Hyatt v. Kappos: Federal Circuit Opens Door to Post-BPAI Civil Actions

By Dennis Crouch

Hyatt v. Kappos (Fed. Cir. 2010) (en banc)

Summary: In a 6-2-1 en banc decision, the Federal Circuit has reversed its prior precedent and held that a patent applicant must be allowed to introduce new evidence in a Section 145 civil action filed to challenge a USPTO refusal to grant patent rights and that the issues implicated by the new facts must be considered de novo.

[W]e hold that the only limitations on the admissibility of evidence applicable to a § 145 proceeding are the limitations imposed by the Federal Rules of Evidence and Federal Rules of Civil Procedure. Therefore, we hold that the district court applied the wrong legal standard for the admissibility of evidence in a § 145 proceeding and abused its discretion when it excluded Mr. Hyatt's declaration. . . .

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 administra-tive proceedings—and once an applicant introduces new evidence on an issue, the district court reviews that issue de novo.

However, the Court also wrote that an applicant may still be barred from presenting new "issues" in the civil action and that, when no new evidence is presented, that BPAI findings and rulings should be given deference under the Administrative Procedures Act.

Impact: This decision could be seen as relieving some pressure on applicants to ensure that their cases for patentability are exhaustively presented to the USPTO's internal Board of Patent Appeals and Interferences (BPAI). The decision is especially important in light of the growing role of BPAI appeals in the ordinary course of patent prosecution. In its argument, the USPTO suggests that a strategic applicant may now choose hold-back some evidence from the BPAI appeal in order to overcome the APA deference if the case goes to the District Court.

Statute in Question: 35 U.S.C. § 145 creates a right to a "civil action" in Federal District Court against the USPTO Director whenever an applicant is "dissatisfied with the decision of the Board of Patent Appeals and Interferences in an appeal under section 134(a)." In the alternative, an applicant may appeal directly to the Court of Appeals for the Federal Circuit.

Background: Gil Hyatt is a well-known inventor and successful patentee. Hyatt filed a civil action in 2003 after the BPAI sustained written description and enablement rejections for seventy-nine of Hyatt's claims. The examiner had issued "2546 separate rejections of Mr. Hyatt's 117 claims" based on the doctrines of inadequate "written description, lack of enablement, double patenting, anticipation, and obviousness." The Board reversed all of the examiner rejections except for the § 112 p1 arguments. Complicating this case is the fact that the application's claimed priority date is 1975. Hyatt has aggressively pushed the bounds of USPTO practice. This decision is one of more than a dozen Federal Circuit decisions focusing on Hyatt's patent rights. When California pursued Hyatt for tax revenue for his patent licenses, Hyatt took the case to the Supreme Court and eventually won a $388 million judgment against the state of California for invasion of privacy.

After the Board affirmed a set of written description and enablement rejections, Hyatt filed a Section 145 civil action and included a declaration offering new evidence of enablement and written description. The district court excluded that inventor-declaration from evidence based on Hyatt's "negligence" in failing to previously submit the information to the PTO. In a 2009 panel decision, the Federal Circuit held that the district court had properly excluded the new evidence – holding that the district court may properly exclude evidence that Hyatt should have produced to the PTO. That opinion was penned by former Chief Judge Michel and Joined by Judge Dyk. Judge Moore wrote a vigorous dissent that supported a patent applicant's right to a full civil action including the right to submit additional evidence when challenging a PTO decision.

Judge Moore wrote the en banc decision that was joined by Chief Judge Rader and Judges Lourie, Bryson, Linn, and Prost. Judge Dyk dissented and was joined by Judge Gajarsa. Judge Newman Concurred-in-Part – arguing that the civil action should not give deference to PTO factual determinations.

A key to the majority decision is the notion that a Section 145 civil action is not an appeal, but rather a new, separate lawsuit filed to force the PTO to act. In its analysis, the court began with a focus on the 150-year history of the civil action right (and its predecessor Bill in Equity) and the reality that new evidence has always a part of those remedies. See, e.g., Gandy v. Marble, 122 U.S. 432 (1887) (explaining that the [predecessor] § 4915 suit in equity was "not a technical appeal from the Patent Office, nor confined to the case as made in the record on that office"). The court then reviewed the current text of the statute, implications of the APA, and various policy arguments before reaching its conclusions.

