Oral Argument Legal Case Summary

Oral Audio Transcript(Beta version)

. In any action and equity there are the possible limitations on the position that a party could take in light of previous positions taken and relied upon. So, for fairly early in the cases there is a recognition of the possibility that an applicant could take a position before the PTO and then be a stop from taking an inconsistent position in an original action. That doesn't reflect anything particular about Section 145 but it is a limitation that would have been partly the traditional equity practice that would have been understood by Congress when they authorized the bill of equity and then reauthorized it and maintained it and then maintained it. So, there is nothing special about the 145 context that gives rise to the equitable stop but it is simply something that is part of equity practice and I think it helps to explain the results of some of the cases that the government has relied on the panel alluded to as an example. Should we take any parallelism between Section 145 and 146 and a similar proceeding from the interference results versus the rejection of a patent application? Well, I think that they have a common ancestor in Section 4915 and I think that there are many ways in which the two proceedings are going to be quite similar but I think Judge Luriel alluded to the possibility that and I think the reality that an inter-party is proceeding because of the nature of the adversarial process before the agency is going to lead to a sharper definition of issues and is much more likely to lead to reliance by one of the parties on the position taken by the agency. So, it is somewhat more likely that there will be a situation where as a matter of equity the scope of the proceeding under Section 146 may be somewhat more limited and I think that that accounts for what ought to be a difference with respect to the possibility of raising what might be characterized as new issues. What about with respect to the evidence? I mean, in terms of the introduction of new evidence, the UV 146 and 145 is being the same. I think that both of those, both in both circumstances, new evidence is permitted. The same standard, in other words, there is the same limitations or lack of limitations apply in each case. I believe that is correct, Your Honor. I plainly disagree on the case under Section 145. There are some differences in the wording of the statute but I think that those differences principally reflect the effort of Congress to correct what had been some anomalies under, you know, in the practice under Section 146 with respect to admission of the record before the agency. The practice had been that you couldn't bring in the record before the agency in general in the 146. That is correct, Your Honor, that there had been some limitation on, or some courts had read a limitation on doing that which required the parties to reintroduce evidence and it was cumbersome and so Congress made clear that that was not required. But I do think that with respect to introduction of new evidence under both Section 145 and 146, the rule is that it is admissible in accordance with ordinary activity practice. So in your view, I understand that you are viewing your briefs that Mr. Haya had a rationale for doing what he did when he did it. But if hypothetically an applicant refuses very reasonable request for information by the examiner because he just believes, flaciously in his mind, that the examiner isn't going to give him a fair shake. And then he goes to the district court and the district court says, why didn't you offer this to the Patent Office and he says, because I thought they were just going to be unreasonably unfair to him. In your view, would that be an exception or should that person, that applicant, be permitted to introduce that evidence withheld from the PTO's request? Well, Your Honor, I think it's a fair question to wonder where the line would get drawn in a case where the conduct before the agency could be taken as giving rise to an assault. I think in the case that you've alluded to, which is obviously a hypothetical one on these facts, there would be an issue as to whether there would be a bona fide response at all for the agency. It's clear under the statute that the applicant does need to pursue an appeal before the board. So arguably, in a case in which the applicant was found to have abandoned the application for failure to file a bona fide appeal brief, that could be a different circumstance. But that wasn't the case here. There was no suggestion before the PTO that the applicant didn't file a bona fide response to the final office action at all. And, you know, I understand that there's a dispute between Mr. Hyatt, the government, as to the adequacy of the briefing

. But it is far from the line that would give rise to any sort of a stop-align indeed on the agenda. So what is the line you think we should draw then, abandon it? Well, abandon it. That's one instance where the evidence that you should have might have presented to the people. Well, I think that there is a body of law of an equitable stop-align that the courts could draw on. The district court could draw on determining whether evidence would be admissible, as I say. This case is nowhere near the line. But what's the body of law? In your view, what line does that body of law suggest should be drawn? If somebody before the PTO says I'm going to save my evidence, I'm not going to put it in here. I'm going to put it before the district court. That's okay in your view, isn't it? Well, I think that where there is a focus, at a certain point, and I think that this is where the particular cases will require the exercise of a court's equitable judgment. There are other ways that it means. I mean, are you saying somebody can appear before the PTO? I'm going to say I've got some evidence that I want to use, but I'm not going to put it in so that the PTO has considered, and I'm going to save it for the district court. Can somebody do that? Well, I don't think that they could say that. And let me try to explain. And I think that the barricade actually provides an illustration. That there may be a circumstance in which there is such a focused demand for information, specific factual information, and evidence within the applicant's possession that the failure to produce it is in some ways a constructive representation of its non-existence. Now, I realize that may sound a little bit philosophical, but some of the cases in which district courts decline to consider evidence involve circumstances where there was a very focused issue, for example, regarding priority or anticipation. And where the patent office made repeated effective demands for any evidence in the patent in the applicant's possession that would establish the priority date that would give rise to a potential validity. And the patent, or I should say the applicant, failed to produce that evidence consistently over the course of years in the face of focused requests. So, but in the absence of a demand, he can hold back and sit on the evidence and not present it to the PTO? Well, I should say, there was no holding back here, but certainly there is no one's new answer. Can you hold back? If there's no demand from the patent office, you can sit on evidence and not present it to the PTO and bring it into the district court. What about your position? I think my answer to that is yes. And let me say, my resistance is that obviously holding back sounds like... Can you win the alternative to dumping on the PTO everything in your possession? For example, on commercial success. Does the PTO really want every piece of evidence that our view for you as a company has on that point in an obvious misconduct? That's where I touched more, and that's really where I was going. One can say, hold back, but the fact of the matter is that every patent applicant has to make a judgment

. Well, but if your judgment is, I think this is very pertinent, I'm going to use it in the district court, and I'm not going to give it to the PTO. You're saying they can do that, right? Well, your honor, if the patent applicant, I think it's only unlikely that that would occur, and that is why they do not design it. Can they do it? Can they say, this is very pertinent. No, I'm not going to give it to the PTO. I'm going to wait for the district court. Can he do it? Yes, I believe that the proper standard would permit a patent applicant who had evidence that was pertinent to introduce it in the district court if there was no basis for a stop in him from doing so. Was there no withholding here because there wasn't actually evidence to his argument? Well, your honor, I think there certainly was no withholding here, and there is, I do think there was evidence. Yes, well, what the applicant offered before the district court certainly was evidence. And let me, and that is true because... What was the evidence other than pointing to the specification saying, here is the support. It was evidence as to what a person of ordinary skill in the art would have understood from the specification. And that's actually very important evidence to be able to offer the district court. It's not necessarily some kind of proof for the PTO. It's from the inventor whose application it was. That's right, and that sort of evidence as Judge Moore actually pointed out in her dissenting opinion, a venture evidence about written description is admissible. Is admissible evidence, an expert testimony on written description is common. There are many, many cases on this court in which such evidence has been discussed. Council, I think you're out of the eye on this thought. The district court would be free to give less weight to what looks like an ex-coast rationale that is developed by an inventor or sort of last-minute evidence that seems to come out of nowhere. I mean, district courts, typically in civil actions, allow in evidence, but then the fact finders, of course, free to record less weight because the evidence seems less credible in light of its last-minute introduction. And that would be something that I would think you would agree is perfectly proffer under the circumstances. That is absolutely right, Your Honor. And indeed, many of the cases that the government relied on in their brief to suggest that evidence could have been excluded, involved precisely that situation, where evidence is proffered that is, for example, evidence about the statement of a witness who has died in the interim, who cannot rebut it. And the district court, you know, quite sensibly says, given that you could have offered this evidence before and did not do so, it's somewhat suspicious that you are now attributing to this dead witness. So if the district court here had said that, if he had said Mr

