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Supreme Court Patent Opinion Paves Way for Expert Testimony

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Reprinted with permission.

Posted by Robert Ambrogi, Contributing Author on 2012/05/03

Add comments May 032012

The Supreme Court has issued a new patent law opinion that could signal a greater need for expert testimony in patent-related civil actions in federal district courts.

In the April 18 opinion, Kappos v. Hyatt, the Supreme Court resolved a question that had divided the U.S. Patent and Trademark Office and many practitioners. At issue was the extent to which a patent applicant may present new evidence in court to challenge the USPTO's denial of an application.

When the USPTO denies an application, the applicant has two options for challenging the denial. The applicant can appeal directly to the U.S. Court of Appeals for the Federal Circuit, under §141 of the Patent Act, or the applicant can file a civil action against the USPTO director in the U.S. District Court for the District of Columbia, under §145 of the act.

Bob Ambrogi, IMS ExpertServices

Robert J. Ambrogi is a Massachusetts lawyer who represents clients at the intersection of law, media and technology. A news media veteran, he is the only person ever to hold the top editorial positions at the two leading national U.S. legal newspapers, the National Law Journal and Lawyers Weekly USA. He is also internationally known for his writing and blogging about the Internet and technology.

Under the first option, the Federal Circuit is constrained to review the case based on the same administrative record relied on by the USPTO. The Federal Circuit can reverse the USPTO's decision only if it is "unsupported by substantial evidence."

By contrast, the second option appears by the language of the statute to allow an applicant to present new evidence to the District Court that was not presented to the USPTO. In fact, the Supreme Court had previously suggested this was so.

USPTO Sought Limits on Evidence

The question here, however, was the extent to which §145 permits new evidence. The USPTO argued to the Supreme Court that new evidence should be allowed in a §145 action only when the applicant had no reasonable opportunity to present it to the USPTO in the first instance.

That had been the ruling of the District Court. The sole piece of additional evidence the plaintiff had sought to introduce in this case was a written declaration offered to refute the USPTO's conclusion that his patent lacked an adequate written description. The District Court refused to consider the declaration, ruling that applicants are precluded from presenting new evidence in a §145 case, "at least in the absence of some reason of justice put forward for failure to present the issue" to the USPTO.

On appeal to the Federal Circuit, a divided panel affirmed the District Court, holding that §145 and the Administrative Procedure Act imposed restrictions on the admission of new evidence. Upon rehearing the matter en banc, the full Federal Circuit vacated the District Court's ruling, concluding that §145 gave applicants free rein to introduce new evidence, subject only to the rules of evidence and procedure.

‘No Limitations,' Supreme Court Says

The Supreme Court agreed with the en banc opinion of the Federal Circuit. In an opinion written by Justice Clarence Thomas, the court held that neither §145 nor the APA restricted an applicant's ability to present new evidence to the District Court.

"[N]either the statutory text nor background principles of administrative law support an evidentiary limit or a heightened standard of review for factual findings in §145 proceedings," Justice Thomas wrote.

"[W]e conclude that there are no limitations on a patent applicant's ability to introduce new evidence in a §145 proceeding beyond those already present in the Federal Rules of Evidence and the Federal Rules of Civil Procedure."

Also at issue in the appeal to the Supreme Court was the standard of review the district court should apply when considering new evidence in a §145 matter. The court concluded that the district court must make a de novo finding when new evidence is presented on a disputed question of fact.

"If new evidence is presented on a disputed question of fact," Justice Thomas wrote, "the district court must make de novo factual findings that take account of both the new evidence and the administrative record before the PTO."

Justices Sonia M. Sotomayor and Stephen G. Breyer filed a concurring opinion. In their view, principles of equity would allow the district court to exclude evidence if it had been "deliberately suppressed" from the USPTO "or otherwise withheld in bad faith."

Door Opened to Experts

The Supreme Court's opinion never discussed specific types of evidence that might be presented in a §145 action. It follows, however, that if, as Justice Thomas said, "there are no limitations on a patent applicant's ability to introduce new evidence," then the new evidence is likely to include expert testimony.

This makes sense, given the limits of the examination process. Dennis Crouch makes this point at his blog, PatentlyO, where he writes: "In my estimation, some amount of new evidence (such as expert testimony and test results) can always be obtained after trial. This is especially true because of the limited manner in which testimony can be presented to an examiner or in an ex parte appeal to the Board."

Will the Supreme Court's ruling lead applicants to withhold evidence during examination, as the USPTO argued? Not likely, Justice Thomas said. "An applicant who pursues such a strategy would be intentionally undermining his claims before the PTO on the speculative chance that he will gain some advantage in the §145 proceeding."

As with every Supreme Court opinion, only time will tell its true impact. But the bottom line of Kappos v. Hyatt is that the court has lifted any limits on the use of new evidence in a §145 trial. That is sure to mean greater use of expert testimony in these cases going forward.

This article was originally published in BullsEye, a newsletter distributed by IMS ExpertServices™. IMS Expert Services is the premier expert witness search firm in the legal industry, focused exclusively on providing custom expert witness searches to attorneys. To read this and other legal industry BullsEye publications, please visit IMS Expert Services' recent articles. For your next expert witness search, call us at 877-838-8464 or visit our website.

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