In a 37-page dissent, Judge Dyk argued that the majority made an improper leap from (1) the correct premise that new evidence should be admissible in the civil action to (2) the incorrect conclusion that the law provides no meaningful limits on the introduction of new evidence regardless of what was presented at the BPAI.

Notes:

74 thoughts on “Hyatt v. Kappos: Federal Circuit Opens Door to Post-BPAI Civil Actions

  1. Now I understand the essence of the conversations earlier on the threats to A.B.and C. I suppose I am A. I must be. Without A there is no damage to B and C. I appreciate the Sculpture analogy.

  2. Nobody expects the Patent Inquisition!

    cue the movie screen shot O 6 riding in, trailing under his horse, foot in stirrup and underwear on head.

  3. “Actually I will come charging in…”

    There’s nothing like invincible ignorance. Those plagued with it just keep providing the lulz.

  4. Actually I will come charging in here and, rather than tell you he’s got it all wrong, just cite you the provision of the law that apparently specifically says he’s wrong.

    “The form of proceeding for judicial review IS the special statutory review proceeding relevant to the subject matter in a court specified by statute or”

    link to openjurist.org

    In other words, the form of proceeding for judicial review IS the special statutory review proceeding. That is, the 145 action is the judicial review.

    Maybe Boundy pants would like to take another stab at the target he just missed.

  5. “HMS Boundy strikes again with substance – ya gonna ruin the neighborhood with that stuff Davey.”

    Don’t worry, ping, I’m sure 6 is gonna come charging in and tell us how David’s got it all wrong. Or how 6 already knew the answer, but he was just using the words in his own special way.

    Lulz

  6. 6 writes -

    I thought that all agency reviews by courts had to be done under the APA.

    Well, in word, no. 5 USC § 703 provides that the judicial review provisions of §§ 701-706 apply as a default set of rules when no other statute particular to the agency or issue carves out an exception:

    The form of proceeding for judicial review is the special statutory review proceeding relevant to the subject matter in a court specified by statute or, in the absence or inadequacy thereof, any applicable form of legal action, including actions for declaratory judgments or writs of prohibitory or mandatory injunction … in a court of competent jurisdiction.

    Here Congress provided a separate “special statutory review,” § 145, which departs from the APA baseline in the manner explained by Judge Moore.

  7. “When you can not refute the substance of an argument, go after trivialities.”

    Kettle, meet pot.

    Lulz

  8. Monkey (JD??), you’re right in that “proofread” is the more common spelling, though “proof-read” is an alternative variation spelling.

    Typical of you lawyers. When you can not refute the substance of an argument, go after trivialities.

    MVS

  9. “What job do we never do properly, which the PTO complains about?”

    Things like: respond to ALL of the rejections/objections; argue l;imitations that are actually being claimed; actually read the reference citations IN CONTEXT; write understandable claims; proof-read what is submitted; submit claims & specs in clear English; draft at least SOME claims directed to the inventive concept; NOT draft claims that read on whole subclasses or classes of art; respond to the current rejections; etc. A bunch of things like this, and this is just a quick list off the top of my head.

    MVS

  10. “Do you and 6 have lunch on a daily basis?”

    That would mean IANAE is Dufas.

    Lulz

  11. “You need to work on your parsing.”

    Avoiding the issue, definitely an examiner maneuver. When in doubt, write “Applicant’s arguments have been considered and deemed unpersuasive” and move on.

    Do you and 6 have lunch on a daily basis?

  12. “It’s funny, but when the PTO operates under the assumption that we patent attorneys never do our job properly, everybody complains and calls for the Director’s head on a pike.”

    What job do we never do properly, which the PTO complains about?

    BTW — I’m inclined to agree with Ping. Although you pass yourself off as a patent attorney, my guess is that you are USPTO material, through-and-through.

    Also, I doubt you are a former examiner. Most former examiners I know are even more militant about the failing of the USPTO. I know one guy who doesn’t want to do prosecution, just write applications, because he detests working with the current crop of examiners.

  13. I ALWAYS work under the assumption that nobody at the Patent Office does their job properly.

    It’s funny, but when the PTO operates under the assumption that we patent attorneys never do our job properly, everybody complains and calls for the Director’s head on a pike.

