Kappos v. Hyatt, 132 S. Ct. 1690 (2012) (Thomas, J.; Sotomayor, concurring). For a slip opinion, click here. KapposHyatt.USSC
Hyatt deals with judicial review of PTO rejection of a patent applicant’s claim. The Court holds that an applicant can bring a “civil action” in a district court challenging a rejection that has been affirmed by the PTO Board and can, in the action, (1) freely introduce new evidence, including declarations and testimony, and (2) obtain a “de novo” decision fact issues pertaining to patentability. Importantly, when an applicant does introduce new evidence, a court in a Section 145 civil action need not give deference to the PTO’s fact finding on patentability.
Also of interest in Hyatt is the underlying story, which is discussed below. The facts of the case reveal an amazing and ominous possibility. The possibility is that the applicant Hyatt could obtain a patent, which would have a term of 17 years measured from the issue date (which would be after 2012), but with an effective filing date of 1995 (or 1984 or 1975). The patent might have broad claims drafted to cover products now (2012) being widely marketed in the computer and electronics industries. However, as will be seen, neither the Supreme Court nor the lower courts (Federal Circuit and district court) have actually ruled on the merits. Thus, it could well be that the lower courts will in due course uphold the PTO’s rejections of Hyatt’s numerous “new” claims as lacking written description support under 35 U.S.C. Section 112. Read CPLRG™ 0080