A Welcome Vacation at the Federal Circuit
Yesterday, the Court of Appeals for the Federal Circuit vacated its decision of August 11, 2009 in Hyatt v. Doll (now Hyatt v. Kappos). That decision determined the extent to which evidence not presented to the Patent and Trademark Office could be used in a district court review under 35 USC Sec. 145. The original panel, in a split decision (Judge Moore, dissenting) held that “on the facts of the case” the district court was not required to admit additional evidence beyond that considered by the PTO.
My initial impression of this decision is that it was wrong in light of the plain language of two statutory sections, 35 USC 141 and 35 USC 145, which are presented as alternative avenues of appeal from decisions of the BPAI.
35 USC 141 governs appeals to the Federal Circuit from the BPAI, and it recites:
An applicant dissatisfied with the decision in an appeal to the Board of Patent Appeals and Interferences under section 134 of this title may appeal the decision to the United States Court of Appeals for the Federal Circuit. By filing such an appeal the applicant waives his or her right to proceed under section 145 of this title….
As typical for appeals from a lower court, such an appeal would be conducted on the evidentiary record developed in that lower court. Thus, there would be no right to add evidence to the PTO record when appealing to the Federal Circuit.
35 USC 145 governs appeals to the district court from decisions of the BPAI, and it recites:
An applicant dissatisfied with the decision of the Board of Patent Appeals and Interferences in an appeal under section 134(a) of this title may, unless appeal has been taken to the United States Court of Appeals for the Federal Circuit, have remedy by civil action against the Director…The court may adjudge that such applicant is entitled to receive a patent for his invention…as the facts in the case may appear….(emphasis added)
As typical for proceedings in a district court civil action, this class of appeal would appear to require development of a factual record beyond that presented to the BPAI. The language “as the facts in the case may appear” establishes that the district court judge should take evidence into the record and make a decision based on that evidence.
The original panel decision in Hyatt v. Doll made much of Hyatt’s recalcitrance before the Board, leading me to think that they made as much of an equitable ruling as a legal one. Unfortunately, that may have led the panel into the Valley of Bad Facts make Bad Law.
The en banc Federal Circuit now has an opportunity to change this ruling and clarify the bounds of evidentiary submission in appeals from the BPAI. The questions presented for en banc rehearing are:
(a) Are there any limitations on the admissibility of evidence in section 145 proceedings? In particular—
(i) Does the Administrative Procedure Act require review on the agency record in proceedings pursuant to section 145?
(ii) Does section 145 provide for a de novo proceeding in the district court?
(iii) If section 145 does not provide for a de novo proceeding in the district court, what limitations exist on the presentation of new evidence before the district court?
(b) Did the district court properly exclude the Hyatt declaration?
Should you wish to participate in the development of this case, “briefs of amici curiae will be entertained, and any such amicus briefs may be filed without leave of court but otherwise must comply with Federal Rule of Appellate Procedure 29 and Federal Circuit Rule 29.”*
*Rule 29. Brief of an Amicus Curiae
(a) Content; Form. In addition to the contents required by Federal Rule of Appellate Procedure 29, the brief of an amicus curiae must include a certifi cate of interest (see Federal Circuit Rule 47.4) in front of the table of contents.