  14. “No, I’m saying that we’ll never be able to trust them to do their jobs if we don’t trust them to do their jobs.”
    Hello???? Anybody home?? I don’t know what you do for a living, but in my job as a patent attorney, I ALWAYS work under the assumption that nobody at the Patent Office does their job properly. This is one of the first things you need to teach a new attorney – the Patent Office doesn’t get it right. A good practice tip to any new patent attorney is to VERIFY EVERYTHING the Patent Office writes. Verify their findings of fact and definitely verify their case cites. Also, don’t assume that the case snippets in the MPEP accurately reflect the cases being cited – they don’t in many situations.
    It is probably a five digit number of times I have seen an Examiner write “Reference A teaches X” when, in fact, reference A does not teach X. If the PTO cannot get findings of fact right on technical matter, are you going to trust them to get the law right? Heck, many patent attorneys don’t know the law that well, and I’m going to trust a second year examiner with no legal training to get the law right? You’ve got to be f’ng joking.
    You’ll just have to excuse me since the Patent Office that I’m dealing with is apparently a very different Patent Office that what you are dealing with.
    “If you were a District Court judge and you knew that was going to happen, how much effort would you put into your decision? Probably just enough to get it off your docket as quickly as possible and with a minimum of paperwork.”
    First, you want us to trust a low-level bureaucrat will do their job properly and then you proceed to assume that a Federal judge is going to sloppily prepare an opinion just so they can get it off their “docket as quickly as possible and with a minimum of paperwork.” Although not that all Federal judges are perfect, I’m going to danm well assume that most Federal judges are going to present a level of competency, professionalism, and impartiality that is going to be far unmatched by the average Examiner.
    “The problem with five levels of de novo review is that there’s no reason for either the adjudicator or the parties to do a proper job until you reach what is probably the last level.”
    Sure there is — a professional doesn’t like to be told they were wrong and/or incompetent. The higher up the ladder you climb, the greater the professionalism and the greater the likelihood that somebody will do a good job. Unfortunately, the Patent Office cannot hire enough patent attorneys (i.e., people comparable to APJs at the BPAI) to do Examiner-level prosecution. If so, I would be far more willing to trust that they did their job properly. However, that is never going to happen.
    “Of course not, but did you bother to point out to the examiner that he didn’t perform the Graham inquiries?”
    All the f’ng time. I’m looking at one response right now where the Examiner is stating that they don’t have to perform these inquiries because it isn’t “mandatory” – their phrase, not mine.
    “Did you bother to present your evidence of fact to the examiner so he could get it right in the first place?”
    Evidence of fact??? You need to bone up on your patent law since your terminology is off. The Examiner is supposed to present findings of fact supported by substantial evidence to support the Examiner’s prima facie case of anticipation/obviousness/etc.. I, as the attorney, do not have to produce any “evidence of fact” when the Examiner has failed to establish a prima facie case. I could, but it isn’t necessary in most instances. Sure, I can present evidence to support a particular claim construction, but in most instances, my argument is that the applied prior art doesn’t teach what the Examiner says it does.
    “The PTO is supposed to be qualified to find the relevant facts.”
    Sure … I guess, but if you are going to rely upon the PTO getting it right, you need to find another profession because if you are an attorney, you are doing your clients a great disservice by continuing to practice.

  15. Chuckle head 6,

    There is no need for the gov. to spend that much time reviewing any one decision. No wonder we have a backlog.”

    Passing stones tells ya correctly:

    You have a backlog because Dudas wanted to put the brakes on issuances, under the guise of “quality,” and this has infected an entire generation of patent examiners.

    And of course, the actual solution:

    do the correct job the first time around

    Althoughs Passing is a bit off if he thinks “working” is the right word to describe the mountain building at the BPAI. Cue to Mr. Katznelson’s works here.

    I see IANAE is bored from the flourish of posts, unfortunately for my main main, he is off riding his horse in middle earth again.

    To Passings’ comment, my man replies: “No, I’m saying that we’ll never be able to trust them to do their jobs if we don’t trust them to do their jobs.

    Trust them, just don’t give them any deference. – gotcha

    And to the District Judges bein slapped down: “ The other reason is that the Federal Circuit simply doesn’t trust them.
    Funny, that was the primary reason given.

    Counseling advice to simply forego from the Nazgul leftovers:
    If you were a District Court judge and you knew that was going to happen, how much effort would you put into your decision? Probably just enough to get it off your docket as quickly as possible and with a minimum of paperwork.

    Wow, that’s some mighty impressive “professionalism ya be espousing. No wonder people mistake ya for an examiner sometimes.

