Supreme Court Affirmance Benefits Patent Applicants: Allows Introduction of New Evidence on Appeal

In Kappos v. Hyatt, the U.S. Supreme Court unanimously affirmed an en banc decision by the U.S. Court of Appeals for the Federal Circuit, finding that, subject only to the Federal Rules of Evidence and the Federal Rules of Civil Procedure, patent applicants are free to introduce new evidence in a district court appeal of a patent rejection. Kappos v. Hyatt, 566 U.S. __ (2012) (aff’g Hyatt v. Kappos, 625 F.3d 1320 (Fed. Cir. 2010) (en banc)). The Court further held that courts must review any new, conflicting evidence de novo. Although the traditional rules regarding evidence in civil actions still apply, the Court’s ruling is beneficial to applicants seeking relief from final decisions rejecting the claims of patent applications pending before the Patent and Trademark Office (PTO).

In the present case, Gilbert Hyatt filed a patent application directed to a software invention, the claims of which were rejected by a PTO examiner under § 112, first paragraph, for lacking adequate written description. Following an appeal to the Board of Patent Appeals and Interferences (Board), which affirmed the examiner’s rejection of a majority of the applicant’s claims, Hyatt filed a civil action under 35 U.S.C. § 145 against the PTO Director. Hyatt presented a written declaration to the court to support his view that the application included a sufficient written description. The court refused to consider the declaration, however, because Hyatt did not provide a reason for failing to present the declaration to the PTO.