Fact–Checking With the Supreme Court

Congress has created a web of laws that connect the U.S. Patent and Trademark Office with the federal courts. Sometimes—arguably too often—this web is a tangled one, creating inconsistencies between what you can do and argue in the Patent Office and what you can do and argue in Court. For an example, see the full–throated dissent of Judge Newman in a case that affirmed the Patent Office’s decision to invalidate a patent as obvious after the patent had been ruled valid by a federal district court in earlier litigation.

Patent applicants who have their applications denied by the Patent Office have two avenues to challenge that outcome in court. One leads directly to the Federal Circuit Court of Appeals. See 35 U.S.C. § 141. The second leads to federal district court in an action against the Director of the Patent Office under 35 U.S.C. § 145. In this kind of action—truly, the road not often taken—the district court may “adjudge that such applicant is entitled to receive a patent for his invention…as the facts in the case may appear.” In a case argued to the Supreme Court this week, Kappos v. Hyatt, the Supreme Court has been asked to decide which facts “may appear” in the court proceeding—more specifically, whether a court may consider new facts that were not before the Patent Office, and whether the court must defer to the prior decision of the Patent Office regarding the relevant facts.

While the specific result in this case may not have wide application—section 145 lawsuits are infrequent—the result may untangle one corner of the web that binds the Patent Office and the courts, and signal in some way what balance the Supreme Court deems appropriate between Patent Office experience and expertise on the one hand and judicial authority on the other.

Posted by David Swetnam-Burland