Tuesday, August 11, 2009

Hyatt v. Doll

This opinion reviewed the history of 35 U.S.C. § 145, which allows a patent applicant to challenge the decision of the PTO in a district court proceeding (as an alternative to the more common path of seeking review in the Federal Circuit). At issue was whether evidence not introduced during the proceedings at the PTO could be considered by the district court. The applicant sought to have a declaration considered that he argued would have helped establish that the rejected claims met the written description requirement. The district court “excluded the Hyatt declaration because it found Hyatt had been ‘negligent’ in failing to submit it to the PTO during examination or in a timely manner to the Board on appeal.” (p. 11.) It then granted summary judgment that the claims were invalid for failure to meet the written description requirement. In a lengthy opinion, the Federal Circuit agreed with the district court on the issue of excluding the declaration and affirmed the grant of summary judgment.

In reaching its conclusion on “the issue of exactly what standard governs district courts in ruling on the admissibility of evidence withheld during examination in the PTO,” (p. 12), the Federal Circuit discussed the history of § 145, the Administrative Procedure Act (which it has held applies to actions under § 145 (p. 39)), and the “general practice of federal courts over eighty years” (p. 34). The court made clear both that there is no absolute rule against introducing new evidence in a § 145 action and that its decision was specific to the facts of this case. The applicant’s actions during prosecution appeared to weigh heavily in the decision, as the court noted in several ways: Noting that “On these facts…” the district court must be upheld (p. 50 (emphasis in original)), that the applicant “willfully refused to provide evidence in his possession in response to a valid action by the examiner” (p. 50), that the applicant exhibited “willful non-cooperation,” and concluding: “This blatant non-cooperation was willful. Allowing Hyatt to escape the consequences of his refusal to timely submit his own information to the PTO that he was required by law and requested by the examiner to submit would hardly be consonant with the APA or the legislative purpose of § 145.” (p. 51.)

In sum, the court found that in some circumstances, a district court may exclude new evidence in a § 145 action but made clear that it was not creating an absolute rule against ever admitting such evidence. “The dissent incorrectly describes our decision as promulgating a ‘sweeping exclusionary rule.’ We have not adopted a ‘sweeping’ or ‘per se rule.’ We express no opinion as to admissibility of evidence in the multitude of variegated factual scenarios that may arise in the future which the dissent claims are decided today.” (p. 55.)