Issue(s): Was the CAFC panel correct rejecting Plaintiff’s Declaration because he did not previously submit it to the examiner or the Board ?
GILBERT P. HYATT, Plaintiff-Appellant, v. DAVID KAPPOS, DIRECTOR, PATENT AND TRADEMARK OFFICE, Defendant-Appellee. (2007-1066) Appeal from the D. Court of the District of Columbia in case No. 03-CV-901, Judge Henry H. Kennedy, Jr. (Decided: November 8, 2010, Precedential) Before RADER, NEWMAN, LOURIE, BRYSON, GAJARSA, LINN, DYK, PROST, and MOORE
Facts: Under the patent laws, a patent applicant who is dissatisfied with the decision of the Board of Patent Appeals and Interferences regarding his application may choose one of two paths. The applicant may appeal the Board’s decision to the Court of Appeals for the Federal Circuit, which will review the Board’s decision on the record that was before the Patent Office. Alternatively, the applicant may file a civil action in district court, and the court will determine whether the applicant “is entitled to receive a patent for his invention . . . as the facts in the case may appear.” 35 U.S.C. § 145. This case presents the issue of what limitations exist on an applicant’s right to introduce new evidence in a § 145 civil action.
Gilbert P. Hyatt is the sole named inventor of U.S. Patent Application No. 08/471,702 (the ’702 application), titled “Improved Memory Architecture Having a Multiple Buffer Output Arrangement.” The ’702 application relates to a computerized display system for processing image information and contained 117 claims.
The examiner issued 2546 separate rejections of Mr. Hyatt’s 117 claims. Mr. Hyatt appealed to the Board, addressing every one of the examiner’s grounds for rejection in a 129-page appeal brief. Mr. Hyatt prevailed on over 93% of the examiner’s rejections at the Board level. The Board affirmed at least one of the examiner’s written description and enablement rejections with respect to each of 79 claims. Mr. Hyatt then filed a civil action in the United States District Court for the District of Columbia against the Director of the Patent Office (Director) pursuant to 35 U.S.C. § 145.
Lower Court’s Disposition: At the District Court level the Director moved for summary judgment that the pending claims were invalid for failure to comply with the written description requirement. Mr. Hyatt opposed the motion, arguing that genuine issues of material fact existed to preclude summary judgment as to written description. In support of his opposition, Mr. Hyatt submitted a written declaration in which he identified portions of the specification that one of skill in the art would understand to describe the limitations challenged by the Director. The Director argued that the court should not consider Mr. Hyatt’s declaration because he did not previously submit it to the examiner or the Board.
The district court determined that it could not consider Mr. Hyatt’s declaration. Because Mr. Hyatt’s declaration was directed to those written description rejections, the court concluded that he could have presented the declaration earlier, “certainly by the time his patent application was considered by the Board.” Finding that Mr. Hyatt had no explanation for why he failed to offer his declaration during the proceedings before the Board, the court determined that “[Mr.] Hyatt’s failure to explain why he didn’t submit his declaration earlier is negligent, and the district court need not consider evidence negligently submitted after the end of administrative proceedings.”
Mr. Hyatt appealed, and a divided panel of the CAFC affirmed. Hyatt v. Doll, 576 F.3d 1246 (Fed. Cir. 2009). The CAFC then agreed to rehear the appeal en banc and vacated the judgment of the panel.
Findings on Appeal (en banc rehearing): We have characterized this civil action as a “hybrid” action. It is not an appeal; the language of § 145 expressly distinguishes its civil action from a direct appeal, and the Supreme Court has recognized that an applicant may introduce new evidence before the district court that was not presented to the Patent Office. However, it is also not an entirely de novo proceeding. Issues that were not considered by the Patent Office cannot be raised with the district court in most circumstances, and if no new evidence is introduced, the court reviews the action on the administrative record, subject to the court/agency standard of review. The particular significance of a § 145 civil action is that it affords an applicant the opportunity to introduce new evidence after the close of the administrative proceedings—and once an applicant introduces new evidence on an issue, the district court reviews that issue de novo. Thus, an applicant’s ability to introduce new evidence is the hallmark of a § 145 action. It is the primary factor that distinguishes a civil action under § 145 from an appeal.
We hold that 35 U.S.C. § 145 imposes no limitation on an applicant’s right to introduce new evidence before the district court, apart from the evidentiary limitations applicable to all civil actions contained in the Federal Rules of Evidence and Federal Rules of Civil Procedure.
Allen’s Observations: After 2546 separate rejections, 117 claims, 129-pages of a BPAI appeal brief, a BPAI hearing, one district court hearing, and two CAFC hearings, Mr. Hyatt still does not have a final decision on the merits of his case. This patent must be worth a fortune.