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KAPPOS v. HYATT

Docket No.: 10-1219
Certiorari Granted: 06/27/11
Argued: January 9, 2012
Decided: 04/18/12

Topics:

Administrative Procedure, Civil Procedure, Federal Rules of Civil Procedure, Federal Rules of Evidence, IPO, judicial review, patent, property rights, res judicata, trademark

PartyNames: David J. Kappos, Under Secretary of Commerce for Intellectual Property and Director, Patent and Trademark Office v. Gilbert P. Hyatt
Petitioner: David J. Kappos, Under Secretary of Commerce for Intellectual Property and Director, Patent and Trademark Office
Respondent: Gilbert P. Hyatt

Court Below: United States Court of Appeals for the Federal Circuit
Citation: 625 F.3d 1320

David J. Kappos, Under Secretary of Commerce for Intellectual Property and Director, Patent and Trademark Office
v.
Gilbert P. Hyatt
Background:

When the United States Patent and Trademark Office (PTO) denies an application for a patent, the applicant may seek judicial review of the agency's final action f through either of two avenues. The applicant may obtain direct review of the agency's determination in the Federal Circuit under 35 U.S.C. 141. Alternatively, the applicant may commence a civil action against the Director of the PTO in federal district court under 35 U.S.C. 145. In a Section 145 action, the applicant may in certain circumstances introduce evidence of patentability that was not presented to the agency.

Question Presented:

1. Whether the plaintiff in a Section 145 action may introduce new evidence that could have been presented to the agency in the first instance. 2. Whether, when new evidence is introduced under Section 145, the district court may decide de novo the factual questions to which the evidence pertains, without giving deference to the prior decision of the PTO.

Question:

(1) Can a plaintiff, who is appealing the denial of an application of a patent by commencing a civil action against the Director of the United States Patent and Trademark Office (PTO) in a federal district court pursuant to 35 U.S.C. ยง 145, introduce new evidence that could have been presented to the agency in the first instance? (2) When new evidence is introduced under Section 145, can the district court decide de novo the factual questions to which the evidence pertains, without giving deference to the prior decision of the PTO?

Note:

When the United States Patent and Trademark Office (PTO) denies an application for a patent, the applicant may seek judicial review of the agency's final action f through either of two avenues. The applicant may obtain direct review of the agency's determination in the Federal Circuit under 35 U.S.C. 141. Alternatively, the applicant may commence a civil action against the Director of the PTO in federal district court under 35 U.S.C. 145. In a Section 145 action, the applicant may in certain circumstances introduce evidence of patentability that was not presented to the agency. The questions presented are as follows: 1. Whether the plaintiff in a Section 145 action may introduce new evidence that could have been presented to the agency in the first instance. 2. Whether, when new evidence is introduced under Section 145, the district court may decide de novo the factual questions to which the evidence pertains, without giving deference to the prior decision of the PTO.

KAPPOS v. HYATT
ORAL ARGUMENT

01/09/12

Listen to Oral Argument in KAPPOS v. HYATT
Holding: AFFIRMED AND REMANDED
Vote: 9-0
Majority: Unanimous
Concurring: Sotomayor,Breyer
Opinion By:
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