    Then, venturing into lessons of painful obviousness:
    did you bother to point out to the examiner that he didn’t perform the Graham inquiries?

    My guess on this would be yes – any other guesses on this?

    Actually working is getting in the way of catching up to all the chuckles here.

    Maybes I can get a job like the four horsemen. Howza The Five Horsemen sound?

  16. Just another friendly request to Dennis to block “Malcolm’s” IP address.

    Really, listening to sarah is so much more enjoyable.

  17. “Well I do believe that this is the first I’ve heard of this. I thought that all agency reviews by courts had to be done under the APA. Even if they did give them a special option in 145, you can only understand from 145 that it is a review of the claims deemed unpatentable by the BPAI.”

    In my opinion it’s possible to resolve this issue without exempting the review from the APA.

    The APA accommodates de novo review of new facts by a reviewing court where statute allows new facts to be introduced. See § 706 (F). Further, the Supreme Court acknowledged difference in review standards between 145 and 141 in Zurko.

    “I always thought that this was black letter law. I’m amazed that there could have been a decision to the contrary that now needs reversing.”

    As best as I can tell this is the first on point fed. cir decision on the standard for admitting evidence in a 145 civil action. The district court decisions apply a number of inconsistent standards with the bulk of the cases requiring something more than ordinary negligence to justify excluding evidence. The panel decision somehow found intent to withhold where the district court had made no such finding.

  18. Basically, you are saying that we get rid of the SPE-level review and Appeal Conference review and have everything done at the BPAI.

    No, I’m saying that we’ll never be able to trust them to do their jobs if we don’t trust them to do their jobs.

    There is a reason why District Judges get slapped down a lot at the Federal Circuit is that they just don’t know patent law very well — understandable considering the judges rarely see them.

    The other reason is that the Federal Circuit simply doesn’t trust them. They review pretty much everything of importance de novo, which means that even a slight difference of opinion results in a reversal.

    If you were a District Court judge and you knew that was going to happen, how much effort would you put into your decision? Probably just enough to get it off your docket as quickly as possible and with a minimum of paperwork.

    The problem with five levels of de novo review is that there’s no reason for either the adjudicator or the parties to do a proper job until you reach what is probably the last level.

    Finally, an incorrect application of the law is a good reason for a de novo [review].

    … of the law. It’s not a good reason to retry facts that could have easily been established below, or to introduce new evidence that could have been introduced below.

    Are you going to give deference to an Examiner’s legal conclusion of obviousness when, for example, they didn’t perform the Graham inquiries?

    Of course not, but did you bother to point out to the examiner that he didn’t perform the Graham inquiries? Did you bother to present your evidence of fact to the examiner so he could get it right in the first place? The PTO is supposed to be qualified to find the relevant facts. Do we really want to be like those smug TV lawyers who let their juniors plead the rest of the trial while they sit in court preparing their appeal?

  19. “In any event, if the adjudicators are as incompetent at answering legal questions as you would have us believe, clearly the best procedure would be to have one level of review within the PTO and then an appeal directly to the Federal Circuit. Why waste four levels of review asking such unqualified people as federal judges a question of law?”

    Basically, you are saying that we get rid of the SPE-level review and Appeal Conference review and have everything done at the BPAI. I’m all for it — however, how are you going to hire the 400-800(??) new APJs that would be needed to accomplish this?

    Nowadays, most appeals don’t reach the BPAI, which means that the internal filtering system is working.
    When the amount of “high level” judicial resources is limited, you need mechanisms to filter out the number of cases that reach the BPAI, CAFC, SCOTUS.

    FYI — most federal judges are initially unqualified to answer most questions of patent law — this leaves the federal judge at the mercy of their clerk(s), and the litgating attorneys to teach him/her the law. There is a reason why District Judges get slapped down a lot at the Federal Circuit is that they just don’t know patent law very well — understandable considering the judges rarely see them.

    Finally, an incorrect application of the law is a good reason for a de novo reason. An Examiner cannot properly make a legal conclusion when they don’t understand the law. Are you going to give deference to an Examiner’s legal conclusion of obviousness when, for example, they didn’t perform the Graham inquiries?

  20. Passing through: There are very good reasons for de novo review at these stages. Until you get to perhaps stage 3 (i.e., BPAI review), the chances that the law will be applied incorrectly (and oftentimes grossly incorrectly) is very high (to be expected when you are dealing with non-lawyers). However, even the BPAI and the District Courts don’t do a good job of applying the law. The BPAI has been infected with Dudas-itis and tends to skew the law against Applicants (actually, this was the case before Dudas, but they took it to a new level with Dudas at the helm). As for the District Courts, they just don’t have the sufficient experience to know the law.

