Kappos v. Hyatt


Question(s) Presented

“The Patent Act of 1952, 35 U.S.C. ยง 100 et seq., grants a patent applicant whose claims are denied by the Patent and Trademark Office (PTO) the opportunity to challenge the PTO’s decision by filing a civil action against the Director of the PTO in federal district court. In such a proceeding, the applicant may present evidence to the district court that he did not present to the PTO. This case requires us to consider two questions.” 1. “First, we must decide whether there are any limitations on the applicant’s ability to introduce new evidence before the district court.” 2. “Second, we must determine what standard of review the district court should apply when considering new evidence.”


1. “For the reasons set forth below, we conclude that there are no evidentiary restrictions beyond those already imposed by the Federal Rules of Evidence and the Federal Rules of Civil Procedure.” 2. “On this question, we hold that the district court must make a de novo finding when new evidence is presented on a disputed question of fact. In deciding what weight to afford that evidence, the district court may, however, consider whether the applicant had an opportunity to present the evidence to the PTO.”

Proceedings and Orders
January 9, 2012