. Hyatt, I believe this would have been responsive to the request for information by the patent examiner. And therefore, I'm going to admit the evidence, but I'm going to give it virtually no way. Do you have a basis to make an argument on appeal with respect to what the district court did? Well, I think that there would then be a question as to whether there was clear error around the findings of fact. There would be, you know, once the evidence is admitted and the district court makes a finding of fact, with regard to the adequacy of the written description, that would then be reviewed by this court under the court court clear error standard. And then we would have an argument about whether the evidence was sufficient to carry the burden that the plaintiff had to establish patentability. And that would have happened, if I could find the error. Mr. Panna, when new evidence is attempted to be admitted, who bears the burden as to whether that evidence falls on the right side or the wrong? And the evidence is on the right side of the line. The defendant had the burden to show that it's proper to submit the evidence. So does the patent office have the burden to show that it is impromptu? Well, you know, the evidence would be admitted under ordinary, evidentiary principles. I assume, let's leave aside for a moment any question on the Federal Rules of Medical. Let's assume it's otherwise competent evidence. With respect to the issue here, which would be, is there a basis for excluding otherwise competent evidence, say under the principle of the stop-up? The burden for the burden would rest squarely on the party is tempting to establish the stop-up, to try to establish that as a basis for excluding evidence. So that the, you know, if the evidence is otherwise admissible and there's no claim that this was not. So your default is that everything is inappropriate in a 145 action, except that which the government can show is inappropriate. If it's otherwise admissible, that's right. So the only limit would be the rules of evidence limitation at that point. Rules of evidence, civil procedure, ordinary equity practice, that's right, you're on our side. So that is where the, you know, it's an ordinary bill in equity and it has been for a very long time. 145 was born as a bill in equity. Correct, correct. So if in fact you had this evidence, so it could have presented the evidence before the patent office. The patent office shows that in its proceedings and its objections. Well, that'd be sufficient to keep the evidence tough as an estoppled basis or would it be just admitted anyway and let the court weigh the value of the evidence at that point? It would be a ladder, Your Honor, that there, because there is no principle under the traditional equity practice that any evidence not admitted before the agency would be excluded. There's no obligation on the part of the applicant to provide all of the evidence that could potentially be useful in a later proceeding before the agency. And the mere failure to provide evidence would not be a basis for exclusion. And that is really a principle that makes sense because the attempt to sort of look behind the rationale for the introduction of the, you know, why the evidence may have been or may not have been presented at the time before the PTO is a burden that that need to be undertaken in these proceedings

. It is more efficient as I think the court made a point, some of a related point in Quaype Newman. The District Court can take in the evidence and decide the facts with respect to the issues that, you know, we're regard to the passability of the claims. You agree, I take it, that if there's no new evidence, then the task of the District Judge is simply to determine whether substantial evidence supports the fine news and the, on the basis of the record by the PTO, correct, by the board. That's right. All right. Now, does that change with the admission of any evidence? That is to say, the minute you introduce even the tiniest bit of evidence in the District Court proceeding, then the entire proceeding becomes District Court doing a denovo finding, excuse me, with respect to everything including all the evidence that was before the PTO. Or does the District Court still defer to those findings made by the PTO and simply make separate findings in light of the new evidence to the extent necessary to accommodate the new evidence? I think that's a fair question, Judge Bryson, and I don't think it's squarely presented here because the threshold issue was the admission of the evidence. As to what our position is on that, I think that as a practical amount of District Courts are likely to give significant weight to what the agency, what they see from the agency record. But as a matter of fact, we have to tell the District Courts what to do, and are we telling them the minute there's a drop of new evidence, then everything changes are we saying the new evidence has to be assessed in light of what the court is doing. What you've been doing previously and will do with respect to the substantial evidence difference with respect to the large body of evidence in the findings made by the Board. I think that what the District Court should do is to the extent there is new evidence going to a particular issue of fact, for example, the, it would be incumbent on the District Court to weigh a new, the evidence to evaluate all of the evidence and reach its own conclusion. The critical difference, I think, between the Denouvo standard and a definite standard is that in one case, the District Court has to reach its own conclusion. Now, the District Court presumably would look at the decision of the PTO and the argument put forward by the PTO in a 145 case and would give that appropriate weight and would look at the, you know, and consider the expertise of the fact finder simply as a matter of the District Court weighing evidence. But it would be a Denouvo finding, which is quite different from the review of a finding of a District Court based on the record that exists. And so that's really the significant difference is it not between looking at the 145 issue now with the history of Zerco and the patent office being placed under the APA where it was not when this entire body of judicial review arose. And I think that's still an interesting question which may not have to be answered in this particular appeal, although more likely than not it does, because the fundamental question underlying our taking this entire issue in bank, not so much to try and draw fine lines based on hypotheticals because there's no legal issue in the world for which you can't find a fine line with a difficult, and it's not a good idea. And so on particular facts, but the question of whether in fact it's appropriate and intended to continue the traditional Denouvo fresh review that underlay 30s or before the sense that we're not comfortable with administrative agencies. A person with the property right is entitled to judicial review. Do you feel that we're answering that question? It was focused upon by Judge Price and I think significantly. Well, gentlemen, I think this court actually has addressed that question non-end bank, but in two prior cases both in Fregaux and then in Missouri which was decided, of course, after Zerco. That was before the APA intervened with Missouri was after. And Fregaux was before. Correct, Fregaux was before, but Fregaux, Missouri was after. And I think that in both cases what got changed from Fregaux was what happens if the record is the same. Fregaux said, well, if the record is the same, we use the court court clear-air or standard, and of course that is what Zerco changed. So that now Missouri says no if it's on the same record, it is the substantial evidence APA standard. But both of those cases recognize and quite consistently with the opinion of the Supreme Court of Zerco that where there is new evidence, the district court is a fat finder

. That is makes its own Denouvo findings. So the district court is making a decision. Now how the district court makes that decision what way it gives, I think it's going to depend on the particular matter. So if you know this is such a narrow issue, a question of patentability. We know the broad issues, 103, 112, whatever it is. To say that the district court reviews what it gets in so far as the office has a final decision for support by substantial evidence, looks at whatever additional information is presented, and then we review to see whether the district court correctly supported by a preference based on the court's accordingly. So the district court is putting a substantial evidence standard to the portion of the entirety which was decided by the office. It seems to me that in the mind of human beings it doesn't work that way. Well, I'm not sure. I think that this case actually illustrates how it can work quite well. There was a focused issue which was the adequacy of the written description for certain claim limitations. There was evidence that was introduced as to how in the how particular elements in specification and in the drawings should have been understood to describe those limitations, how they would have been understood by someone with ordinary skill of the in the art to present to provide that description. And the district court should have looked at that evidence and made a factual finding based on the arguments and the evidence that the PTO would have introduced a trial as to whether that written description was adequate in light of what a person of ordinary skill in the art would have understood. Mr. Paner, would you like to retain your report about time? I would. Thank you. We move on to this statement. Chief Judge Raider may please the court. Section 145 provides for judicial review of the patent offices rejection of a patent. It does not provide for a denoubo trial and it does not require admission of all evidence. The evidence that should have been presented to the patent office is excludable by the district court. The authority of the court, that authority of the court is rooted in three sources of law. First, there's the tax and structure of the statute and the Supreme Court's interpretation in Serko and in Morgan. How about the evidence that didn't exist during the time of the patent office prosecution, what could have, for example, laboratory testing that was resorted to later. Didn't exist. Would that have been excludable? It may be excludable or also may be admissible. That's where the court has to look to determine whether there's a reasonable basis for not having presented to the patent office

