Chapter §11.10 Civil Actions for a Patent

• Jurisdiction: United States

§11.10 Civil Actions for a Patent

Civil actions to obtain a patent are provided for in §145 of the Patent Act.³³¹ In these proceedings, parties dissatisfied with the decision of the USPTO Board bring a lawsuit in federal district court against the USPTO's Director. Should a plaintiff prevail in the civil action, the district court will issue an order authorizing the USPTO to issue a patent. If the plaintiff does not prevail, he may appeal the district court's decision to the Federal Circuit.³³²

Before the AIA, §145 actions were filed in the U.S. District Court for the District of Columbia.³³³ The AIA changed venue for, inter alia, §145 actions to the U.S. District Court for the Eastern District of Virginia.³³⁴ The venue change reflects the fact that the USPTO is currently located in Alexandria, Virginia (within the Eastern District of Virginia) and has not been located in the District of Columbia for many years.³³⁵

The §145 civil action route is generally more expensive and lengthy than a direct appeal from the USPTO to the Federal Circuit under 35 U.S.C. §141. The §145 action is a type of litigation in federal district court, with the pre-trial discovery procedures that such litigation entails. The Federal Circuit has characterized the §145 action as "hybrid" proceeding—it is neither an appeal nor a complete trial de novo:

[The §145 action] is not an appeal; the language of §145 expressly distinguishes its civil action from a direct appeal, and the Supreme Court has recognized that an applicant may introduce new evidence before the district court that was not presented to the Patent Office. However, it is also not an entirely de novo proceeding. Issues that were not considered by the Patent Office cannot be raised with the district court in most circumstances, and if no new evidence is introduced, the court reviews the action on the administrative record, subject to the court/agency standard of review. ³³⁶

Nevertheless, the key advantage provided by the §145 civil action is that the plaintiff can introduce new evidence before the federal district court that was not considered by the USPTO, so long as the evidence is directed to issues that were considered by the USPTO. In contrast, new evidence (regardless of the issue involved) cannot be presented in a direct appeal to the Federal Circuit; such appeals must be "on the record" that was before the USPTO in accordance with 35 U.S.C. §144. As explained by the Federal Circuit,

[t]he particular significance of a §145 civil action is that it affords an applicant the opportunity to introduce new evidence after the close of the administrative proceedings—and once an applicant introduces new evidence on an issue, the district court reviews that issue de novo. Thus, an applicant's ability to introduce new evidence is the hallmark of a §145 action. It is the primary factor that distinguishes a civil action under §145 from an appeal. ³³⁷

In its 2010 decision in Hyatt v. Kappos,³³⁸ the Federal Circuit went en banc to resolve questions concerning what, if any, limitations exist on introduction of evidence in a §145 civil action. The en banc majority rejected the USPTO Director's position that only "new evidence that could not reasonably have been provided to the agency in the first instance" should be admissible in a §145 action.³³⁹ Rather, based on the plain language of §145 (directing that a district court may "adjudge that [an] applicant is entitled to receive a patent for his invention . . . as the facts in the case may appear") as well as the extensive legislative history pertaining to the remedy that would ultimately be...