    Misapplication of the law is not a valid reason for de novo review. It’s a valid reason for reviewing questions of law with no deference, which really every level of review should be doing anyway, but that’s about it.

    In any event, if the adjudicators are as incompetent at answering legal questions as you would have us believe, clearly the best procedure would be to have one level of review within the PTO and then an appeal directly to the Federal Circuit. Why waste four levels of review asking such unqualified people as federal judges a question of law?

  21. You know exactly what I am saying Roy Hal whatever. I will get my day in Court even if I am Sued. there is no way those Judges were told what I have.And they can’t know about the Search. They obviously only know USPTO Policy side.They’ll have to read the Book.

  22. “De Novo review at every step of the way. So ridiculous. Now we have, let’s see, what? Practically 5 “De novo” reviews of any action taken by a PTO examiner? 1. Spe review 2. Appeal conference review 3. BPAI review (note a chance for rehearing De Novo as well) 4. District Court review De Novo if you bring your evidence late 5. Have Fed. Circ. review claim construction etc. De Novo 6. USSC De Novo review of claim construction etc. Congress should get word of this and start slapping statutes down to stop it. There is no need for the gov. to spend that much time reviewing any one decision. No wonder we have a backlog.”

    There are very good reasons for de novo review at these stages. Until you get to perhaps stage 3 (i.e., BPAI review), the chances that the law will be applied incorrectly (and oftentimes grossly incorrectly) is very high (to be expected when you are dealing with non-lawyers). However, even the BPAI and the District Courts don’t do a good job of applying the law. The BPAI has been infected with Dudas-itis and tends to skew the law against Applicants (actually, this was the case before Dudas, but they took it to a new level with Dudas at the helm). As for the District Courts, they just don’t have the sufficient experience to know the law.

    You have a backlog because Dudas wanted to put the brakes on issuances, under the guise of “quality,” and this has infected an entire generation of patent examiners. Stop fee diversion, adequately fund the USPTO, adequately train the Examiners, and provide Examiners with sufficient time and motivation to do the correct job the first time around, and you’ll see a significant drop in the backlog.

  23. Where is the Search MR.DOLLITTLE? Did you pick that up after you threw me back in the Elevator? You know the thing called INTENT! Form the Very Very beginning of this TALE of two Court Systems.

  24. Sarah, it is impossible to make out anything from your posts other than you are angry and feel that someone did something wrong.

    You should write it down to get it out of you and put it in some coherent form.

  25. Newman almost always gets it right. She is a keeper of the flame of civilization.

    Moore is a garden hose that seems to be morphing a bit now that she got what she wanted in her federal appointment.

  26. Yah Malvinnia Gary signs my FAKE PATENT. It is not matched until 2006 when i am in the Rabbit Hole. And BL runs like a rabbit from A. G. when the Mail Fraud is out. and the Postmaster is retired. And lets not forget the Sheriff that ran after i gave it to him too. I can and will go on and on. SUE ME!

  27. I agree with Judge Newman’s opinion, but would rather live with Judge Moore’s majority opinion than Judge Dyk’s dissent.

    I wonder if the growing delays at the USPTO will make 145 actions a more appealing (no pun intended) avenue of review?

    If you end up wanting to submit new evidence during prosecution, you need to file an RCE, which can add another 2-3 years to prosecution, and then file an Appeal, which takes another 2 years.

    link to pharmapatentsblog.com

    (Sorry for the similarity in titles, Dennis, I guess we both saw it the same way.)

  28. So lets rumble. The Patent has a solid swim platform. It was changed to allow the UPC. Now it is slotted and doesn’t mention a Cuff. AMAZING! And also lets bring out the first page of my Diary. The Model I sent Wenzel.
    Wenzel’s Drawings he was sent. The Trademark and the dates that match worth and worthless. Mr Dollittle has made this his little game.
    The Trademark suing JOHN DOE? My Name is Sarah McPherson. What does that tell you. How is all that hopey changey stuff workin for yah?

  29. 6,

    “I’m not even sure if congress has the power to take the power out of the Executive’s hands and place it in the Judiciary’s hands in this instance.”

    The Patent Clause provides Congress this power.