. And that is consistent with the, what we think that the Morgan court would have done under the principles and law of equity at the time of that decision. The court made clear that the starting point is the record of the patent office and it made clear that it wasn't just an appeal. This was in the nature of emotion to set aside a judgment. Well, in the context of the Morgan case, which had absolutely nothing to do with the introduction of evidence because neither party attempted at any stage to introduce any. So when the Supreme Court may be a very equivocal statement, this is like a bill of review. It's for the purposes of that case and what that case is analyzing, right? Not for all purposes. That's right, Your Honor. What we rely on Morgan for is the core nature of the proceeding and of course, the Zerco then relied on Morgan and Zerco was against the standard of review. Well, it was an ex party case that looked to Morgan to see the nature and it also recognized that new evidence could be admitted. But it nowhere set that it was agent Novo proceeding. And if you look at I think as my opposing counsel has suggested he's relying on equity, we think there's equity at the time of Morgan that points to our standard. There's the law of administrative exhaustion and waiver that was developed under the predecessor statute 49, 115 in Barrett and its progeny. And also modern day APA law and rules of waiver and exhaustion all point our position for the district court's authority to exclude evidence that should have been before the patent office. And on Barrett, I'd like to say one thing I think that's clear, that's critical about their equity argument. And court of that is their proposition that in Barrett, the new evidence was sent from contradictory to the earlier evidence. I didn't see that anywhere in the reading of that opinion. It had to do with whether or not it had been reduced to practice. And before the patent office, the evidence was about laboratory experiments. And the copy at that point, it instructed some witnesses not to talk about commercial development or commercial success. And then that was the evidence they tried to admit later. It doesn't mean it was contrary, it could have been very consistent and there may have been other reasons for not admitting that. So that does not support this rule that opposing counsel is trying to create about equitable stock. I'm confused about what your rule is. You have a sweeping statement that lumped in Barrett, APA and everything else is supporting your rule. It doesn't be consistent with the rule that you proposed for new evidence because the APA says no new evidence really absent really exigent circumstances. Oh, it doesn't say that, you're honor. It doesn't say that

. What the standard would be under the APA? APA supports exactly what you are particularly. I will do that. The APA makes quite clear that there's a statutory framework for agency action and judicial review. That governs. The APA has certain things about standards or review that apply. And one of the things that the APA recognizes first, under Darby versus Sineros, is that if there are rules of administrative exhaustion that the agency has those have to be abide by. It's clear that the patent office has those. I believe it's a 47-13 that are 31, 31-47 that says you have to raise all of your arguments before the board. The statute here makes clear it has to be exhausted through the board. And that's what apply in a 141 type action before us. And in the Missouri panel opinion in this case, interpreting Zirco, the court, I think very much answered Judge Bryce's question of fact because there there was both the record evidence which this court held was reviewed on the record. Under APA section 706 to E. E is the provision that says that an agency's judgment is reviewed on the record. It was an under F which is the Denelvo standard. It was under E. E under APA is on the record. And Missouri held that for that that's a substantial evidence standard. In addition, when there's new evidence that comes in and in some situations there is new evidence that comes in. We have no disagreement with that. But in those instances it would be to know the review. What is the, give me some examples of when new evidence would be allowed in under Zirstandard? Something that was not, there's not a reasonable ground for having failed to present it to the patent office is what is the standard we suggest for the district court having the authority to exclude it. Is there a reasonable ground in this case? No, not at all. In fact, in this case from the moment that the examiner put Mr. Hyde on a clear, unequivocal notice that the examiner needed to have the parts of the specification identified to demonstrate the support for the claims. He was on notice, had this readily available. It's evidence that was certainly within his power. So, how many rejections did the examiner make against Mr

. Hyde's 117 claims? He, I don't know that number, you're on our. 2546. Is that normal? Would you understand that to be a normal number in a patent application? Well, I could tell you this. There was a 238 page specification here. And it took the Pat exam, the board, three weeks, three weeks to go through it. And they make sure they weren't relying on Mr. Hyde's case. I'm Mr. Hyde's case. This matrix table of how many times words are put on certain pages. You're looking quite quizzical, but actually back in the day when this patent was being prosecuted and Mr. Hyde had propered that table, was there computerized, surgical capability and indexing of patent applications? It doesn't matter. I think the yours suggesting this table was on helpful. But in fact, if this table references exactly where in the spec you can find the precise language that the examiner is struggling with. And at the time, there's no computer search capability and no indexing capability, then why wouldn't that be helpful? I'm not suggesting your honor. That's what the board said. That's what the district board said. They said it was not useful. And I think it clearly demonstrated by what Mr. Hyde eventually did put together. And try and present on rehearing, but laterally after he had waved it before the board, it was much more detailed, much more analytical. And then when he presented to the district court, all of that he could have presented to the examiner and certainly to the board. Was that what their computer search capability is? I don't know your honor. It doesn't matter because if you look at what the board said and what the district court said, they needed to understand the support for the plaintes. And not just no word of certain word appears. As I think the board of the district court explained it as if you had a dictionary, you were suggesting that if you knew where the words in the dictionary was giving support to the law argument. They needed the analysis and it's proven in this case, your honor by what Mr

. Hyde, but laterally put together and tried to introduce in the district board. That's what he should have presented to the examiner. There's no reasonable realm for him not having presented that to the examiner. And I wanted to address it normal for there to be 2,546 rejections against a patent application. You can find that within your experience in the PTO to be formal. I couldn't say your honor. I can say that here there were 117 new claims that were not the original claims when the specification was originally filed. And the examiner point blank to Mr. Hyde gave him every chance and every opportunity to provide that information that the examiner needed. And I wanted to get back to what I was going to come up. But before you leave our point, I think that's very you saying that there is an obligation for an applicant to view the examiner and the board as if they were generalists with no technical background. And therefore to provide an explicit simplified detailed statement as one would provide to a generalist judge who knows nothing about the technology and not having done that, but having dealt expert to expert as an examination. Most of the time precedes the applicant when he finally ends up in court before generalist judge is barred from elaborating in this way as did Mr. Hyde on the information that was before the office. Is that what I heard you say? No, your honor. If Mr. Hyde had presented his arguments and evidence concerning the support for the claims from the written description. That's right. To the explicit. He pointed out to the judge exactly where the specific aspects were described, but the examiner is supposed to know that. That's what the examination is all about. He didn't provide that here was much more abbreviated than that very short and it was clear certainly by the time of the board from the Alton case that once the examiner came forward and with that rejection of primatation was the burden on Mr. Hyde. I don't disagree that the district court needs it, but I do agree with you the latter that is what the PTO needs. Under opposing counsel's test, the PTO is deprived of what they need. For example, if there's commercial success that's material, the PTO needs that. And it can't be what Congress meant for the applicant to sand back the PTO go to the district court for at least three reasons. Certainly in this ex party situation. Well, you're premise that somebody who has a chance at obtaining the patent during examination from the examiner and the board in squandered 11 years undoing so with deliberately withhold information in order to have a few more years and a few more days. I can't answer hundreds of thousands of dollars, whatever it costs in the district court having withheld information that might have succeeded. I can maybe there are people who do this, but I doubt if they I can give you four situations in which that could arise. First of all, in scenarios that pre-gad applicants like Mr. Hyde, it's everything to gain from delay because his term starts from 17 years after issue. Well, but not anymore. This was this is such an out of place that it has this independence. But so that reason wouldn't apply to anybody. A second category is the concern of applicants with prosecution history, a stoppile and the tendency to not want to make statements could be used again, then, then, later infringement litigation and seen how far they can go without that. And then perhaps a time well now that I've got to district court, you know, I lost with that. I didn't get that so I'm going to have to now introduce it. That's another scenario where there's a lot of delay even within the patent examination process. But it's just outlandish scenarios. Your own. The way to handle patent applications in a way that's fair and just and accordance with the statutes and what the premise of Congress has been all along. And so in its wisdom, we have had for a long time this dual path of review on the record goes to one court, the CCPA, and then this court. If you feel you can improve your record for whatever reason, you have another path, the standard path of review, which until recently went by another district court, but also to the regional circuit. Now the appeal comes here as well. What we need to put our minds to, and I would think what the government would need to put its line to, is the separate purposes that are intended to be served by the separate paths and how to fulfill them, not how to defeat them. Your honor, we thoroughly embrace that we acknowledge that new evidence can be introduced into 145. We think the text and structure of the statute, holy support that. Also, we have the Supreme Court having definitively ruled in two instances, one more than 100 years ago, one within the past decade or so, on these issues. More than make clear, not about a missibility of evidence, but certainly about the proceeding and its interpretation of what Congress intended and that it was in the nature of a motion to set aside a judgment. As this court has said, the operative nucleus is the administrative record. This is denoted in Omo trial. There is no requirement that all the evidence be admitted

