Today in Hyatt v. Kappos, __Fed.Appx.__ (Fed. Cir. 2010)(en banc)(order), vacating panel opinion, Hyatt v. Doll, 576 F.3d 1246 (Fed. Cir. 2009)(Michel, C.J.), the Court provides a vehicle to reopen the door to the presentation of evidence in a trial de novo under 35 USC § 145, asking three questions relating to the presentation of new evidence at the District Court as the case will be reheard en banc.

The Split (now Vacated) Panel Opinion: The panel majority followed the view of the Solicitor taking a hard line on the presentation of new evidence at a § 145 trial. The exclusion of new evidence by the panel majority was criticized in the dissent that succinctly summarizes the traditional view of the law:

“[T]he majority blurs the line between an appeal pursuant to § 141 and the civil action of § 145. The admissibility of new evidence is exactly what distinguishes § 145 from § 141. “We must be vigilant to preserve to patent applicants the alternative procedures that the law provides, and to preserve the historical distinction between them.” Fregeau [v. Mossinghoff, 776 F.2d 1034, 1041 (Fed.Cir.1985)](Newman, J., concurring-in-part). The legislative history and Supreme Court precedent make clear that the hallmark distinction is the admissibility of ‘all competent evidence,’ ‘to build up a new record,’ ‘to start de novo in court,’ ‘and file testimony bringing in evidence that they could have brought in before [the PTO] but did not bring in before.’ This evidence, admissible in this civil action, should be governed as the Supreme Court indicated by ‘equity practice and procedure,’ i.e., the Federal Rules of Evidence and Civil Procedure.

“Since only the presence of new evidence invokes the de novo standard of review (otherwise the district court will give the Board fact findings substantial evidence deference, see Fregeau, 776 F.2d at 1038), the majority's decision in this case makes the § 145 action virtually indistinguishable from an appeal under § 141. This version of a ‘civil action’ under § 145 is contrary to Congressional intent and to the Supreme Court's rulings. While it is sound policy to encourage full disclosure to administrative tribunals such as the PTO, we are not the body that makes the decision of how best to do this. Congress held numerous hearings over this legislation, considered the concerns over permitting a civil action, and decided to enact the legislation despite these concerns.” Hyatt v. Doll, 576 F.3d 1289-90 (Moore, J., dissenting).

Three Questions on Limitations to Evidence in a § 145 Action: The en banc order of the Court asks whether there “[a]re… any limitations on the admissibility of evidence in section 145 proceedings? In particular—

“(i) Does the Administrative Procedure Act require review on the agency record in proceedings pursuant to section 145?"
“(ii) Does section 145 provide for a de novo proceeding in the district court?"
“(iii) If section 145 does not provide for a de novo proceeding in the district court, what limitations exist on the presentation of new evidence before the district court?”

PTO Attempt to Severely Limit New Evidence: The PTO for some time has been attempting to squelch patent applicants and patentees from taking the § 145 route to review decisions of the Office. See Dennis Crouch, Appealing BPAI Rejections in Ex Parte Reexaminations, Patently O (February 16, 2010)(discussing the work of Charles Miller). The writer was involved in a § 145 case where the principal attack by the Office was not on the evidence presented but on whether evidence could be admitted. Takeda Pharmaceutical Co., Ltd. v. Dudas, 511 F.Supp.2d 81, 86-87 (D.D.C. 2007)(Hogan, C.J.), subsequent proceedings on other grounds sub nom Takeda Pharmaceutical Co. v. Doll, 561 F.3d 1372 (Fed. Cir. 2009).

The First En Banc Argument of the new Rader Court: The Hyatt case represents the first en banc case that will be gaveled to order by new Chief Judge Randall R. Rader. (En banc briefing will be accepted if filed within forty-two (42) days with the PTO brief due within twenty-eight (28) days of service of the PTO’s brief with a Reply Brief due fourteen (14) days thereafter. Amici briefing will be entertained and an oral argument will be scheduled.)