Kappos v. Hyatt (10-1219)
argument 10-1219Kappos v. Hyatt
Supreme Court of the United States
57 min
5 speakers
8 chapters
transcribed 5 days ago
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What does Section 145 of the Patent Act allow a patent applicant to do?
Next in case ten, twelve, nineteen, Kapos versus Hyatt. Ms. Anders?
Thank you. Mr Chief Justice, and may it please the court. Section one hundred forty five of the Patent Act permits a person who has sought a patent from the PTO and believes that the agency has wrongly denied his application. to seek judicial review of that decision in district court. The Federal Circuit in this case held that the plaintiff in a Section 145 action may obtain a more favorable standard of review, de novo review. by flouting the PTO's rules during the examination process. Under the court's approach, a plaintiff may present to the court material new evidence that he refused or failed without cause to present to the PTO. And as his reward he has given de novo review of the PTO's expert determinations on all of the relevant issues.
for three reasons that unprecedented regime could not be allowed to stand. First, principles of administrative deference and exhaustion require that the PTO be given the opportunity to apply its expert judgment to all of the reasonably available evidence. For that reason, Section one hundred forty five should be interpreted as a safety vow proceeding that permits applicants to introduce evidence to the court they reasonably could not have presented to the PTS.
And you only get a one hundred forty five proceeding when you have new evidence?
Uh no. Suppose I
have no new evidence and and I I I want to challenge. Can can I bring a one forty five?
Yes, Section one hundred forty five permits any applicant dissatisfied with the decision of the PTO.
And uh and on what basis does the court decide the case? De novo?
uh no the federal circuit has held that in those cases uh uh substantial evidence review applies and the where the federal circuit gets that is this court's case in Morgan versus Daniels. That was an action under Section one hundred five's predecessor. There was no new evidence in that case and the court held that this was a proceeding in the nature of a suit to set aside a judgment. The judgment of the expert agency which had made its determination And that therefore, because this was administrative review, a deferential standard of review should apply. So it's quite clear that when
how close a predecessor is the predecessor?
All of the material uh language is is the same. But
the Morgan case involved it wasn't a contest between the PTO um and the would be No. Patent holder, it was an interference proceeding, wasn't it?
That's correct, Justice Ginsburg. It was an interference proceeding, and that's because at the time Section one hundred five's predecessor applied equally to interferences and to ex parte patent denials. But the court's reasoning, its discussion of of the predecessor statute, uh did not distinguish based on the fact that this was inter an interference. And also this court and the
Th it's interesting that the language of Morgan and one of its uh companion cases not companion in the sense of being heard at the same time but on the same issue, Radio City case. Both of them don't talk in the language of today. They don't talk about deference, they don't talk about substantial evidence. They talk about whether the PTO has expertise and presumptions that their fact findings based on their expertise. have to be overcome with some convincing evidence. So they're talking in different language, but the concept they're talking about is one where the Court does accept findings of the PTO. on the matters that involve their expertise. And um give them weight, substantial weight essentially. And
uh only overturn it if the court is, in the words of Morgan and Radio City, Thoroughly convinced. that they were wrong. So what's wrong with that standard? Everybody likes the deference language of today. But they were very clear in what they were saying. If the PTO made a finding You decide whether that finding was based on its expertise. And if it was, you don't change it, Court. unless you're thoroughly convinced they were wrong. Is there anything wrong with that? With that articulation of what the standard should be in all situations.
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Chapters
8 chapters
1
What does Section 145 of the Patent Act allow a patent applicant to do?
0:01–6:33
2
How does the Federal Circuit’s “de novo” standard differ from the traditional “substantial‑evidence” review?
6:33–12:59
3
When can a plaintiff bring a Section 145 action without presenting new evidence?
12:59–20:38
4
What is the “thorough‑conviction” standard from Morgan and how does it apply to new evidence?
20:38–28:03
5
How do oral testimony and temporally‑based evidence fit into a Section 145 proceeding?
28:03–35:39
6
Why do some justices argue for a uniform standard of review across agencies?
35:39–44:28
7
What are the practical implications for patent applicants choosing between Sections 141 and 145?
44:28–52:14
8
How does the Court balance de novo review with the presumption of validity in patent cases?
52:14–57:59