. Certainly in this ex party situation. Well, you're premise that somebody who has a chance at obtaining the patent during examination from the examiner and the board in squandered 11 years undoing so with deliberately withhold information in order to have a few more years and a few more days. I can't answer hundreds of thousands of dollars, whatever it costs in the district court having withheld information that might have succeeded. I can maybe there are people who do this, but I doubt if they I can give you four situations in which that could arise. First of all, in scenarios that pre-gad applicants like Mr. Hyde, it's everything to gain from delay because his term starts from 17 years after issue. Well, but not anymore. This was this is such an out of place that it has this independence. But so that reason wouldn't apply to anybody. A second category is the concern of applicants with prosecution history, a stoppile and the tendency to not want to make statements could be used again, then, then, later infringement litigation and seen how far they can go without that. And then perhaps a time well now that I've got to district court, you know, I lost with that. I didn't get that so I'm going to have to now introduce it. That's another scenario where there's a lot of delay even within the patent examination process. But it's just outlandish scenarios. Your own. The way to handle patent applications in a way that's fair and just and accordance with the statutes and what the premise of Congress has been all along. And so in its wisdom, we have had for a long time this dual path of review on the record goes to one court, the CCPA, and then this court. If you feel you can improve your record for whatever reason, you have another path, the standard path of review, which until recently went by another district court, but also to the regional circuit. Now the appeal comes here as well. What we need to put our minds to, and I would think what the government would need to put its line to, is the separate purposes that are intended to be served by the separate paths and how to fulfill them, not how to defeat them. Your honor, we thoroughly embrace that we acknowledge that new evidence can be introduced into 145. We think the text and structure of the statute, holy support that. Also, we have the Supreme Court having definitively ruled in two instances, one more than 100 years ago, one within the past decade or so, on these issues. More than make clear, not about a missibility of evidence, but certainly about the proceeding and its interpretation of what Congress intended and that it was in the nature of a motion to set aside a judgment. As this court has said, the operative nucleus is the administrative record. This is denoted in Omo trial. There is no requirement that all the evidence be admitted. The district court has the authority, and indeed under, now well-established doctrines of exhaustion and waiver and the PTO's own rules and the APA, has the authority to exclude evidence that should have been before the Patent Office, and there's no reasonable reason why it wasn't presented there. So the first thing that happens is we have, as we have here, another few more years of arguing about whether it could have or should have, or might have been provided to the Patent Office. I don't see how there's going to be any difference between what needs to be considered under opposing councils, creative, suggestion of collateral, a stop-bel, and maybe abandon it some other things. We have rooted our analysis in how the Supreme Court has read this data in the decades of development of law under 4915 and a current administrative procedure, and I'm sorry, panels, recognition that there's substantial evidence review under 7062E for the record from the Patent Office and new evidence that can be admitted, but not limitless in the way that evidence. If there was no reason, if there's a reasonable basis for not having presented it. How is the Supreme Court to define the parameters of the new evidence, that the experiments are conducted after the submissions of the Patent Office, after the PTO's court rule? What else would be available as new evidence? I think you'd have a rich vein of authority to look to both the bill of review and equity, and we should point out, it's an original bill known as the bill of review. It's a type of bill in equity. It's not inconsistent with the bill in equity at all. We have the Barrett and its progeny. We have this court's rulings and conserva light, and also the DC Circuits and Latin and Decevresky, which all recognize these waiver rules, both for our evidence. I think that the evidence, I should say, and I think to give you some specific examples, certainly prior art that was later discovered, I think could be something that could be new evidence. There would be a question of whether there was adequate diligence. That back in the motion to set aside a judgment, it had to have been reasonable diligence. You can always be testimony, right? We wouldn't say there's a per se right for testimony. I think it would have to be where there is a reasonable ground for demonstrating that it would be testimony that would have been relevant, couldn't have been presented. I know no testimony can be presented to the examiner, but in many instances, declarations would be adequate because it's not a credibility issue. It's really the force of the argument. What about if Mr. Hire, rather than submitting this declaration, had wanted to get on the witness stand and essentially say, testified to everything that was contained in the declaration? Would that have been permissible? Why not? Because there would have been adequate opportunity for him to present that to the office. If he came and had some issue about reduction to practice, and there was a question about credibility in a witness that could attest to this, and said, you know, this is very important. I have a more than reasonable ground for not have presented that because the oral testimony is key here because of credibility. That I think would meet the test. Couldn't you make that argument any time there was oral testimony that a declaration could have been submitted? I think it depends on what the testimony and the oral testimony goes to, what the issue is. And in some instances, there isn't any relevance about credibility going to if there's cooperation and say, you know, statement of a chronology of what happened. What a piece testifies as to what one skilled in the art would have read particular limitations and specification. Is that the kind of thing that we would have allowed to have a credibility? No, I mean, no. No, your honor

. The district court has the authority, and indeed under, now well-established doctrines of exhaustion and waiver and the PTO's own rules and the APA, has the authority to exclude evidence that should have been before the Patent Office, and there's no reasonable reason why it wasn't presented there. So the first thing that happens is we have, as we have here, another few more years of arguing about whether it could have or should have, or might have been provided to the Patent Office. I don't see how there's going to be any difference between what needs to be considered under opposing councils, creative, suggestion of collateral, a stop-bel, and maybe abandon it some other things. We have rooted our analysis in how the Supreme Court has read this data in the decades of development of law under 4915 and a current administrative procedure, and I'm sorry, panels, recognition that there's substantial evidence review under 7062E for the record from the Patent Office and new evidence that can be admitted, but not limitless in the way that evidence. If there was no reason, if there's a reasonable basis for not having presented it. How is the Supreme Court to define the parameters of the new evidence, that the experiments are conducted after the submissions of the Patent Office, after the PTO's court rule? What else would be available as new evidence? I think you'd have a rich vein of authority to look to both the bill of review and equity, and we should point out, it's an original bill known as the bill of review. It's a type of bill in equity. It's not inconsistent with the bill in equity at all. We have the Barrett and its progeny. We have this court's rulings and conserva light, and also the DC Circuits and Latin and Decevresky, which all recognize these waiver rules, both for our evidence. I think that the evidence, I should say, and I think to give you some specific examples, certainly prior art that was later discovered, I think could be something that could be new evidence. There would be a question of whether there was adequate diligence. That back in the motion to set aside a judgment, it had to have been reasonable diligence. You can always be testimony, right? We wouldn't say there's a per se right for testimony. I think it would have to be where there is a reasonable ground for demonstrating that it would be testimony that would have been relevant, couldn't have been presented. I know no testimony can be presented to the examiner, but in many instances, declarations would be adequate because it's not a credibility issue. It's really the force of the argument. What about if Mr. Hire, rather than submitting this declaration, had wanted to get on the witness stand and essentially say, testified to everything that was contained in the declaration? Would that have been permissible? Why not? Because there would have been adequate opportunity for him to present that to the office. If he came and had some issue about reduction to practice, and there was a question about credibility in a witness that could attest to this, and said, you know, this is very important. I have a more than reasonable ground for not have presented that because the oral testimony is key here because of credibility. That I think would meet the test. Couldn't you make that argument any time there was oral testimony that a declaration could have been submitted? I think it depends on what the testimony and the oral testimony goes to, what the issue is. And in some instances, there isn't any relevance about credibility going to if there's cooperation and say, you know, statement of a chronology of what happened. What a piece testifies as to what one skilled in the art would have read particular limitations and specification. Is that the kind of thing that we would have allowed to have a credibility? No, I mean, no. No, your honor. That is something that could be adequately presented and is fully provided for under the patent office rules. Mr. Hire, a few minutes ago, you started to answer a question by talking about three main points why you want your reading of 145. I don't know if that was already covered with your analysis of Morgan or not. So I think you did fast. Thank you, Your Honor. The first is really the tax instruction, how does the Supreme Court has interpreted that in Morgan and Zurko? Recognizing that it's in the nature of motion to set aside a judgment. If you look at that body of law, you will look to law that gives you the grounds for setting forth when new evidence can be admitted or not. There's a font of law there. And it really had to be newly discovered evidence. If it had been readily discoverable with due diligence, it would not have been admitted. We think that Zurko follows on that and embraces looking towards Morgan even for ex party and in this court, Missouri case, it followed from that. The second source of law, we would look to the decades of development of the lower courts under 4915. Under Barrett and many other cases, those courts, done in a very practical way with this issue and always had the agency record as the starting point. I mean, there is no case suggest this is the Denomotrial and that is out the window. I mean, that would be directly contrary not just to Morgan, but to this decades of the case laws of these judges struggling with this issue. And you look and you see and in many of those cases, they loosely use the words Denomot, but is this court even said in conservative light? You know, Denomot did not need a Denomotrial and you look at that, they were certainly saying, we have to make review before the agency meaningful. And now that meaningful, you have given the agency the opportunity to pass on this. And I have to say it is particularly true in the party scenario because if the evidence is properly presented to the examiner in the board, there will be a patent issue and there will be no further appeal. It is even more important, I would say, to talk about 145 versus 146. It is more important than 145 scenario because it never goes to court if it is fully presented in the patents granted. Well, hypothetically, what happens if the patent office finds a reference after the completion of the award proceeds? Can they introduce that patent reference at the 145? Yes, you honor. That is the night. I forget which case it is, but to the scenario is as if there was newly discovered art by the... I think there would be the same determination, but yes, it could be

