Lead Opinion
delivered the opinion of the Court.
The Patent Act of 1952, 35 U. S. C. § 100 et seq., grants a patent applicant whose claims are denied by the Patent and Trademark Office (PTO) the opportunity to challenge the PTO’s decision by filing a civil action against the Director of the PTO in federal district court. In such a proceeding, the applicant may present evidence to the district court that he did not present to the PTO. This case requires us to consider two questions.. First, we must decide whether there are any limitations on the applicant’s ability to introduce new evidence before the district court. For the reasons set forth below, we conclude that there are no evidentiary restrictions beyond those already imposed by the Federal Rules of Evidence and the Federal Rules of Civil Procedure. Second, we must determine what standard of review the district court should apply when considering new evidence. On this
I
The Patent Act of 1952 establishes the process by which the PTO examines patent applications. A patent examiner first determines whether the application satisfies the statutory prerequisites for granting a patent. 35 U. S. C. § 131. If the examiner denies the application, the applicant may file an administrative appeal with the PTO’s Board of Patent Appeals and Interferences (Board). § 134. If the Board also denies the application, the Patent Act gives the disappointed applicant two options for judicial review of the Board’s decision. The applicant may either: (1) appeal the decision directly to the United States Court of Appeals for the Federal Circuit, pursuant to § 141; or (2) file a civil action against the Director of the PTO in the United States District Court for the District of Columbia pursuant to § 145.
In a § 141 proceeding, the Federal Circuit must review the PTO’s decision on the same administrative record that was before the PTO. § 144. Thus, there is no opportunity for the applicant to offer new evidence in such a proceeding. In
In Zurko, we also noted that, unlike § 141, § 145 permits the applicant to present new evidence to the district court that was not presented to the PTO.
I — I HH
In 1995, respondent Gilbert Hyatt filed a patent application that, as amended, included 117 claims. The PTO’s patent examiner denied each claim for lack of an adequate written description. See 35 U. S. C. § 112 (requiring patent applications to include a “specification” that provides, among other information, a written description of the invention and of the manner and process of making and using it). Hyatt appealed the examiner’s decision to the Board, which eventually approved 38 claims, but denied the rest. Hyatt then filed a § 145 action in Federal District Court against the Director of the PTO (Director), petitioner here.
To refute the Board’s conclusion that his patent application lacked an adequate written description, Hyatt submitted- a written declaration to the District Court. In the declaration, Hyatt identified portions of the patent specification that, in his view, supported the claims that the Board held
Hyatt appealed to the Federal Circuit. A divided panel affirmed, holding that the APA imposed restrictions on the admission of new evidence in a § 145 proceeding and that the district court’s review is not “wholly de novo.” Hyatt v. Doll,
The Director challenges both aspects of the Federal Circuit's decision. First, the Director argues that a district court should admit new evidence in a § 145 action only if the proponent of the evidence had no reasonable opportunity to present it to the PTO in the first instance. Second, the Director contends that, when new evidence is introduced, the district court should overturn the PTO’s factual findings only if the new evidence clearly establishes that the agency erred. Both of these arguments share the premise that § 145 creates a special proceeding that is distinct from a typical civil suit filed in federal district court and that is thus governed by a different set of procedural rules. To support this interpretation of § 145, the Director relies on background principles of administrative law and pre-existing practice under a patent statute that predated § 145. For the reasons discussed below, we find that neither of these factors justifies a new evidentiary rule or a heightened standard of review for factual findings in § 145 proceedings.
A
To address the Director’s challenges, we begin with the text of § 145. See, e. g., Magwood, v. Patterson,
In the absence of express support for his position in the text of § 145, the Director argues that the statute should be read in light of traditional principles of administrative law, which Congress codified in the APA. The Director notes that § 145 requires a district court to review the reasoned decisionmaking of the PTO, an executive agency with specific authority and expertise. Accordingly, the Director contends that a district court should defer to the PTO’s factual findings. The Director further contends that, given the traditional rule that a party must exhaust his administrative remedies, a district court should consider new evidence only if the party did not have an opportunity to present it to the agency.
We reject the Director’s contention that background principles of administrative law govern the admissibility of new evidence and require a deferential standard of review in a §145 proceeding. Under the APA, judicial review of an agency decision is typically limited to the administrative record. See 5 U. S. C. § 706. But, ás the Director concedes, § 145 proceedings are not so limited, for the district court may consider new evidence. When the district court does so, it must act as a factfinder. Zurko,
We also conclude that the principles of administrative exhaustion do not apply in a § 145 proceeding. The Director argues that applicants must present all available evidence to the PTO to permit the PTO to develop the necessary facts and to give the PTO the opportunity to properly apply the
C
Having concluded that neither the statutory text nor background principles of administrative law support an eviden-tiary limit or a heightened standard of review for factual findings in § 145 proceedings, we turn to the evidentiary and procedural rules that were in effect when Congress enacted § 145 in 1952. Although § 145 is a relatively modern statute, the language in that provision originated in the Act of July 8, 1870 (1870 Act), ch. 230, 16 Stat. 198, and the history of § 145 proceedings can be traced back to the Act of July 4, 1836 (1836 Act), ch. 357, 5 Stat. 117. Thus, we begin our inquiry with the 1836 Act, which established the Patent Office, the PTO’s predecessor, and first authorized judicial review of its decisions.
