Kappos v. Hyatt

Background

A patent applicant (Gilbert Hyatt) sued the Director of the Patent and Trademark Office after many of his patent claims were denied for lack of an adequate written description. Hyatt filed a civil action under the statute that lets rejected applicants go to district court and submitted a written declaration that he had not presented to the PTO. The District Court excluded that declaration, reviewed the PTO record under a deferential standard, and granted judgment for the Director; the Federal Circuit later vacated that ruling and this Court reviewed the legal questions.

Reasoning

The Court addressed two basic questions: whether applicants face special limits on offering new evidence in a district-court action, and what standard courts should use when that new evidence conflicts with the PTO’s findings. The Court held that §145 contains no special evidentiary limits beyond the Federal Rules of Evidence and Civil Procedure. When new, disputed factual evidence is presented, the district court acts as a factfinder and must make de novo factual findings. The court may, however, consider whether the PTO saw the evidence when deciding how much weight to give it. The Court rejected arguments that ordinary administrative-law limits or exhaustion rules should bar new evidence or require deference.

Real world impact

Patent applicants nationwide can bring evidence to district court that they did not present to the PTO, and district judges will decide disputed facts anew when such evidence appears. The PTO’s factual findings retain persuasive force only to the extent they reflect the same evidence.

Dissents or concurrances

A concurrence (joined by Justice Breyer) stresses that courts sitting in equity may still exclude evidence deliberately withheld in bad faith, preserving limited equitable authority.