    That being said, Congress does not have the power to allow an applicant to bypass the PTO and go directly to district court for the grant of the patent. Why? The Case or Controversy Clause prevents the judiciary from hearing a matter in which no case or controversy exists.

    Please remember one thing … if a dissatisfied applicant does not show good faith in the prosecution of an application (e.g., holding back known relevant facts), the PTO can introduce evidence of bad faith, unclean hands, etc…, in the 145 civil action. Do you really think a court will order a patent to issue if this were the case? The non-introduction of previously-known facts is admissible if the PTO chooses to raise such defenses.

  30. Patently O is a Policy driven cite. It is not a Court of Law. On the grounds that the Judge needed to know everything available to him, to allow USPOC for whatever reason is NUTS! And then to keep my mail from getting to it’s Destination for help. Or even allowing the receiver to ignore what I send, with no fallout. And then keeping it from me when it is my mail is “A Joke.”
    This was the USPTO messing up big time. And continuing the Mess up because no one would step up.And then trying to correct it by. giving my Patent claims to DOD!
    The Case was a NEW CASE so I read and understand? Then why was a whole NEW CLEAN CASE denied me. Why am I still being denied my day in Court. Or my Freedom to get an Atty.? WHAT ARE YOU AFRAID OF? LOSING? Of course because you have already lost. and you continue to hide what you have done.

  31. The letter he sent is ramblings of what I did

    Then, it was an accurate reflection.

    Besides, the miss was 6′s not yours sarah mrpherson.

  32. No I didn’t
    I am in BANKRUPTCY. And the Judge closed a VALID CASE. The letter he sent is ramblings of what I did send verses Him stating what he claims I didn’t send. And it is now up on Pacer. I should have been awarded Counsel. Instead I am met with a deal that is played like a Game. I amconfused by Monikers. they are told to stop

  33. July 23, 1998 Case terminated. July 27, 1998 I receive a Revocation/POA with DOD on the Bottom.

    4/21/98 filed 840
    4/27/98 Copyrightd Technical Drawings Copyright RR card returned. All othere returned in less than a month.

    There they go again it should read Dec.26, 1996 second worthless one filed.on thread above.

  34. News Flash…. for the patent only folks…

    The ability to introduce “new evidence” has been the case for a while with respect to Trademarks. Section 21(b) of the Trademark Act, 15 U.S.C. Sec. 1071(b), provides for review of a TTAB decision by way of civil action in a federal district court.

    See: Aktieselskabet AF 21 November 2001 v. Fame Jeans, Inc., 86 USPQ2d 1527 (D.C. Cir. 2008). They observed that the decision brought the court in line with some other circuits.

    Unlike a CAFC appeal, a District Court action is a “new case” and district court is to decide “as the issues in the proceeding may require.” Since the court determined that the word “proceeding” refers to the district court action, in trademarks in a Section 21(b) action, a district court “should decide on the issues before it, including new issues.”

    Wow, patent law is in accord… YEA !!!!

  35. Well I do believe that this is the first I’ve heard of this. I thought that all agency reviews by courts had to be done under the APA. Even if they did give them a special option in 145, you can only understand from 145 that it is a review of the claims deemed unpatentable by the BPAI.

    I do not mean to equate a 145 action with an appeal, but I note that in 145 it does seem to be implying that the courts would only look at, i.e. review, the claims that were before the board.

    “The court may adjudge that such applicant is entitled to receive a patent for his invention, as specified in any of his claims involved in the decision of the Board of Patent Appeals and Interferences, ”

    ^see there.

    I also note that it seems rather odd that the Fed Circ would stop the person from raising new issues if indeed we’re not going to call this a “judicial review”, and instead have it be an entirely new case. Even given their rationale.

    Besides, the very idea of such a trial takes the power out of the hands of the administrative branch and gives it to the courts. Especially in so far as many people think the PTO is obligated to follow the DC’s decision to allow an app.

    I would think that there are bigger issues with this decision than merely that of interpreting these “civil actions” to not be “judicial review”. Kind of like the judicial branch usurping the administrative power in these instances. And make no mistake, in interpreting the statute in this way that is specifically what happened right here. They have to be relegated to “review” duties to maintain the balance of the 3 branches. IMO anyway. I’m not even sure if congress has the power to take the power out of the Executive’s hands and place it in the Judiciary’s hands in this instance.

