The US Supreme Court [official website] ruled unanimously [opinion, PDF] Wednesday in Kappos v. Hyatt [SCOTUSblog backgrounder] that a patent applicant pursuing a 35 USC § 145 [text] claim may introduce new evidence that could have been presented to the US Patent and Trademark Office (PTO) [official website] in the first instance. When the PTO denies an application for a patent, the applicant may seek judicial review of the agency's final action through either of two avenues. The applicant may obtain direct review of the agency's determination in the US Court of Appeals for the Federal Circuit under 35 USC § 141 [text]. Alternatively, the applicant may commence a civil action against the Director of the PTO in federal district court under 35 USC § 145. The ruling affirms a Federal Circuit decision [opinion, PDF], which held that "§ 145 imposes no limitation on an applicant's right to introduce new evidence before the district court." Admissibility of new evidence is limited only by the Federal Rules of Evidence and the Federal Rules of Civil Procedure. The court also held that, when new evidence is introduced under § 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.
Justice Sonia Sotomayor wrote a concurring opinion, with which Justice Stephen Breyer joined, expressing her concern that the court's decision "foreclose[d] a district court's authority ... to exclude evidence "deliberately suppressed"from the PTO or otherwise withheld in bad faith." The decision, she notes, prohibits courts from exercising authority to "exclude evidence from a § 145 proceeding when its admission would be inconsistent with regular equity practice and procedure."