May 16, 2012
On April 18, 2012 the Supreme Court announced its decision in Kappos v. Hyatt. This case involves the Patent Act of 1952, under which an applicant who is denied a patent by the Patent and Trademark Office (PTO) is permitted to challenge that decision by filing a lawsuit in federal court. The question here concerns the extent to which an applicant can introduce in federal court evidence that was not presented to the PTO--and the standard that the court should apply in considering such evidence.
In an opinion delivered by Justice Thomas, the Court held unanimously that when introducing new evidence in federal court, an applicant is not subject to limits beyond those set forth in the Federal Rules of Evidence and of Civil Procedure. The Court further held that if such evidence pertains to disputed issues of fact, it should be assessed by the federal trial court under a de novo standard of review. Justice Sotomayor filed a concurring opinion, in which Justice Breyer joined.
To discuss the case, we have David Olson, who is an Assistant Professor at Boston College Law School.