En banc CAFC negates earlier panel decision in Hyatt case

The conclusion of the en banc CAFC:

For the reasons stated herein, the district court
abused its discretion in excluding Mr. Hyatt’s declaration.
We therefore vacate the judgment of the District Court for
the District of Columbia and remand for further proceed-
ings consistent with this opinion.

Previously, at the panel leval:

Mr. Hyatt appealed, and a divided panel of this court
affirmed. Hyatt v. Doll, 576 F.3d 1246 (Fed. Cir. 2009).

This panel decision had been vacated:

The dissenting judge disagreed, arguing that the dis-
trict court abused its discretion by applying the wrong
legal test for the admissibility of the evidence. The dis-
sent argued that the plain language, legislative history,
and Supreme Court jurisprudence relating to § 145 estab-
lish that an applicant’s right to present new evidence in a
§ 145 action is subject only to the Federal Rules of Evi-
dence and Civil Procedure. Id. at 1280-81, 1284. Further,
the dissent disputed the propriety of determining on
appeal that Mr. Hyatt willfully withheld his declaration.
We agreed to rehear the appeal en banc and vacated
the judgment of the panel. Hyatt v. Kappos, 366 Fed.
Appx. 170 (Fed. Cir. 2010).


Judge Newman filed a partial dissent from the en banc
decision:

I join the en banc court’s holding that new evidence may
be provided in a civil action brought in the district court
under 35 U.S.C. §145. However, the court also holds that
when no new evidence is provided, the findings and rulings
of the PTO receive the same deferential treatment in the
district court as would apply if the cause were not a civil
action under section 145, but instead were an Administra-
tive Procedure Act direct appeal to the Federal Circuit
under 35 U.S.C. §141. That is not the statutory plan.

The statutory plan is designed to differ from such a du-
plicative procedure, not to create it. Nonetheless, the court
today holds that for those issues for which the applicant
relies on the same evidence as was before the patent exam-
iner, the ruling of the PTO is not determined de novo but is
reviewed with APA deference, identically to the section 141
appeal, except that the decision is initially made by one
judge in the district court, en route to three-judge review if
appeal is then taken to the Federal Circuit. No party pre-
sented or even contemplated such a redundant procedure,
and no amicus discussed it. It is contrary to statute, to
precedent, and to almost two centuries of legislative policy.


Footnote 1 of Judge Newman's opinion makes a "common sense"
argument:

The PTO Solicitor and my colleagues in dissent ar-
gue that applicants will deliberately withhold evidence in
their possession, in order to spring it on the district court
under section 145. I share the view of the amici curiae that
it is unlikely that applicants will withhold winning evidence
from the examiner, in favor of a multi-year and expensive
civil action in the district court.

**See previous IPBiz post


Hyatt gets en banc review at CAFC on evidence issues!