    Edit: ok, I take that back, maybe they do.

    link to chestofbooks.com

    Edit2:

    Although this is interesting and it even mentions patents:

    link to chestofbooks.com

    That even mentions that butterworth case.

    I should think they need to go ahead and ask the USSC about this one. The courts already have taken too much power, there is no need to just hand them more without taking it to the top.

    I’d be very interested to hear private citizen Michel’s opinion on this opinion.

    Maybe D or watchdog can ask him.

  36. So the deal was if the first Trademark is dumped,then a worthless one is filed, then DOD gets My Patent. And they sit on the one that may or may not be necessary till the bankruptcy expires. I don’t think so.And they spend all that time forcing me into Bankruptcy after they get it.

  37. 6,

    The Court is saying that a § 145 civil action is not a judicial review and not subjected to the APA. The APA applies to an appeal from the BPAI to the CAFC.

    Please don’t equate a § 145 civil action as an appeal — it is not. The appeal falls under 141 to which the APA applies.

    The choice provided to the dissatisfied applicant under the Patent Act is a choice that isn’t given to dissatisfied individuals subjected to actions of other agencies that I know of. I don’t know of any other agencies (e.g. EPA, NLRB, etc…) for which a dissatisfied individual may initiate a civil action resulting from an appellant board of the executive branch. The extra route seems unique under the Patent Act.

  38. After having read the majority’s holding in this case I find myself substantially convinced. However, according to them, this “civil action” brought about under 145 is not a “judicial review”. Would that not, as they imply, make section 5 706 inapplicable to them?

    If that be so, then where is the portion of the APA that gives the court the power to hold unlawful and set aside agency action, findings, and conclusions found to be arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law?

    I mean, if 5 706 does not apply, as this majority would have it not, since it is a “civil action” rather than a “judicial review” then where is the section that governs what agency action, finding, or conclusion that is arbitrary, capricious, or otherwise not in accordance with law?

    Let me make myself clear, the biggest thing I don’t really understand here is whether or not the court here is saying that the “civil actions” which are held under 145 ARE NOT “judicial reviews” under 701 of the APA?

    Or are they saying that they are civil actions FOR judicial review under 701?

    “This passage seems a little awkward with Ex Parte Frye. The Board is obligated to consider rejections only as the Applicants argue against them, per Frye. But this passage seems to suggest that the Board is also required to perform its own de novo analysis of an appealed rejection, apart from specific arguments asserted by the Applicant.”

    Nah it doesn’t. He argued it. Thus they were supposed to review it. Supposedly anyway. De Novo review at every step of the way. So ridiculous. Now we have, let’s see, what? Practically 5 “De novo” reviews of any action taken by a PTO examiner? 1. Spe review 2. Appeal conference review 3. BPAI review (note a chance for rehearing De Novo as well) 4. District Court review De Novo if you bring your evidence late 5. Have Fed. Circ. review claim construction etc. De Novo 6. USSC De Novo review of claim construction etc. Congress should get word of this and start slapping statutes down to stop it. There is no need for the gov. to spend that much time reviewing any one decision. No wonder we have a backlog.

  39. “With respect to the written description rejections, the Board [rejected Hyatt's argument of mapping claim terms to words in the spec]. Still, after performing its own review of the
    specification, as it is required to do, the Board reversed all of the examiner’s written description and enablement rejections . . .”

    This passage seems a little awkward with Ex Parte Frye. The Board is obligated to consider rejections only as the Applicants argue against them, per Frye. But this passage seems to suggest that the Board is also required to perform its own de novo analysis of an appealed rejection, apart from specific arguments asserted by the Applicant.

  40. I wasn’t aware of the Hyatt suit against Kalifornia for invasion of privacy and abuse of process in collecting taxes. Way to go Gilbert! Nice job that. Millions of abused Americans undestand just how far tax collectors will go to get their money. Somebody with balls had to stand up to them. Glad you did.

    Now go to the airport and have them grope your genitals if you refuse to enter their naked scanner. Someone with the appropriate gonads had to stand up for the rights of Americans to some privacy and decency. Sue them, and make it a class action this time on behalf of all of us.

  41. patentsoldier,

    “the other side [aka PTO] restricted to the existing administrative record”

    How so? Certainly, the PTO would be able to refute any new evidence presented per the Fed Rule of Evidence. The civil action is not a one-sided presentation of facts (unlike the prosecution of an applicatin).

  42. “It could choose, I suppose, not to oppose an applicant’s motion.”

