HYATT v. KAPPOS

• Decision Date: 08 November 2010
• Docket Number: No. 2007-1066.,2007-1066.
• Citation: 625 F.3d 1320
• Parties: Gilbert P. HYATT, Plaintiff-Appellant, v. David KAPPOS, Director, Patent and Trademark Office, Defendant-Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

625 F.3d 1320

Gilbert P. HYATT, Plaintiff-Appellant,
v.
David KAPPOS, Director, Patent and Trademark Office, Defendant-Appellee.

No. 2007-1066.

United States Court of Appeals,Federal Circuit.

Nov. 8, 2010.

625 F.3d 1321

Aaron M. Panner, Kellogg, Huber, Hansen, Todd, Evans & Figel, P.L.L.C., of Washington, DC, argued for plaintiff-appellant on rehearing en banc. Of counsel on the brief were Michael L. Martinez, Crowell & Moring LLP, of Washington, DC, and Gregory L. Roth, Law Offices of Gregory L. Roth, of La Palma, CA. On the initial brief were Michael L. Martinez and Michael I. Coe, Crowell & Moring LLP, of Washington, DC. Of counsel on the brief was Gregory L. Roth, Law Offices of Gregory L. Roth, of La Palma, CA. Of counsel was Kenneth C. Bass, III, Sterne, Kessler, Goldstein & Fox P.L.L.C., of Washington, DC, and J. Robert Chambers, Wood Herron & Evans, LLP, of Cincinnati, OH.

Beth S. Brinkmann, Deputy Assistant Attorney General, Appellate Staff, Civil Division, United States Department of Justice, of Washington, DC, argued for defendant-appellee on rehearing en banc. With her on the brief were Tony West, Assistant Attorney General, and Scott R. McIntosh and Mark R. Freeman, Attorneys. Of counsel on the brief were Raymond T. Chen, Solicitor, and Robert J. McManus and Thomas W. Krause, Associate Solicitors, Office of the Solicitor, United States Patent and Trademark Office, of Arlington, VA. On initial brief were Stephen Walsh, Acting Solicitor, and Robert J. McManus and William G. Jenks, Associate Solicitors, Office of the Solicitor, United States Patent and Trademark Office, of Arlington, VA. Of counsel were Raymond T. Chen, Acting Solicitor, and Thomas W. Krause, Associate Solicitor.

Maxim H. Waldbaum, Schiff Hardin LLP, of New York, NY, for amicus curiae Federation Internationale Des Conseils en Propriete Industrielle on rehearing en banc.

Mark J. Abate, New York Intellectual Property Law Association, of New York, NY, for amicus curiae New York Intellectual Property Law Association on rehearing en banc.

Daniel B. Ravicher, Benjamin N. Cardozo School of Law, of New York, NY, for amicus curiae Public Patent Foundation on rehearing en banc.

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Herbert C. Wamsley, Intellectual Property Owners Association, of Washington, DC, for amicus curiae Intellectual Property Owners Association on rehearing en banc. On the brief were Douglas K. Norman and Kevin H. Rhodes, Intellectual Property Owners Association, of Washington, DC; and Robert M. Isackson, Nicholas H. Lam, and Jacob A. Snow, Orrick, Herrington & Sutcliffe LLP, of New York, NY.

Lauren A. Degnan, Fish & Richardson, P.C., of Washington, DC, for amicus curiae Intel Corporation on rehearing en banc. With her on the brief was John A. Dragseth, of Minneapolis, MN. Of counsel on the brief was Harry F. Manbeck, Jr., Rothwell, Figg, Ernst & Manbeck P.C., of Washington, DC.

Ann M. McCrackin, Franklin Pierce Law Center, of Concord, NH, for amicus curiae Franklin Pierce Law Center on rehearing en banc. With her on the brief was J. Jeffrey Hawley.

Vernon M. Winters, Weil Gotshal & Manges LLP, of Redwood Shores, CA for amicus curiae American Intellectual Property Law Association on rehearing en banc. With him on the brief was Alan J. Kasper, American Intellectual Property Law Association, of Arlington, VA.

Before RADER, Chief Judge, NEWMAN, LOURIE, BRYSON, GAJARSA, LINN, DYK, PROST, and MOORE, Circuit Judges.

Opinion for the court filed by Circuit Judge MOORE, in which Chief Judge RADER and Circuit Judges LOURIE, BRYSON, LINN, and PROST join.

Concurring-in-part, dissenting-in-part opinion filed by Circuit Judge NEWMAN.

Dissenting opinion filed by Circuit Judge DYK, in which Circuit Judge GAJARSA joins.

MOORE, Circuit Judge.

Under the patent laws, a patent applicant who is dissatisfied with the decision of the Board of Patent Appeals and Interferences (Board) 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 U.S. Patent and Trademark Office (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.

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

625 F.3d 1323

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. In doing so, we reject the Director's proposal that only “new evidence that could not reasonably have been provided to the agency in the first instance” is admissible in a § 145 action. Dir. Br. at 8. While the proceedings before the Patent Office do not limit the admissibility of new evidence in the district court, they may be considered by the district court if they cast doubt on the reliability of late-produced evidence, as with inconsistent statements or new recollections of previously forgotten events. As with any evidence introduced in a civil action, the district court as factfinder may give less weight to evidence introduced by an applicant in a § 145 action if the district court questions its credibility or reliability. Because the district court abused its discretion when it excluded Mr. Hyatt's declaration under the wrong legal standard, we vacate the decision of the district court and remand.

I. Background

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.

Mr. Hyatt filed the '702 application on June 6, 1995. As filed, the '702 application included a 238-page specification, 40 pages of figures, and 15 claims; it originally claimed priority through a chain of related applications to an application filed in 1984 and was later amended to claim priority to a 1975 application. Mr. Hyatt filed several preliminary amendments in which he amended the drawings and specification and added 74 new claims.

The examiner issued a nonfinal office action rejecting all pending claims on various grounds, including abandonment, obviousness, and double patenting. Mr. Hyatt filed a response, in which he traversed the abandonment and obviousness rejections and amended the claims to distinguish over the claims of his copending applications. Mr. Hyatt also cancelled various claims and added new ones, bringing the total number of claims to 117.

The examiner informed Mr. Hyatt that the response was incomplete because Mr. Hyatt had failed to identify the novelty of and support in the specification for his amended and added claims. Mr. Hyatt identified features of the new claims that allegedly distinguished over the prior art. Mr. Hyatt also listed pages of the specification that contained representative support for each of the distinguishing features of the claims.

The examiner issued a final office action rejecting all 117 claims. He identified particular categories of claimed subject matter that he concluded lacked support in the specification and rejected all claims under 35 U.S.C. § 112, first paragraph, for failure to comply with the written description and enablement requirements. He also rejected all claims for both obviousness-type and Schneller-type double patenting over eight references. Finally, he rejected nine claims as being anticipated and seven as being obvious over a combination of three references. All told, 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

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brief. With respect to the written description rejections, Mr. Hyatt argued that the limitations identified by the examiner as lacking sufficient written description had “extensive basis” in the specification. J.A. 10830. Mr. Hyatt included a table (Table 1) that listed representative pages in the specification containing the “terminology” objected to by the examiner. J.A. 10832. For certain terms, Mr. Hyatt also identified figures and page ranges of the specification that described the relevant terms.

The Board reversed all of the examiner's rejections for obvious-type and Schneller-type double patenting. The Board also reversed all of the anticipation and obviousness rejections. With respect to the written description rejections, the Board noted that merely...