Kappos v. Hyatt
The Supreme Court unanimously ruled that a patent applicant who sues the Patent and Trademark Office in federal district court can introduce new evidence never presented to the agency, limited only by the normal rules of evidence and civil procedure.
When that new evidence conflicts with the agency's factual findings, the trial judge must decide the disputed facts fresh rather than simply defer to the Patent Office, giving inventors a real second chance to prove their case in court.
“The PTO, no matter how great its authority or expertise, cannot account for evidence that it has never seen.”
Explaining why judges cannot defer to the agency's findings once new evidence contradicts them.
How it got here: The district court excluded Hyatt's new declaration and ruled for the PTO; the Federal Circuit, sitting en banc, vacated that ruling, and the PTO Director sought Supreme Court review.
The Case in Depth
What happened
Inventor Gilbert Hyatt filed a patent application with 117 claims; the Patent and Trademark Office rejected all of them for lacking an adequate written description. After the agency's appeals board approved some claims but denied others, Hyatt sued the PTO Director in federal court and tried to submit a written declaration supporting his rejected claims that he had not given the agency.
The question before the Court
If a patent applicant sues the Patent Office in federal court after losing on appeal, can they introduce brand-new evidence the agency never saw?
The Court's answer
Yes — an applicant suing the Patent Office in federal court after losing an appeal can introduce new evidence never given to the agency, limited only by the ordinary Federal Rules of Evidence and Civil Procedure. The Court found nothing in the governing statute or in longstanding practice under its 19th-century predecessor that imposes any special evidentiary restriction on these lawsuits.
When that new evidence creates a factual dispute, the trial judge cannot simply defer to the agency's earlier findings — the judge must resolve the disputed facts fresh, considering both the new evidence and the existing agency record together. The judge may still weigh whether the applicant had a fair chance to present that evidence to the agency earlier when deciding how much credit to give it.
Curious how the Court got there? See the step-by-step legal reasoning →
Why it matters
Patent applicants whose claims are rejected by the agency now have a meaningful path to introduce testimony, documents, or other proof in federal court that they never gave the Patent Office — including live witness testimony the agency doesn't normally take. This makes district court lawsuits against the agency a more powerful alternative to a direct appeal, potentially changing how applicants and their lawyers choose to challenge rejections.
What changes now
The case returns to the Federal Circuit, and from there presumably to the district court, to apply the new rule: Hyatt's excluded declaration should be considered, and any resulting factual disputes must be decided fresh by the trial judge rather than under the deferential standard used before. This is a final merits ruling that settles how these lawsuits work nationwide, though the underlying dispute over Hyatt's specific patent claims continues on remand.
What this does not decide
The Court did not decide how much weight the new evidence should get — it left that to the trial judge's discretion, noting a judge may still consider whether the applicant could have given the evidence to the agency earlier. It also did not resolve when a court could exclude evidence deliberately withheld in bad faith, a point Justice Sotomayor's concurrence flagged as still open.
Concurrences and dissents
Concurrence — Justice Sotomayor
Justice Sotomayor agreed fully with the Court's reasoning but wrote separately to stress that courts retain some equitable power to exclude evidence an applicant deliberately withheld from the Patent Office in bad faith, even though ordinary negligence or oversight should not bar new evidence. She cited an old case where a company that had refused to answer questions before the agency was later barred from introducing that same evidence in court, framing this as a narrow, rarely-used safeguard against gamesmanship rather than a general limit on new evidence.
How the Court got there
The legal reasoning, step by step
- The Court looked first at the text of the statute governing these lawsuits, which lets an applicant bring a 'civil action' against the Director and says the court may decide the matter 'as the facts in the case may appear' — language that neither restricts what evidence can be used nor tells judges to defer to the agency's fact-finding.
- The Court rejected the government's argument that ordinary administrative-law principles should still require deference to the agency's findings, reasoning that once a court is considering evidence the agency never saw, it is acting as the fact-finder itself and cannot sensibly defer to findings that new evidence contradicts.
- The Court also rejected the argument that applicants must have exhausted every opportunity to present evidence to the agency first, explaining that the doctrine of exhaustion exists mainly to avoid interrupting an agency's process before it finishes — and here the agency's process is already complete by the time the lawsuit begins.
- Turning to a 19th-century predecessor statute with nearly identical wording, the Court found that its own earlier decisions described this kind of lawsuit as an original, independent proceeding under ordinary equity court rules, not a limited appeal on the existing agency record.
- Combining the statute's text and this historical understanding, the Court held that the only limits on new evidence are the everyday Federal Rules of Evidence and Civil Procedure, and that when new evidence creates a factual dispute, the trial judge must resolve that dispute fresh (de novo) rather than deferring to the agency.
Doctrinal impact
Cases affected by this decision
Distinguishes Morgan v. Daniels (153 U. S. 120)
The Court said this earlier deferential-review case involved a different kind of proceeding with no new evidence, so it doesn't control here.
Reaffirms Butterworth v. United States ex rel. Hoe (112 U. S. 50)
The Court relied on this older case's description of these lawsuits as independent equity proceedings open to new evidence.