trademark Office and many practitioners. At issue was the extent to which a patent applicant
may present new evidence in court to challenge the USPTO's denial of an application.
When the USPTO denies an application, the applicant has two options for challenging the denial.
The applicant can appeal directly to the U.S. Court of Appeals for the Federal Circuit, under
§141 of the Patent Act, or the applicant can file a civil action against the USPTO director
in the U.S. District Court for the District of Columbia, under §145 of the act.
Under the first option, the Federal Circuit is constrained to review the case based on the same
administrative record relied on by the USPTO. The Federal Circuit can reverse the USPTO's decision
only if it is "unsupported by substantial evidence."
Robert J. Ambrogi is a Massachusetts lawyer who represents clients at the intersection
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By contrast, the second option appears
by the language of the statute to allow an applicant to present new evidence to the District
Court that was not presented to the USPTO. In fact, the Supreme Court had previously suggested
this was so.
USPTO Sought Limits on Evidence
The question here,
however, was the extent to which §145 permits new evidence. The USPTO argued to the Supreme
Court that new evidence should be allowed in a §145 action only when the applicant had no reasonable
opportunity to present it to the USPTO in the first instance.
That had been the ruling
of the District Court. The sole piece of additional evidence the plaintiff had sought to introduce
in this case was a written declaration offered to refute the USPTO's conclusion that his patent
lacked an adequate written description. The District Court refused to consider the declaration,
ruling that applicants are precluded from presenting new evidence in a §145 case, "at least
in the absence of some reason of justice put forward for failure to present the issue" to the
On appeal to the Federal Circuit, a divided panel affirmed the District Court,
holding that §145 and the Administrative Procedure Act imposed restrictions on the admission
of new evidence. Upon rehearing the matter en banc, the full Federal Circuit vacated the District
Court's ruling, concluding that §145 gave applicants free rein to introduce new evidence, subject
only to the rules of evidence and procedure.
‘No Limitations,' Supreme Court
The Supreme Court agreed with the en banc opinion of the Federal Circuit.
In an opinion written by Justice Clarence Thomas, the court held that neither §145 nor the APA
restricted an applicant's ability to present new evidence to the District Court.
the statutory text nor background principles of administrative law support an evidentiary limit
or a heightened standard of review for factual findings in §145 proceedings," Justice Thomas
"[W]e conclude that there are no limitations on a patent applicant's ability to
introduce new evidence in a §145 proceeding beyond those already present in the Federal Rules
of Evidence and the Federal Rules of Civil Procedure."
Also at issue in the appeal to
the Supreme Court was the standard of review the district court should apply when considering
new evidence in a §145 matter. The court concluded that the district court must make a de novo
finding when new evidence is presented on a disputed question of fact.
"If new evidence
is presented on a disputed question of fact," Justice Thomas wrote, "the district court must
make de novo factual findings that take account of both the new evidence and the administrative
record before the PTO."
Justices Sonia M. Sotomayor and Stephen G. Breyer filed a concurring
opinion. In their view, principles of equity would allow the district court to exclude evidence
if it had been "deliberately suppressed" from the USPTO "or otherwise withheld in bad faith."
Door Opened to Experts
The Supreme Court's opinion never discussed
specific types of evidence that might be presented in a §145 action. It follows, however, that
if, as Justice Thomas said, "there are no limitations on a patent applicant's ability to introduce
new evidence," then the new evidence is likely to include expert testimony.
sense, given the limits of the examination process. Dennis Crouch makes this point at his blog,
PatentlyO, where he writes: "In my estimation, some amount of new evidence (such as expert
testimony and test results) can always be obtained after trial. This is especially true because
of the limited manner in which testimony can be presented to an examiner or in an ex parte appeal
to the Board."
Will the Supreme Court's ruling lead applicants to withhold evidence during
examination, as the USPTO argued? Not likely, Justice Thomas said. "An applicant who pursues
such a strategy would be intentionally undermining his claims before the PTO on the speculative
chance that he will gain some advantage in the §145 proceeding."
As with every Supreme
Court opinion, only time will tell its true impact. But the bottom line of Kappos v. Hyatt is
that the court has lifted any limits on the use of new evidence in a §145 trial. That is sure
to mean greater use of expert testimony in these cases going forward.
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