Inventor’s Patent Denial Challenge To Be Reviewed By Supreme Court

Gilbert P. Hyatt challenged his patent denial by the USPTO, and won in the Court of Appeals for the Federal Circuit. Now Director of the USPTO, David J. Kappos is bringing the matter before the Supreme Court.

At least two questions are before the court, but there seems to be some disagreement between the parties as to exactly what those questions are.

Petitioner, Mr. Kappos, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO), presents the questions as:

1. Whether the plaintiff in a Section 145 action may
introduce new evidence that could have been presented
to the agency in the first instance.
2. Whether, when new evidence is introduced under
Section 145, the district court may decide de novo the
factual questions to which the evidence pertains, without
giving deference to the prior decision of the PTO

Respondent and inventor Mr. Hyatt frames the questions a bit differently:

1. Whether the Federal Circuit correctly decided
that a patent applicant who files a “civil action”
under 35 U.S.C. § 145, rather than an “appeal” under
§ 141, may generally introduce new evidence, in
accordance with the Federal Rules of Civil Procedure
and the Federal Rules of Evidence, to show that the
“applicant is entitled to receive a patent.”
2. Whether the Federal Circuit correctly reaffirmed
existing law holding that a district court in an action
under § 145 adjudicates factual issues de novo in
cases where an applicant introduces new evidence
that was not before the Patent and Trademark
Office.

The petitoner’s and respondent’s briefs, including the Petitioner’s reply brief, are available for review.

An amicus curiae brief was filed by the American Intellectual Property Law Association in support of Mr. Hyatt.

Several major inventors have expressed interest in the dispute. Intel Corp., Yahoo, Inc., Microsoft Corp., and Nvidia Corp. collaborated in filing an amici curiae brief in support of the USPTO against Mr. Hyatt.

Additional amici curiae briefs were filed by:

  1. NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION
  2. VERIZON COMMUNICATIONS, INC. GOOGLE, INC., HEWLETT-PACKARD CO., AND HTC CORP.
  3. The Institute of Electrical and Electronics Engineers, Inc.
    (IEEE)
    , a leading educational and scientific association.
  4. INTELLECTUAL PROPERTY OWNERS ASSOCIATION

This case underscores the importance of preparing one’s patent application completely, and promptly responding to office actions from the USPTO.

Oral argument is scheduled to be heard Monday, January 9, 2012. We will make the recording and transcript available here at the end of the week.


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