The Supreme Court Determines That There Are No Special Evidentiary Limitations When a Patent Applicant Sues the Patent Office to Obtain a Patent


If an applicant for a patent is dissatisfied with an examiner’s final decision, then the applicant can appeal the decision to the in-house administrative tribunal of the U.S. Patent and Trademark Office (USPTO), which is known as the Patent Trial and Appeal Board (PTAB). If the applicant is dissatisfied with the PTAB decision, the applicant can appeal, directly, to the U.S. Court of Appeals for the Federal Circuit.

Alternatively, the applicant can sue the USPTO Director in the U.S. District Court for the Eastern District of Virginia (EDVA). The primary motivation for suing the USPTO Director in the EDVA is that the applicant can present additional evidence to the district-court judge that may not have been considered by the examiner or by the PTAB.


The Kappos Decision

In Kappos v. Hyatt, ___ U.S. ___, 132 S. Ct. 1690 (2012), the Supreme Court resolved two issues relating to such lawsuits. First, the Court considered whether there were any special evidentiary limitations in such lawsuits. Second, the Court considered what standard of review should be applied to such actions.

The Court concluded that there are no evidentiary restrictions beyond those already imposed by the Federal Rules of Evidence and the Federal Rules of Civil Procedure with respect to the first issue. The Court concluded that a district-court judge does not need to give the examiner’s decision or the PTAB’s decision any deference when new evidence is presented on a disputed question of fact. The Court also found that the judge can consider whether the applicant had an opportunity to present the evidence to the USPTO.  As indicated below, the legal issues presented in the Kappos decision are not the most interesting aspect of the case.


Gilbert Hyatt

The interesting aspect of the Kappos case is the plaintiff and his patent portfolio, Gilbert Hyatt. He is the inventor of a single-chip microcomputer in the 1960s and reportedly licensed his invention for more than $150 million.

Hyatt has been named as an inventor on at least 70 issued patents. As of late 2014, he purportedly had 399 patent applications pending before the USPTO, many of which had been filed in 1960s. The applications are believed to have over 100,000 patent claims that will have to be examined before the USPTO can decide whether to allow them to issue.

Hyatt has been no stranger to litigation. He has sued the State of California for harassing him for tax payments after he moved to Nevada. In 2008, he obtained a jury verdict for $388 million in that case. The Supreme Court vacated the judgment on April 19, 2016. Hyatt has also sued the USPTO at least two more times since the Supreme Court decided the Kappos case in an effort to force the USPTO to act on his pending patent applications. It is possible that these cases could reach the Supreme Court in the future.