Patent Applicants Have Wide Berth in Appeals

(CN) - The Supreme Court on Wednesday threw out some perceived limits to the evidence that unsuccessful patent applicants can bring in federal civil actions.

Noting that federal law allows such applicants to present evidence in the civil action that he did not present to the Patent and Trademark Office, the court said "there are no evidentiary restrictions beyond those already imposed by the Federal Rules of Evidence and the Federal Rules of Civil Procedure."

When considering new evidence, a federal court should operate under a de novo, rather than elevated, standard of review, according to the 14-page decision. Courts can weigh the evidence based on the opportunity that the applicant had to present it to the patent office.

Unsuccessful patent applicants can either appeal the adverse decision directly to the Federal Circuit, pursuant to Section 141 of the Patent Act, or they can file a civil action against the patent office director in the U.S. District Court for the District of Columbia pursuant to Section 145.

Wednesday's decision pertains to a civil suit that Gilbert Hyatt brought after the patent office denied his patent application that made 117 claims.

Since the office determined that Hyatt's application lacked an adequate written description, Hyatt tried to identify portions of the patent specifications that he felt refuted the not-patentable finding. The District Court said such evidence was not admissible and granted summary judgment to the patent office director.

A divided panel of the Federal Circuit later reversed and came to the same conclusion when it considered the case again en banc.

The Supreme Court sided with the patent applicant as well.

"The director warns that allowing the district court to consider all admissible evidence and to make de novo findings will encourage patent applicants to withhold evidence from the PTO intentionally with the goal of presenting that evidence for the first time to a nonexpert judge," Justice Clarence Thomas wrote for the unanimous court. "We find that scenario unlikely. 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 by presenting new evidence to a district court judge."

A three-page concurring opinion takes issue with the majority's "decision to foreclose a District Court's authority, consistent with '"the ordinary course of equity practice and procedure,"' to exclude evidence 'deliber­ately suppressed' from the PTO or otherwise withheld in bad faith."

"For the reasons set out by the court, an applicant has little to gain by such tactics; such cases will therefore be rare," Justice Sonia Sotomayor wrote. "In keeping with longstanding historical practice, however, I understand courts to retain their ordinary authority to exclude evidence from a §145 proceeding when its admission would be inconsistent with regular equity practice and procedure."

Justice Stephen Breyer joined in Sotomayor's opinion.

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