Published on: 2/1/2012
Joseph R. Carnicella, Picadio Sneath Miller & Norton, P.C.

The issues to be decided in this case are as follows: (1) whether a plaintiff, who is appealing the denial of an application of a patent by commencing a civil action against the Director of the United States Patent and Trademark Office (PTO) in a federal district court pursuant to 35 U.S.C. § 145, may introduce new evidence that could have been presented to the agency in the first instance; and (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.  On January 9, 2012, oral argument was presented by the parties before the Supreme Court of the United States with Ginger D. Anders, Esquire, appearing on behalf of Petitioner, and Aaron M. Panner, Esquire, appearing on behalf of Respondent. 

Petitioner argued that a plaintiff is afforded an opportunity to present to the court material new evidence that it refused or failed without cause to present to the PTO as part of its application for a patent, and then is provided with a de novo review of the PTO’s determinations on all of the relevant issues.  Petitioner asserted that § 145 should be interpreted as a safety valve proceeding that permits applicants to introduce evidence to the court that they reasonably could not have presented to the PTO.  In response to a statement regarding the fact that the evidence that was not presented or that points in a different direction from the findings of the PTO goes to the weight and not the admissibility, Petitioner submitted that the de novo review standard would result in there being no deference to any of the PTO’s fact findings, even on the evidence before the PTO.  Petitioner concluded that, in an action for judicial review of an agency determination, deference should be given to the PTO based on its expertise and that there should be a compelling reason to permit an applicant to introduce evidence that was not provided to the agency without cause or justification. 

In turn, Respondent argued that Petitioner’s argument that a plaintiff should be barred from introducing new evidence in an action under § 145 except in the unusual if not extraordinary circumstance where the applicant had no opportunity to introduce the evidence is incorrect.  Respondent based the argument on the plain language of the statute, the structure of the judicial review provisions in the Patent Act, and the long history and the court’s constructions of the provisions.  Respondent compared the situations when a party would proceed under § 141, which is an appeal to the Federal Circuit and the party is limited to the record before the agency, or under § 145, wherein a party can introduce new evidence and address the issues raised by the PTO.  Respondent then suggested that the standard of review when there is new evidence presented on an issue is a question of the weight that may be afforded to the agency’s determination.  Respondent proposed that the initial burden lies with the PTO, and if there has been a proper rejection of a patent application by the agency, the burden shifts to the applicant to prove entitlement to the patent.  With respect to any limits on the new evidence, Respondent submitted that principles of estoppel would be applicable and could lead to the exclusion of evidence.  Respondent proffered that the standard of proof would be a preponderance of evidence, and the weight to be given by the district court to the prior finding of the PTO would depend on the record with a comparison to be made as to the findings of the agency and the new evidence.

Joseph R. Carnicella is an attorney at Picadio Sneath Miller & Norton, P.C. in Pittsburgh.