. That is something that could be adequately presented and is fully provided for under the patent office rules. Mr. Hire, a few minutes ago, you started to answer a question by talking about three main points why you want your reading of 145. I don't know if that was already covered with your analysis of Morgan or not. So I think you did fast. Thank you, Your Honor. The first is really the tax instruction, how does the Supreme Court has interpreted that in Morgan and Zurko? Recognizing that it's in the nature of motion to set aside a judgment. If you look at that body of law, you will look to law that gives you the grounds for setting forth when new evidence can be admitted or not. There's a font of law there. And it really had to be newly discovered evidence. If it had been readily discoverable with due diligence, it would not have been admitted. We think that Zurko follows on that and embraces looking towards Morgan even for ex party and in this court, Missouri case, it followed from that. The second source of law, we would look to the decades of development of the lower courts under 4915. Under Barrett and many other cases, those courts, done in a very practical way with this issue and always had the agency record as the starting point. I mean, there is no case suggest this is the Denomotrial and that is out the window. I mean, that would be directly contrary not just to Morgan, but to this decades of the case laws of these judges struggling with this issue. And you look and you see and in many of those cases, they loosely use the words Denomot, but is this court even said in conservative light? You know, Denomot did not need a Denomotrial and you look at that, they were certainly saying, we have to make review before the agency meaningful. And now that meaningful, you have given the agency the opportunity to pass on this. And I have to say it is particularly true in the party scenario because if the evidence is properly presented to the examiner in the board, there will be a patent issue and there will be no further appeal. It is even more important, I would say, to talk about 145 versus 146. It is more important than 145 scenario because it never goes to court if it is fully presented in the patents granted. Well, hypothetically, what happens if the patent office finds a reference after the completion of the award proceeds? Can they introduce that patent reference at the 145? Yes, you honor. That is the night. I forget which case it is, but to the scenario is as if there was newly discovered art by the... I think there would be the same determination, but yes, it could be. There was a reason around that. It means that an unsymmetrical situation, a patent office can introduce new evidence, but the applicant cannot, based on your... No, Your Honor, it would have to fulfill the same standard. First, we do diligence in both cases. Exactly, exactly, Your Honor, precisely. If there was a failure of due diligence and a prior effect, this would not be related at that point. That is right, it would not be. I have to say also, Your Honor, on the third round. I have to add a quick question to understand that because obviously that reference could always be used later against the patent itself if it is issued. What happens if the patent application issues in a patent is this very strong reference against it? Your Honor. Can the patent office issue a validity, presumption of validity and question at that point? Well, by the time that the 145 proceeding has occurred, the board has already made its determination that 145 proceeds to review the action of the agency subject to this recognition of the new evidence in certain limited situations. And we would submit that if there was that type of new evidence, and there was some question that there had not been due diligence, it might be a scenario where there would be some kind of remand or... or further proceeding, but we don't think that it is an avenue for all and missibility of evidence before the district court. The district court has the authority to exclude evidence that should have been before. The district court has the issue to an order of men, Davis, against the commissioner issue the patent at that point. After the completion of 145 proceedings. The mandamus is actually to issue a consistent with law. With the order. Right, it authorizes me. So what issue do the patent applications of patent with an outstanding reference out there that could invalidate? Right? Is that correct? I'm not sure. I'm sorry. Could you repeat your question? Well, if the district court issues an order of men, Davis, against the patent office, is to issue the patent application in the repat. Knowing that there is a valid reference against it, at that point in time, that the validity of the patent would be in question

. There was a reason around that. It means that an unsymmetrical situation, a patent office can introduce new evidence, but the applicant cannot, based on your... No, Your Honor, it would have to fulfill the same standard. First, we do diligence in both cases. Exactly, exactly, Your Honor, precisely. If there was a failure of due diligence and a prior effect, this would not be related at that point. That is right, it would not be. I have to say also, Your Honor, on the third round. I have to add a quick question to understand that because obviously that reference could always be used later against the patent itself if it is issued. What happens if the patent application issues in a patent is this very strong reference against it? Your Honor. Can the patent office issue a validity, presumption of validity and question at that point? Well, by the time that the 145 proceeding has occurred, the board has already made its determination that 145 proceeds to review the action of the agency subject to this recognition of the new evidence in certain limited situations. And we would submit that if there was that type of new evidence, and there was some question that there had not been due diligence, it might be a scenario where there would be some kind of remand or... or further proceeding, but we don't think that it is an avenue for all and missibility of evidence before the district court. The district court has the authority to exclude evidence that should have been before. The district court has the issue to an order of men, Davis, against the commissioner issue the patent at that point. After the completion of 145 proceedings. The mandamus is actually to issue a consistent with law. With the order. Right, it authorizes me. So what issue do the patent applications of patent with an outstanding reference out there that could invalidate? Right? Is that correct? I'm not sure. I'm sorry. Could you repeat your question? Well, if the district court issues an order of men, Davis, against the patent office, is to issue the patent application in the repat. Knowing that there is a valid reference against it, at that point in time, that the validity of the patent would be in question. Your Honor, I've been informed that we actually have an obligation to reject the claims after the 145 actions. So whether the district court considers or it would be, it is available. So I guess that you could see that as an asymmetrical situation. I think it's really maybe compelled by the restrictions on the patent office and issuing a patent that is not valid. So as I understand it, the district court in the 145 action doesn't have the authority to order the issuance of a patent. That's right. So it has to go back to the agency and if there was some new evidence that either side, the discovery of that could be brought before the agency after the district court action. That's right, Your Honor. Courts have long suggested that the court reviews are actually part of that patent process and the order that comes from the district court is one authorizing, not mandating the patent office issued a patent. I just want to come back to my third source of law to look through for this standard and it is being APA and the current 145 jurisprudence, the requirements under the patent office for exhaustion and the rules of waiver if it's not the issue and evidence is not presented to the board before the reply brief. And as we pointed out, we think the Missouri is fully consistent with that and recognizes that it's substantial evidence review under the APA 7062E but for a new evidence, it would be de novo determination. And Judge Dumont, I think you have a point about the complexities of judicial review from there. But I'm going to ask you this question about what your position means to the extent that it seems to me this is a shift from the practice the way the way of spin and certainly the way on all of the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the technical, technological, technological information, comparative data. The applicant just doesn't turn up and argue it again to a different judge, but does indeed come forward. Why is it go to the federal circuit before that, to the CCPA? So we have additional data, comparative data with the prior art. I think that that's what's seen in the vast majority of 145 actions. From what I hear you saying, if in fact those experiments could have been run because it relates to the prior art, but hadn't been performed while the application was before the office, the office would take the position that it's too late, and it can't be provided in a 145 action, which I think would affect the vast majority, eliminate the vast majority of 145 actions, would as many of the Amicus briefs pointed out, and to the expense before the applicant to conduct additional experiments, even though the applicant is dealing with experts in the federal, rather than the judge. And so would I hear you saying that if in fact you go back, perform additional experiments, or may even have had the nucleus of them, or some of them in your record, and didn't file it before that you can be excluded from presenting it to the district court. The district court may be able to be excluded, it depends on the termination about whether it was reasonable grounds for not having done that to the patent office. That was expensive. Is that a reasonable ground? No, that would not be a reasonable ground. So now we go to the library to do it. I believe changed the present 145. Perhaps this is now if this is one way perhaps of, don't know, cutting back on patent applications. You're on to the contrary, we think that the opposing position would radically transform it. This would mean that cases where a patent could be issued, an applicant could stand back for commercial reasons, for prosecution of stop-al-reasons, because they think in this particular technology they have a better chance with the judgment. Because of the nature of the submission, in one case to a non-technical judge, in the other case to an expert patent office