1
The 1836 Act provided that a patent applicant could bring a bill in equity in federal district court if his application was
In 1870, Congress amended the Patent Act again, adding intermediate layers of administrative review and introducing language describing the proceeding in the district court. 16 Stat. 198. Under the 1870 Act, an applicant denied a patent by the primary examiner could appeal first to a three-member board of examiners-in-chief, then to the Commissioner for Patents, and finally to an en banc sitting of the Supreme Court of the District of Columbia.
2
This Court described the nature of R. S. 4915 proceedings in two different cases: Butterworth v. United States ex rel. Hoe,
“a proceeding in a court of the United States having original equity jurisdiction under the patent laws, according to the ordinary course of equity practice and procedure. It is not a technical appeal from the Patent Office, like that authorized [before the Supreme Court of the District of Columbia], confined to the case as made in the record of that office, but is' prepared and heard upon all competent evidence adduced and upon the whole merits.”112 U. S., at 61 .
The Butterworth Court also cited several lower court cases, which similarly described R. S. 4915 proceedings as “altogether independent” from the hearings before the Patent Office and made clear that the parties were “at liberty to introduce additional evidence” under “the rules and practice of a court of equity.” In re Squire,
Ten years later, in Morgan, this Court again confronted a ease involving proceedings under R. S. 4915.
Viewing Butterworth and Morgan together, one might perceive some tension between the two cases. Butterworth appears to describe an R. S. 4915 proceeding as an original civil action, seeking de novo adjudication of the merits of a patent application. Morgan, on the other hand, appears to describe an R. S. 4915 proceeding as a suit for judicial review of agency action, governed by a deferential standard of review. To resolve that apparent tension, the Director urges us to disregard the language in Butterworth as mere dicta and to follow Morgan. He argues that Butterworth “shed[s] no light on the extent to which new evidence was admissible in R. S. 4915 proceedings or on the standard of review that applied'in such suits.” Brief for Petitioner 33. The Director maintains that Morgan, in contrast, firmly established that a district court in such a proceeding performs a deferential form of review, governed by traditional principles of administrative law. We reject the Director’s position.
Morgan, on the other hand, concerned a different situation from the one presented in this case. First, Morgan addressed an interference proceeding. See
3
Because in this case we are concerned only with § 145 proceedings in which new evidence has been presented to the District Court, Butterworth rather than Morgan guides our decision. In Butterworth, this Court observed that an R. S. 4915 proceeding should be conducted “according to the ordinary course of equity practice and procedure” and that it should be “prepared and heard upon all competent evidence adduced and upon the whole merits.”
We also agree with the Federal Circuit’s longstanding view that, “where new evidence is presented to the district court on a disputed fact question, a de novo finding will be necessary to take such evidence into account together with the evidence before the board.” Fregeau v. Mossinghoff,
D
Although we reject the Director’s proposal for a stricter evidentiary rule and an elevated standard of review in § 145 proceedings, we agree with the Federal Circuit that the district court may, in its discretion, “consider the proceedings before and findings of the Patent Office in deciding what weight to afford an applicant’s newly-admitted evidence.”
The Director warns that allowing the district court to consider all admissible evidence and to make de novo findings will encourage patent applicants to withhold evidence from the PTO intentionally with the goal of presenting that evidence for the first time to a nonexpert judge. Brief for Petitioner 23. We find that scenario unlikely. An applicant who pursues such a strategy would be intentionally undermining his claims before the PTO on the speculative chance that he will gain some advantage in the § 145 proceeding by presenting new evidence to a district court judge.
HH <1
.For these reasons, we conclude that there are no limitations on a patent applicant’s ability to introduce new evidence in a § 145 proceeding beyond those already present in
The judgment is affirmed, and the case is remanded to the Court of Appeals for further proceedings consistent with this opinion.
It is so ordered.
Notes
On September 16,2011, the President signed the Leahy-Smith America Invents Act, 125 Stat. 284, into law. That Act made significant changes to Title 35 of the United States Code, some of which are related to the subject matter of this case. For example, the Act changed the venue for §145 actions from the United States District Court for the District of Columbia to the United States District Court for the Eastern District of Virginia, id., at 316, changed the name of the Board of Patent Appeals and Interferences to the Patent Trial and Appeal Board, id., at 290, and changed the name of interferences to derivation proceedings, ibid. Neither party contends that the Act has any effect on the questions before us, and all references and citations in this opinion are to the law as it existed prior to the Act.
The Supreme Court of the District of Columbia was a trial court created by Congress in 1863. Act of Mar. 3, 1863, ch. 91, 12 Stat. 762. Although the court was generally one of first instance, it also functioned as an appellate court when it sat en banc. Voorhees, The District of Columbia Courts: A Judicial Anomaly, 29 Cath. U. L. Rev. 917, 923 (1980).
Both parties cite additional cases from the lower courts that they claim support their view of the statute, but these eases are too diverse to support any firm inferences about Congress’ likely intent in enacting § 145.
In Gandy v. Marble,
Concurrence Opinion
with whom Justice Breyer joins, concurring.
As the Court today recognizes, a litigant in a 35 U. S. C. § 145 proceeding is permitted to introduce evidence not presented to the Patent and Trademark Office (PTO) “ ‘according to the ordinary course of equity practice and procedure.’ ” Ante, at 441 (quoting Butterworth v. United States ex rel. Hoe,
For the reasons the Court articulates, §145 proceedings are not limited to the administrative record developed • before the PTO and applicants are entitled to present new evidence to the district court. Accordingly, as Judge Hand suggested, a court’s equitable authority to exclude evidence in such proceedings is limited, and must be exercised with caution. See Dowling,
With those observations, I join the Court’s opinion in full.