    Exactly. It would not be a fair fight to begin with. What truth comes from it? One side with the essentially unrestricted ability to introduce new evidence considered de novo and the other side restricted to the existing administrative record. And yes, the appellant will usually win under such circumstances, thus the rationale provided by the Federal Circuit to limit 145 appeals (loser pays) will be no deterrent.

    One could argue the government is wasting resources getting involved in such an appeal.

  43. Then again, what if the PTO has additional evidence in reserve that it didn’t raise before the Board but would like to present to the court?

    Silly boy – that’s S.O.P.

  44. patentsoldier,

    “The PTO should get out of the 145 appeal business as a matter of policy.”

    That’s not possible. The right under § 145 belongs to the “dissatisfied” applicant. The PTO has no choice of becoming a party. It could choose, I suppose, not to oppose an applicant’s motion.

  45. Amazing. The PTO should get out of the 145 appeal business as a matter of policy. Let the district court reverse on a summary judgment, then let the patent issue of formal grounds.

    When it comes time to enforce the patent and the trial court looks to prosecution history, the only prosecution history where the PTO involved itself (as a matter of policy) will be what happened at the office.

  46. Here’s are the comments when the panel opinion came out:

    link to patentlyo.com

    Interestingly, there’s been a flip-flop. In the panel’s opinion, Dyk penned the majority panel opinion, and Moore was the lone dissenter. Now-retired Chief Judge Michel was the third judge on the panel who sided with Dyk.

  47. In the post-KSR world where examiner is no longer limited to the TSM test, this case is a big boost for the aggrieved applicant.

  48. Now, an aggrieved applicant can provide expert, oral testimony. Also, the examiner’s conclusions can be put to the test and countered orally by the applicant’s expert testimony. This will allow the applicant to challenge the “experts” (i.e., examiners) at the PTO on a more level playing field. The “person having ordinary skilled in the art” can now be heard orally rather than be limited to the fictionally-created person imagined by the examiner.

    Same facts submitted under prosection plus oral testimony (of perhaps a written declarant) should result with a de novo trial. The applicant is no longer bound by the cold written record.

    With this new law, will examiners be called to defend their findings? I certainly hope so so that my client can have a field day establishing the “person having ordinary skill in the art.”

  49. For the overwhelming majority of applicants, the incentives to pursue all evidence-based patentability arguments before the USPTO, and the disincentives to pursue section 145 actions (all court costs to applicant), are too high.

    That’s probably the case, but why should we have a system where it might be to the applicant’s advantage to appeal from a BPAI decision based on deliberately incomplete evidence as an alternative to attempting to get the correct decision from the BPAI in the first place? Why should a civil action lie to force the PTO to do what the PTO was never really properly asked to do in the first place?

    the USPTO cannot appeal from a BPAI decision, right?

    Why should the PTO appeal from its own decision?

    Then again, what if the PTO has additional evidence in reserve that it didn’t raise before the Board but would like to present to the court? Maybe there’s new prior art that the PTO wants to show the judge. Fair’s fair, right?

  50. I have doubts that this case will result in any notable increase in section 145 actions. For the overwhelming majority of applicants, the incentives to pursue all evidence-based patentability arguments before the USPTO, and the disincentives to pursue section 145 actions (all court costs to applicant), are too high.

    Question – the USPTO cannot appeal from a BPAI decision, right? But it could appeal from a section 145 action, yes? If so, applicants have yet a further incentive to avoid 145 actions.

  51. “Complicating this case is the fact that the application’s claimed priority date is 1975.”

    Granted, I only skimmed the 80 page decision (enough to figure out that J. Newman got it right, again), but I didn’t see any discussion of Mr. Hyatt’s priority date, and what, if any, effect it had on the decision.

  52. “A genuine American folk hero!”

    At least he’s not hiding in his mom’s basement like you, Mooney.

  53. I always thought that this was black letter law. I’m amazed that there could have been a decision to the contrary that now needs reversing.

  54. Complicating this case is the fact that the application’s claimed priority date is 1975. Hyatt has aggressively pushed the bounds of USPTO practice. This decision is one of more than a dozen Federal Circuit decisions focusing on Hyatt’s patent rights. When California pursued Hyatt for tax revenue for his patent licenses, Hyatt took the case to the Supreme Court and eventually won a $388 million judgment against the state of California for invasion of privacy.

    A genuine American folk hero!

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