. Your Honor, I've been informed that we actually have an obligation to reject the claims after the 145 actions. So whether the district court considers or it would be, it is available. So I guess that you could see that as an asymmetrical situation. I think it's really maybe compelled by the restrictions on the patent office and issuing a patent that is not valid. So as I understand it, the district court in the 145 action doesn't have the authority to order the issuance of a patent. That's right. So it has to go back to the agency and if there was some new evidence that either side, the discovery of that could be brought before the agency after the district court action. That's right, Your Honor. Courts have long suggested that the court reviews are actually part of that patent process and the order that comes from the district court is one authorizing, not mandating the patent office issued a patent. I just want to come back to my third source of law to look through for this standard and it is being APA and the current 145 jurisprudence, the requirements under the patent office for exhaustion and the rules of waiver if it's not the issue and evidence is not presented to the board before the reply brief. And as we pointed out, we think the Missouri is fully consistent with that and recognizes that it's substantial evidence review under the APA 7062E but for a new evidence, it would be de novo determination. And Judge Dumont, I think you have a point about the complexities of judicial review from there. But I'm going to ask you this question about what your position means to the extent that it seems to me this is a shift from the practice the way the way of spin and certainly the way on all of the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the technical, technological, technological information, comparative data. The applicant just doesn't turn up and argue it again to a different judge, but does indeed come forward. Why is it go to the federal circuit before that, to the CCPA? So we have additional data, comparative data with the prior art. I think that that's what's seen in the vast majority of 145 actions. From what I hear you saying, if in fact those experiments could have been run because it relates to the prior art, but hadn't been performed while the application was before the office, the office would take the position that it's too late, and it can't be provided in a 145 action, which I think would affect the vast majority, eliminate the vast majority of 145 actions, would as many of the Amicus briefs pointed out, and to the expense before the applicant to conduct additional experiments, even though the applicant is dealing with experts in the federal, rather than the judge. And so would I hear you saying that if in fact you go back, perform additional experiments, or may even have had the nucleus of them, or some of them in your record, and didn't file it before that you can be excluded from presenting it to the district court. The district court may be able to be excluded, it depends on the termination about whether it was reasonable grounds for not having done that to the patent office. That was expensive. Is that a reasonable ground? No, that would not be a reasonable ground. So now we go to the library to do it. I believe changed the present 145. Perhaps this is now if this is one way perhaps of, don't know, cutting back on patent applications. You're on to the contrary, we think that the opposing position would radically transform it. This would mean that cases where a patent could be issued, an applicant could stand back for commercial reasons, for prosecution of stop-al-reasons, because they think in this particular technology they have a better chance with the judgment. Because of the nature of the submission, in one case to a non-technical judge, in the other case to an expert patent office. And there may be reasonable grounds in some instances you honor for, I'm just not sure if you're spitting about it in order to get your evidence here. Well, you've spent a lot of time and effort between the patent office who could have issued the patent if you had provided them this information with more technical expertise and more understanding of the intricacies of patent law. And to change that would mean that the patent office will now be wasting time on applications that are just going to have a total redo. They're going to be treated as a dress rehearsal. The federal court, district court judges are going to be left without the expertise of the patent office. And the patent office will be sending cases to district court that never needed to go there because they would have grabbed the patent if they had the evidence. Excuse me. Your argument is that the 145 action is akin to a bill of review, a bill of review of what you should be a full and comprehensive agency determination with all of the evidence. That's the case then. Should the patent office be permitted to raise a new ground of rejection in a 145 action? In the situation of a 145 generally, new grounds of rejection arise when there often has been some kind of new evidence or argument that was allowed in district court. And certainly my question is simply should the patent office be permitted to raise a new ground of rejection in a 145 action? Certainly, if it would eventually be the scenario that went back to the patent office, they were going to reject it on that ground. Anyone would think that that would be the appropriate way to proceed so the district court is not wasting its resources and deciding that something that would not eventually need to be decided. How is that consistent with the idea that this is akin to a bill of review? It would be a type of situation where you would have to look at I think in the same kind of setting aside judgment under newly discovered evidence or a new ground that with reasonable diligence had not been appreciated earlier. I mean, when I talk about new evidence, we're talking about a new ground of rejection. It seems to me to be entirely inconsistent with the notion of a bill of review. Well, one thing I just want to make clear, we are not saying that new evidence and argument cannot come in at a 145 proceeding. We agree with that. We think it's clear from the structure, the history of it. And also, may I continue your honor, I think, my time is excellent. You're talking about the police continuing to finish this question. We think that that is wholly consistent and important and crucial to the structure that Congress set up because of the DOS 3141 and 145. Also, as you can see from there are many cases in which new evidence has come forward that have met standards. But it can't be that the district court is without authority to exclude evidence that should have been before the patent office that contains the same arguments that were weighed under the rules of the patent office and the APA. So in that ground, I would say that a new ground for rejection will fall within this scenario where you can have new evidence and argument before the district court, but it is not a trial to no vote. And is not required for the district court to introduce all evidence. Thank you. Thank you, Mr

