Kappos v. Hyatt

PETITIONER: David J. Kappos, Under Secretary of Commerce for Intellectual Property and Director, Patent and Trademark Office
RESPONDENT: Gilbert P. Hyatt
LOCATION: San Diego Immigration Court

DOCKET NO.: 10-1219
DECIDED BY: Roberts Court (2010-2016)
LOWER COURT: United States Court of Appeals for the Federal Circuit

CITATION: 566 US (2012)
GRANTED: Jun 27, 2011
ARGUED: Jan 09, 2012
DECIDED: Apr 18, 2012

Aaron M. Panner - for the respondent
Ginger D. Anders - on behalf of the petitioner
Ginger D. Anders - Assistant to the Solicitor General, Department of Justice, for the petitioner

Facts of the case

When the U.S. Patent and Trademark Office denies an application for a patent, the applicant may seek judicial review of the agency's final action by one of two means. The applicant may obtain direct review of the agency's determination in the U.S. Court of Appeals for the Federal Circuit. Alternatively, the applicant may commence a civil action against the director of the PTO in federal district court. The court will decide whether a plaintiff in a civil (§ 145) action may introduce new evidence that could have been presented to the agency in the first instance. The court will also consider whether, when new evidence is introduced under § 145, the district court may decide the factual questions to which the evidence pertains, without giving deference to the prior decision of the PTO.

Gilbert P. Hyatt's patent application and subsequent claims were rejected. Hyatt appealed to the U.S. Board of Patent Appeals and Interferences. The Board reversed most of the examiner's written description rejections, but upheld some. Hyatt filed a request for rehearing on the rejected claims, which the Board dismissed on the basis that it raised new issues that could have been raised to either the examiner or the Board. Hyatt responded by filing a civil action at the U.S. District Court for the District of Columbia under §145. He submitted a declaration supporting his new and amended claims. The PTO objected to the declaration, arguing that the district court should not consider the new evidence because Hyatt did not introduce it to either the Board or the examiner. The district court agreed with the PTO, ruling that Hyatt's failure to present the evidence to the PTO constituted a negligent act. The U.S. Court of Appeals for the Federal Circuit reversed the district court's decision.


(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?

Media for Kappos v. Hyatt

Audio Transcription for Oral Argument - January 09, 2012 in Kappos v. Hyatt

Audio Transcription for Opinion Announcement - April 18, 2012 in Kappos v. Hyatt

John G. Roberts, Jr.:

Justice Thomas has our opinion this morning in Case 10-1219, Kappos versus Hyatt.

Clarence Thomas:

This case comes to us on a writ of certiorari to the -- the United States Court of Appeal for the Federal Circuit.

Gilbert Hyatt filed a patent application covering multiple claims.

An examiner in the Patent and Trademark Office (PTO) denied all of Hyatt's claims for lack of an adequate written description.

Hyatt appealed PTO's Board of Patent Appeals and Interferences, which approved some claims, but denied others.

Pursuant to Section 145 of Title 35 of the United States Code, Hyatt sought review of the Board's decision by filing a civil action in Federal District Court against the Director of PTO.

Before the District Court, Hyatt offered for the first time a written declaration in support of the adequacy of his patent application.

The District Court declined to consider that new evidence because Hyatt had not provided a sufficient reason for his failure to present it to the PTO.

Without the declaration, the only evidence remaining before the District Court was the PTO's administrative record.

Following Federal Circuit precedent, the District Court applied the Administrative Procedure Act's deferential substantive evidence standard to the PTO's findings and granted summary judgment to the Director.

On appeal, the Federal Circuit vacated the judgment holding that patent applicants can introduce new evidence in Section 145 proceedings subject only to the limitations in the Federal Rules of Evidence and the Federal Rules of Civil Procedure.

It also reaffirmed its precedent that when new conflicting evidence is introduced before the District Court, that Court must make de novo findings to make -- to take such evidence into account.

In an opinion filed with the clerk today, we affirm.

The text of Section 145 neither imposes limits on the presentation of new evidence in District Court nor establishes a heightened standard of review for PTO factual findings.

Nonetheless -- nonetheless, the Director of PTO contends that background principles of administrative law restrict the admissibility of new evidence and impose a differential standard of review in Section 145 proceedings.

We disagree.

As the Director concedes, judicial review in Section 145 proceedings is not limited to administrative record before the -- to the administrative record before the District Court and -- and the District Court -- because the District Court may consider new evidence.

If it does so, the District Court must act as fact finder and cannot give deference to PTO's -- to the PTO's factual findings when those findings are contradicted by new evidence.

Moreover, the primary purpose of the administrative exhaustion doctrine is the avoidance of premature interruption of the administrative process.

That rationale does not apply here because the PTO process is complete by the time a Section 145 proceeding occurs.

Our decision in this case is guided by this Court's previous opinion in Butterworth versus the United States.

In that case, this Court described the predecessor to Section 145 proceeding as an original civil action seeking de novo adjudication of the merits of a patent application.

Although another of this Court's cases, that would be Morgan versus Daniels, appears to take a conflicting view, that case is distinguishable because it involved an interference proceeding in which no new evidence was presented, a different context than the one presented here.

In this case, we are concerned only with a Section 145 proceeding in which new evidence was presented to the District Court.

Thus applying Butterworth's guidance, we hold that a District Court conducting a Section 145 proceeding may consider all competent evidence adduced and is not limited to considering only new evidence that could not have been presented to the PTO.

We note, however, that the District Court may consider whether the patent applicant had an opportunity to present the newly proffered evidence to the PTO when deciding what weight to afford that evidence.

The judgment of the Court of Appeals is affirmed.

Justice Sotomayor has filed a concurring opinion, in which Justice Breyer joins.