New evidence in patent appeals
David J. Kappos v. Hyatt
In brief
The Supreme Court agreed with the appeals court: patent applicants in Section 145 cases may offer new evidence under ordinary rules, and district judges must use it and the PTO record to decide disputed facts.
- Where it stands
- Decided
Decided 9-0 · April 18, 2012 · Opinion by Justice Thomas
- What it’s about
- Hyatt challenged the Patent and Trademark Office’s denial of his patent application in federal court.
- Who it affects
- Patent applicants using a Section 145 case can present new evidence under ordinary federal evidence and procedure rules; district judges must consider it with the PTO record when deciding disputed facts.
Summary: written with AI from the case record.
What it's about
The Supreme Court agreed with the appeals court and sent the case back: he could offer new evidence under ordinary evidence and procedure rules, and the district court must decide disputed facts using both that evidence and the agency record.
Section 145 lets a patent applicant challenge the PTO’s rejection of an application by filing a civil case in federal district court.
Question presented
1. Can a plaintiff, who is appealing the denial of an application of a patent by commencing a civil action against the Director of the United States Patent and Trademark Office (PTO) in a federal district court pursuant to 35 U.S.C. § 145, introduce new evidence that could have been presented to the agency in the first instance? 2. When new evidence is introduced under Section 145, can the district court decide de novo the factual questions to which the evidence pertains, without giving deference to the prior decision of the PTO?
What the Court decided
Holding
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. If new evidence is presented on a disputed question of fact, the district court must make de novo factual findings that take account of both the new evidence and the administrative record before the PTO. Pp. 5 − 14. 625 F. 3d 1320, affirmed and remanded.
- Result
- Affirmed
The Court's reasoning
The Court said new evidence is allowed, subject only to the ordinary federal rules for evidence and civil procedure. When new evidence concerns a disputed fact, the district judge must make an independent finding using both that evidence and the PTO record.
The vote
What's next
The case returns to the lower courts for proceedings under this rule. The district court must make its own findings on disputed facts using any new evidence and the PTO record.
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Opinions
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Opinion added: Kappos
Sources
Primary materials plus reporting. Best-effort analysis: this explainer relies on a mix of primary materials and trusted secondary sources. Official filings and opinions remain authoritative.