. And there may be reasonable grounds in some instances you honor for, I'm just not sure if you're spitting about it in order to get your evidence here. Well, you've spent a lot of time and effort between the patent office who could have issued the patent if you had provided them this information with more technical expertise and more understanding of the intricacies of patent law. And to change that would mean that the patent office will now be wasting time on applications that are just going to have a total redo. They're going to be treated as a dress rehearsal. The federal court, district court judges are going to be left without the expertise of the patent office. And the patent office will be sending cases to district court that never needed to go there because they would have grabbed the patent if they had the evidence. Excuse me. Your argument is that the 145 action is akin to a bill of review, a bill of review of what you should be a full and comprehensive agency determination with all of the evidence. That's the case then. Should the patent office be permitted to raise a new ground of rejection in a 145 action? In the situation of a 145 generally, new grounds of rejection arise when there often has been some kind of new evidence or argument that was allowed in district court. And certainly my question is simply should the patent office be permitted to raise a new ground of rejection in a 145 action? Certainly, if it would eventually be the scenario that went back to the patent office, they were going to reject it on that ground. Anyone would think that that would be the appropriate way to proceed so the district court is not wasting its resources and deciding that something that would not eventually need to be decided. How is that consistent with the idea that this is akin to a bill of review? It would be a type of situation where you would have to look at I think in the same kind of setting aside judgment under newly discovered evidence or a new ground that with reasonable diligence had not been appreciated earlier. I mean, when I talk about new evidence, we're talking about a new ground of rejection. It seems to me to be entirely inconsistent with the notion of a bill of review. Well, one thing I just want to make clear, we are not saying that new evidence and argument cannot come in at a 145 proceeding. We agree with that. We think it's clear from the structure, the history of it. And also, may I continue your honor, I think, my time is excellent. You're talking about the police continuing to finish this question. We think that that is wholly consistent and important and crucial to the structure that Congress set up because of the DOS 3141 and 145. Also, as you can see from there are many cases in which new evidence has come forward that have met standards. But it can't be that the district court is without authority to exclude evidence that should have been before the patent office that contains the same arguments that were weighed under the rules of the patent office and the APA. So in that ground, I would say that a new ground for rejection will fall within this scenario where you can have new evidence and argument before the district court, but it is not a trial to no vote. And is not required for the district court to introduce all evidence. Thank you. Thank you, Mr. Pinkman. Mr. Paner, would you add one minute to Mr. Paner and then we'll have about equal time. You have about five minutes, Mr. Paner. Thank you, Judge Rear. In this case, the intent of Congress to provide for a remedy through a new trial that is a trial that provides for the introduction of evidence is to try to establish the patentability of the claims that were before the patent office. This is absolutely clear. The bill of equity has existed for 170 years. It was re-adopted by Congress in 1927. The legislative history is absolutely clear that this proceeding was intended to be a denouvelled proceeding with the introduction of new evidence. The suggestion that this, and there is simply nothing in the legislative history that is to the contrary. How long do you define new evidence at that point? You know, it's the evidence. Everything that's available and even before the patent office sort of, I mean new evidence which was not available will be put in the patent office. The evidence that is admissible, the fact that the evidence was not admitted before the patent office is not a grounds for exclusion. We've cited several cases in which new evidence and indeed new arguments were put forward in the court. Later Chief Justice Taft, as a case from the Sixth Circuit in which he specifically says this argument about the fact that this could have been put before the patent office, really is not because this is a new action. Again, you can introduce new evidence. The same thing happened in the Curtis case decided by the Second Circuit which we've cited. And when you look at the legislative history of the 1927 act where the Section 4915 was revised. Again, every witness who spoke to this, including the commission of the patent office, indicated that this was a new proceeding in which new evidence could be admitted in accordance with the ordinary evidence. As well, suggestion livenants couldn't be excluded. They were concerned about oral testimony, billing, and the auditions of credibility. But you are what is utterly lacking is any suggestion that the failure to introduce a particular type of evidence before the patent office would have been in general a basis to exclude it in the new action. There is no principle in equity and nothing in the legislative history to support that suggestion. And the suggestion by the government that this is going to lead to bad consequences, I think is frankly fanciful

. Pinkman. Mr. Paner, would you add one minute to Mr. Paner and then we'll have about equal time. You have about five minutes, Mr. Paner. Thank you, Judge Rear. In this case, the intent of Congress to provide for a remedy through a new trial that is a trial that provides for the introduction of evidence is to try to establish the patentability of the claims that were before the patent office. This is absolutely clear. The bill of equity has existed for 170 years. It was re-adopted by Congress in 1927. The legislative history is absolutely clear that this proceeding was intended to be a denouvelled proceeding with the introduction of new evidence. The suggestion that this, and there is simply nothing in the legislative history that is to the contrary. How long do you define new evidence at that point? You know, it's the evidence. Everything that's available and even before the patent office sort of, I mean new evidence which was not available will be put in the patent office. The evidence that is admissible, the fact that the evidence was not admitted before the patent office is not a grounds for exclusion. We've cited several cases in which new evidence and indeed new arguments were put forward in the court. Later Chief Justice Taft, as a case from the Sixth Circuit in which he specifically says this argument about the fact that this could have been put before the patent office, really is not because this is a new action. Again, you can introduce new evidence. The same thing happened in the Curtis case decided by the Second Circuit which we've cited. And when you look at the legislative history of the 1927 act where the Section 4915 was revised. Again, every witness who spoke to this, including the commission of the patent office, indicated that this was a new proceeding in which new evidence could be admitted in accordance with the ordinary evidence. As well, suggestion livenants couldn't be excluded. They were concerned about oral testimony, billing, and the auditions of credibility. But you are what is utterly lacking is any suggestion that the failure to introduce a particular type of evidence before the patent office would have been in general a basis to exclude it in the new action. There is no principle in equity and nothing in the legislative history to support that suggestion. And the suggestion by the government that this is going to lead to bad consequences, I think is frankly fanciful. They could not lead to bad consequences. What you are doing is saying the patent office is not going to have the opportunity to see this evidence and to bring its expertise to be. You are concluding the patent office reaching its best judgment on this and you are concluding the district court from getting the best judgment of the patent office. First of all, that is not correct, Your Honor. It is a technical matter because the patent office will be a party in the district court and will certainly bring its best expertise to bear. But furthermore, as a party in the district court, it is not as well established that the agency counsel does not speak for the agency in that respect. The agency's judgment is the agency's judgment reached by the board on the exam. That is true. But Your Honor, the point that I wanted to make in terms of the ability of the patent office to bring its expertise to bear, the patent applicant has every incentive to diligently pursue the application. As this applicant did, the idea that this was somehow evidence that was put from the patent office is simply false. The board's decision gave a focused explanation for the rejections that was simply lacking from the examiner's rejection. And I think Judge Moore has very accurately portrayed the context in which this decision by the board was made. There was a Mr. Hines that the David had been presented to the patent office. There would have been no reason. First of all, Mr. Hyatt made it. I don't know whether technically under the rules it could have been done. Mr. Hyatt did present in his adhering petition, the focused argument. Indeed, the PTO has conceded that in the adhering petition Mr. Hyatt presented what they argue should have been presented in an earlier point and the patent office disregarded it. So there's no question of somehow trying to pull the wool over the eyes of the office. What it is was important for Mr. Hyatt to, or I should say, the plaintiff to present not necessarily in his own affidavit, but as evidence. Was evidence regarding what would have been understood by someone with ordinary skill in the art that is not evidence that would have been required before the patent office, because the patent office is presumed to have that skill and to understand to be an expert in the art that is being presented. And so in this circumstance, this actually illustrates why the introduction of new evidence is entirely justified

. They could not lead to bad consequences. What you are doing is saying the patent office is not going to have the opportunity to see this evidence and to bring its expertise to be. You are concluding the patent office reaching its best judgment on this and you are concluding the district court from getting the best judgment of the patent office. First of all, that is not correct, Your Honor. It is a technical matter because the patent office will be a party in the district court and will certainly bring its best expertise to bear. But furthermore, as a party in the district court, it is not as well established that the agency counsel does not speak for the agency in that respect. The agency's judgment is the agency's judgment reached by the board on the exam. That is true. But Your Honor, the point that I wanted to make in terms of the ability of the patent office to bring its expertise to bear, the patent applicant has every incentive to diligently pursue the application. As this applicant did, the idea that this was somehow evidence that was put from the patent office is simply false. The board's decision gave a focused explanation for the rejections that was simply lacking from the examiner's rejection. And I think Judge Moore has very accurately portrayed the context in which this decision by the board was made. There was a Mr. Hines that the David had been presented to the patent office. There would have been no reason. First of all, Mr. Hyatt made it. I don't know whether technically under the rules it could have been done. Mr. Hyatt did present in his adhering petition, the focused argument. Indeed, the PTO has conceded that in the adhering petition Mr. Hyatt presented what they argue should have been presented in an earlier point and the patent office disregarded it. So there's no question of somehow trying to pull the wool over the eyes of the office. What it is was important for Mr. Hyatt to, or I should say, the plaintiff to present not necessarily in his own affidavit, but as evidence. Was evidence regarding what would have been understood by someone with ordinary skill in the art that is not evidence that would have been required before the patent office, because the patent office is presumed to have that skill and to understand to be an expert in the art that is being presented. And so in this circumstance, this actually illustrates why the introduction of new evidence is entirely justified. Thank you, Mr. Paner. I think your time's expired. Thank you, Your Honor. The court thanks both Mr. Paner and this Franklin for their assistance today. Our next case is slide on the state. Thank you. Thank you. So the court for him. You know that's my role, Mr. Paner. Yeah, it's a time you better pick the name and come in. So please. See you on a second. Thank you. We have a new, but I'm sure equally interested in this.

