November 2010

Looking Ahead

Under the patent laws, a patent applicant who is dissatisfied with the decision of the Board regarding his application may file a civil action in district court, and the district court will determine whether the applicant “is entitled to receive a patent for his invention . . . as the facts in the case may appear.” 
35 U.S.C. § 145.  On November 8, 2010, in Hyatt v. Kappos, No. 07-1066, the Federal Circuit issued an en banc decision that resolves several issues related to the introduction of new evidence in a trial under 35 U.S.C. § 145.  The Court, in a 7-2 split decision, held “that 35 U.S.C. § 145 imposes no limitation on an applicant’s right to introduce new evidence before the district court, apart from the evidentiary limitations applicable to all civil actions contained in the Federal Rules of Evidence and Federal Rules of Civil Procedure.”  Slip op. at 5.  In so holding, the Court rejected the PTO’s proposal that only “new evidence that could not reasonably have been provided to the agency in the first instance” is admissible in a § 145 action.  Id. (citation omitted).  A full summary of the Federal Circuit’s en banc decision will appear in next month’s edition of Last Month at the Federal Circuit.

On November 9, 2010, the Federal Circuit, sitting en banc, heard oral arguments in Therasense, Inc. v. Becton, Dickinson & Co., No. 08-1511, which focuses on the legal standards for proving the defense of inequitable conduct—particularly the tests for proving materiality and intent, and to what extent intent may be found based on materiality.  A decision is expected in the first half of 2011.