Kappos v. Hyatt: There is no limit on the new evidence that can be introduced in a § 145 proceeding.
A person who applies for and is denied a patent may appeal the decision to the PTO’s Patent Appeals and Interferences (Board) under § 134 of the Patent Act. If he also fails here he may obtain may appeal the decision directly to the United States Court of Appeals for the Federal Circuit under §141 or he may rely on § 145 and file a civil action against the Director of the PTO in the United States District Court for the District of Columbia. Unlike a § 141 hearing, the applicant may present new evidence to the district court that was not presented to the PTO in §141 proceeding. Prior to Kappos v. Hyatt the Court had not addressed the limit on the evidence the applicant could present, nor had it addressed the standard of review the district court should use in …show more content…
The nature of § 4915 proceedings was described in Butterworth v. United States ex. Rel. Hoe, 112 U.S. 50 (1884) and Morgan v. Daniels 153 U.S. 120 (1894). The Court relied on Butterworth rather than Morgan because in Morgan no additional evidence was introduce at the §4915 hearing. In Butterworth, the Court described R.S. 4915 as “altogether independent” from the hearings before the Patent Office and made clear that parties were “at liberty to introduce additional evidence” under “the rules and practice of a court of equity”. Based on Butterworth the Court concluded that Congress intended that applicants would be free to introduce new evidence in § 145 proceedings subject only to the rules to all civil actions, the Federal Rules of Evidence and the Federal Rules of Civil Procedure. The Court further found that a de novo review adhered to the court’s instructions in Butterworth that a section 4915 proceeding is to be heard “upon the whole merits” and conducted “according to the ordinary course of equity practice and