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Intellectual Property – patents — evidence

U.S. Supreme Court


Intellectual Property – patents — evidence

There are no limitations on a patent applicant’s ability to introduce new evidence in a §145 proceeding beyond those already present in the Federal Rules of Evidence and the Federal Rules of Civil Procedure. If new evidence is presented on a disputed question of fact, the district court must make de novo factual findings that take account of both the new evidence and the administrative record before the PTO.

The core language of the 1870 Patent Act, codified as Revised Statute §4915 (R. S. 4915), remains largely unchanged in §145. Decisions interpreting R. S. 4915 thus inform this Court’s understanding of §145. Both Butterworth v. United States ex rel. Hoe, 112 U. S. 50, and Morgan v. Daniels, 153 U. S. 120, describe the nature of R. S. 4915 proceedings, but the two opinions can be perceived as being in some tension. Butterworth described the proceeding as an original civil action seeking de novo adjudication of the merits of a patent application, while Morgan described it as a suit for judicial review of agency action under a deferential standard. The cases are distinguishable, however, because they addressed different circumstances. Butterworth discussed a patent applicant’s challenge to the denial of his application, whereas Morgan involved an interference proceeding that would now be governed by §146, not §145, and in which no new evidence was presented. Here, this Court is concerned only with a §145 proceeding in which new evidence was presented to the District Court, so Butterworth guides this Court’s decision. Thus, a district court conducting a §145 proceeding may consider all competent evidence adduced and is not limited to considering only new evidence that could not have been presented to the PTO. The introduction of new evidence in §145 proceedings is subject only to the Federal Rules of Evidence and the Federal Rules of Civil Procedure, and if new evidence is presented to the district court on a disputed factual question, de novo findings by the district court will be necessary for that new evidence to be taken into account along with the evidence before the Board.

625 F. 3d 1320, affirmed and remanded.

10-1219 Kappos v. Hyatt

Thomas, J.; Sotomayor, J., concurring.

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