Kappos v. Hyatt
132 S. Ct. 1690
| SCOTUS | 2012Background
- §145 allows patent applicants to sue the Director in district court after PTO denial, with potential new evidence.
- In §141 appeals, review is on the administrative record with no new evidence and substantial-evidence standard under APA.
- Zurko holds §145 proceedings may admit new evidence and require de novo factfinding when such evidence is disputed.
- Hyatt v. Dudas involved district court exclusion of Hyatt's new declaration, prompting review of evidentiary standards.
- The en banc Federal Circuit held there are no extra evidentiary limits beyond FR&E and FRCP, and de novo findings for new evidence.
- Butterworth and Morgan provide historical context: §4915-type proceedings are equity-like, with full evidence freedom and potential de novo factfinding.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Are there evidentiary restrictions in §145 beyond the Federal Rules? | Hyatt: no extra limits beyond FR&E/FRCP. | Director: administrative-law limits apply and deference warranted. | No additional evidentiary restrictions beyond FR&E and FRCP. |
| What standard of review applies to new evidence in §145? | District court can weigh new evidence with de novo factfinding. | PTO findings deserve deference when uncontested by new evidence. | District court conducts de novo findings on disputed facts with weight given to new evidence alongside the record. |
| Does §145 require administrative exhaustion or deferential review? | No exhaustion requirement; district court is factfinder for new evidence. | Administrative-process principles should govern admissibility and review. | Exhaustion principles do not apply; no deferential review for new evidence. |
| Should historical §4915 equity practice influence §145 procedures? | §145 proceedings are like ordinary equity actions with full evidence. | Historical view supports limited review and special procedures. | §145 proceeds may admit all competent evidence; de novo factfinding when needed. |
Key Cases Cited
- Butterworth v. United States ex rel. Hoe, 112 U.S. 50 (1884) (equity-like, hear on all competent evidence; not a mere technical appeal)
- Morgan v. Daniels, 153 U.S. 120 (1894) (R. S. 4915 context; not independent review; deferential aspects discussed)
- Gandy v. Marble, 122 U.S. 432 (1887) (describes §4915 proceeding as equity-style suit)
- Barrett Co. v. Koppers Co., 22 F.2d 395 (3rd Cir. 1927) (equitable authority to exclude evidence limited; bad-faith withholding cautioned)
- Dowling v. Jones, 67 F.2d 537 (2d Cir. 1933) (recording of equity-practice limits on withheld evidence)
- Fregeau v. Mossinghoff, 776 F.2d 1034 (Fed. Cir. 1985) (de novo findings when new evidence affects fact questions)
- Microsoft Corp. v. i4i Ltd. Partnership, 564 U.S. 91 (2011) (PTO facts and de novo weight considerations discussed in modern context)
- Zurko v. Dickinson, 527 U.S. 150 (1999) (APA substantively limits and clarifies review of agency findings; new evidence in §145 context)