Hyatt v. Kappos
625 F.3d 1320
| Fed. Cir. | 2010Background
- Hyatt sought a patent under 35 U.S.C. §145 after Board rejection of his '702 memory architecture application.
- §145 action allows new evidence not presented to the Patent Office, creating a hybrid, de novo/fact-finding mix.
- The district court excluded Hyatt’s declaration on evidentiary grounds, limiting consideration to the record before the Patent Office.
- The en banc court held §145 permits new evidence freely under the Federal Rules, and tailors weight by credibility as with any civil action.
- The majority vacated and remanded to consider Hyatt’s declaration, rejecting Director’s argued evidentiary restriction.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| What evidence limits apply in §145 actions? | Hyatt: only Federal Rules apply; no extra limits. | Director: limits mirroring equity/bill-in-precursor, plus APA concerns. | Only Federal Rules of Evidence and Civil Procedure apply. |
| Is §145 a de novo proceeding by default? | §145 provides de novo determination with new evidence. | Procedural constraints resemble agency review with some deference. | Section 145 is de novo for issues with new evidence; agency record remains relevant for weight. |
| May evidence not presented to PTO be admitted? | Yes, broad admission allowed. | No, should be limited to evidence not reasonably provided earlier. | New evidence admissible; no reasonable-excuse limitation. |
| Was Hyatt’s declaration properly excluded? | District court abused discretion by applying wrong standard. | Exclusion appropriate given negligence in not submitting earlier. | District court erred; Hyatt’s declaration should be considered on remand. |
Key Cases Cited
- Butterworth v. Hoe, 112 U.S. 50 (1884) (remedy by bill in equity; not a technical appeal; may admit new evidence)
- Gandy v. Marble, 122 U.S. 432 (1887) (§4915 not a technical appeal; may admit new evidence)
- Morgan v. Daniels, 153 U.S. 120 (1894) (bill in equity context; standard of review discussed)
- Zurko v. Dickinson, 527 U.S. 150 (1999) (APA review standards; deference vs. de novo in agency review)
- Fregeau v. Mossinghoff, 776 F.2d 1034 (Fed. Cir. 1985) (new evidence in §145 action; de novo findings with new evidence)
- Mazzari v. Rogan, 323 F.3d 1000 (Fed. Cir. 2003) (de novo fact findings when new evidence conflicts with PTO findings)