Another Supreme Court Patent-Related Opinion

Posted Tuesday, May 1, 2012.

Earlier this year, I wrote that the U.S. Supreme Court takes about one patent case a year. Last month, the Court made a liar out of me, having earlier taken a second patent case and subsequently issuing an opinion in the case of Kappos v. Hyatt.

“Kappos,” is David Kappos, the current Director of the United States Patent and Trademark Office. “Hyatt” is Gilbert Hyatt, a significant figure in the patent world. Mostly, I like this case because of the complicated procedural history.

Mr. Hyatt had applied for a patent, been rejected, and appealed to the USPTO Board of Patent Appeals and Interferences (BPAI). The BPAI affirmed the rejection. At that point, Hyatt had two choices, as all inventors who lose at the BPAI do. He could have appealed the rejection to the Court of Appeals for the Federal Circuit, but instead, he chose Option Two.

Option Two for a disappointed applicant is to file a suit against the Director of the USPTO, asking the court to require the Director to issue the patent. Applicant’s may go this route if they want a judicial proceeding where they can present new evidence that wasn’t already in the record of the patent prosecution. At the CAFC, the appeal (like all appeals) is limited to consideration of the facts already in the record, so if an applicant wants consideration of new evidence the proper route is to sue in the district court in which the USPTO resides.

The D.C. District Court ruled against Mr. Hyatt, refusing to hear new evidence. Hyatt appealed yet again, asking the CAFC (the court with exclusive jurisdiction to hear patent matters) to remand the case to the DDC with instructions to consider Hyatt’s new evidence. An en banc panel of the CAFC agreed with Hyatt, at which point the USPTO appealed to the Supreme Court.

You can read more about the ruling here, but the bottom line is that the Supreme Court affirmed the en banc panel of the CAFC. Disappointed patent applicants who bring suit in the district court to compel the USPTO to issue the patent will continue to be able to introduce new evidence and have it be considered by the court as any new evidence would be.

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