Monday, November 8, 2010

Federal Circuit Makes It Easier to Challenge Patent Office Decisions

If a patent applicant's claims are rejected by the Examiner and that rejection is upheld by the Patent Office's Board of Patent Appeals and Interferences, the patent act gives the applicant two ways to seek judicial review.  One way is a direct appeal from the Board to the U.S. Court of Appeals for the Federal Circuit.  Most applicants choose this route since it's cheaper and a lot faster than the second way:  filing a civil action in the District of Columbia.  The outcome of that civil action can then be appealed to the Federal Circuit.

Gilbert Hyatt was unsatisfied with a Board decision rejecting some of his claims, and he chose to file a civil action.  The district court refused to let him present new evidence (despite being a trial court) because Hyatt could have presented his evidence to the PTO.  Hyatt appealed to the Federal Circuit.  A three-judge panel affirmed the district court by a 2-1 vote, but the entire CAFC decided to rehear the case en banc.

Today the en banc Federal Circuit reversed the district court.  The majority opinion, by Judge Moore, held that new evidence could be presented to the district court in a civil action, even if the evidence was previously available.  Judge Moore also held that the PTO's decision would be given deference as to evidence the PTO had in fact considered.

Judge Newman dissented in part.  She agreed that new evidence could be considered, but would have let the district court consider all the evidence anew, with no deference to the PTO.

Judge Dyk, joined by Judge Gajarsa, dissented.  In a lengthy dissent, these judges would have affirmed the district court and not permitted the new evidence.  (Judge Dyk was a member of the three-judge panel that initially affirmed the district court; Judge Moore was also a member of that panel but filed a dissenting opinion.)

UPDATE:  I had always assumed that new evidence could be asserted in a district court civil action.  If an applicant doesn't want to add new evidence, the logical way to appeal is a direct appeal to the Federal Circuit.  If new evidence were not allowed in district court actions, then there's little point to having those two different types of appeals in the patent act -- why bother with a district court action if the record is the same as it would be on a direct appeal to the Federal Circuit?  The 3-judge panel decision troubled me when it was decided, so today's decision makes sense to me.

Patently-O's analysis of the case is here

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