First case this morning is Hyatt versus Capros, Mr. Paner. Chief Judge Radar and Mayor please report. I'd like to focus this morning on two general points. The first is that Section 145, unlike many modern statutes limiting judicial review to the record development for the agency has been understood for more than a century to authorize a patent applicant to introduce new evidence in keeping with traditional equity practice. Essentially the only argument that the government offers to the contrary is based on the claim that an action under Section 145 is analogous to a bill of review, which was essentially a request for rehearing directed to the court that it issued a decree, not an original action and equity. And that argument is not only without any precedent whatsoever to support it, but it is directly contrary to the many cases interpreting Section 145 and its predecessors to permit the introduction of evidence as in any other case within the district court's original jurisdiction. So in your view are there any limitations as to the ability to introduce new evidence? The limitations on new evidence would be derived from traditional equity practice. The limitation that we've pointed to that could potentially be applicable in this case and that the panel I think was perhaps looting to in its compliance on Marin is the possibility of an equitable stopper where an applicant takes a position on a factual issue before the agency that is inconsistent with the position that it attempts to support before the court. So that could lead to a stopper which would prevent the introduction of evidence inconsistent with a factual position taken before the agency. And of course the federal rules of evidence would also impose limitations on the introduction of evidence as they would in any other case. Is there any other issues legal issues, new legal issues that could be raised under 145? Well, I don't think that issue is directly presented here, let me say first of all, the rule of conservative light under Section 146 which indicated that new issues that were not before the agency could not be raised in an original action under that section. I think it does not necessarily apply under Section 145. So the thing in your view of issues could be raised in the district court proceeding? We did not take that position before the district court because of your view of that. My view about it is that the proper rule is that new issues should be raised and should be able to be raised in a Section 145 action within reason certainly. Obviously, you don't have new issues because you are in effect quote appealing not to bring a new action from a rejection by the Pat Nuffness and Conservative light. If you had an interference where one could attack the other parties, the patentability of the other parties, it is quite a different story from what we have here. That is exactly right here on our. That I think is a critical difference between the interparties interference context and the ex-parté application context. So plainly, the issues will be limited by the application that was before the agency. The claims are that are subject to the action under Section 145 are of course the claims that were before the PTO. In that sense, it is not a wide open proceeding where an applicant could change the application or change the specification in order to try to obtain a patent. It is and that is a limitation that comes directly from the language of the statute. Can I bring you back to your equitable stop all suggestion? I am wondering where in the statute or where that is grounded from because quite frankly it seems to be a new proposal as equally new as the government's proposal. I don't see a foundation anywhere for an exception for equitable stop all I am curious of where it came from. Thank you, Your Honor. I think that the equitable stop principle is not unique to Section 145. The point that we were trying to bring out is simply that Section 145 is as any other original action and equity. In any action and equity there are the possible limitations on the position that a party could take in light of previous positions taken and relied upon. So, for fairly early in the cases there is a recognition of the possibility that an applicant could take a position before the PTO and then be a stop from taking an inconsistent position in an original action. That doesn't reflect anything particular about Section 145 but it is a limitation that would have been partly the traditional equity practice that would have been understood by Congress when they authorized the bill of equity and then reauthorized it and maintained it and then maintained it. So, there is nothing special about the 145 context that gives rise to the equitable stop but it is simply something that is part of equity practice and I think it helps to explain the results of some of the cases that the government has relied on the panel alluded to as an example. Should we take any parallelism between Section 145 and 146 and a similar proceeding from the interference results versus the rejection of a patent application? Well, I think that they have a common ancestor in Section 4915 and I think that there are many ways in which the two proceedings are going to be quite similar but I think Judge Luriel alluded to the possibility that and I think the reality that an inter-party is proceeding because of the nature of the adversarial process before the agency is going to lead to a sharper definition of issues and is much more likely to lead to reliance by one of the parties on the position taken by the agency. So, it is somewhat more likely that there will be a situation where as a matter of equity the scope of the proceeding under Section 146 may be somewhat more limited and I think that that accounts for what ought to be a difference with respect to the possibility of raising what might be characterized as new issues. What about with respect to the evidence? I mean, in terms of the introduction of new evidence, the UV 146 and 145 is being the same. I think that both of those, both in both circumstances, new evidence is permitted. The same standard, in other words, there is the same limitations or lack of limitations apply in each case. I believe that is correct, Your Honor. I plainly disagree on the case under Section 145. There are some differences in the wording of the statute but I think that those differences principally reflect the effort of Congress to correct what had been some anomalies under, you know, in the practice under Section 146 with respect to admission of the record before the agency. The practice had been that you couldn't bring in the record before the agency in general in the 146. That is correct, Your Honor, that there had been some limitation on, or some courts had read a limitation on doing that which required the parties to reintroduce evidence and it was cumbersome and so Congress made clear that that was not required. But I do think that with respect to introduction of new evidence under both Section 145 and 146, the rule is that it is admissible in accordance with ordinary activity practice. So in your view, I understand that you are viewing your briefs that Mr. Haya had a rationale for doing what he did when he did it. But if hypothetically an applicant refuses very reasonable request for information by the examiner because he just believes, flaciously in his mind, that the examiner isn't going to give him a fair shake. And then he goes to the district court and the district court says, why didn't you offer this to the Patent Office and he says, because I thought they were just going to be unreasonably unfair to him. In your view, would that be an exception or should that person, that applicant, be permitted to introduce that evidence withheld from the PTO's request? Well, Your Honor, I think it's a fair question to wonder where the line would get drawn in a case where the conduct before the agency could be taken as giving rise to an assault. I think in the case that you've alluded to, which is obviously a hypothetical one on these facts, there would be an issue as to whether there would be a bona fide response at all for the agency. It's clear under the statute that the applicant does need to pursue an appeal before the board. So arguably, in a case in which the applicant was found to have abandoned the application for failure to file a bona fide appeal brief, that could be a different circumstance. But that wasn't the case here. There was no suggestion before the PTO that the applicant didn't file a bona fide response to the final office action at all. And, you know, I understand that there's a dispute between Mr. Hyatt, the government, as to the adequacy of the briefing. But it is far from the line that would give rise to any sort of a stop-align indeed on the agenda. So what is the line you think we should draw then, abandon it? Well, abandon it. That's one instance where the evidence that you should have might have presented to the people. Well, I think that there is a body of law of an equitable stop-align that the courts could draw on. The district court could draw on determining whether evidence would be admissible, as I say. This case is nowhere near the line. But what's the body of law? In your view, what line does that body of law suggest should be drawn? If somebody before the PTO says I'm going to save my evidence, I'm not going to put it in here. I'm going to put it before the district court. That's okay in your view, isn't it? Well, I think that where there is a focus, at a certain point, and I think that this is where the particular cases will require the exercise of a court's equitable judgment. There are other ways that it means. I mean, are you saying somebody can appear before the PTO? I'm going to say I've got some evidence that I want to use, but I'm not going to put it in so that the PTO has considered, and I'm going to save it for the district court. Can somebody do that? Well, I don't think that they could say that. And let me try to explain. And I think that the barricade actually provides an illustration. That there may be a circumstance in which there is such a focused demand for information, specific factual information, and evidence within the applicant's possession that the failure to produce it is in some ways a constructive representation of its non-existence. Now, I realize that may sound a little bit philosophical, but some of the cases in which district courts decline to consider evidence involve circumstances where there was a very focused issue, for example, regarding priority or anticipation. And where the patent office made repeated effective demands for any evidence in the patent in the applicant's possession that would establish the priority date that would give rise to a potential validity. And the patent, or I should say the applicant, failed to produce that evidence consistently over the course of years in the face of focused requests. So, but in the absence of a demand, he can hold back and sit on the evidence and not present it to the PTO? Well, I should say, there was no holding back here, but certainly there is no one's new answer. Can you hold back? If there's no demand from the patent office, you can sit on evidence and not present it to the PTO and bring it into the district court. What about your position? I think my answer to that is yes. And let me say, my resistance is that obviously holding back sounds like... Can you win the alternative to dumping on the PTO everything in your possession? For example, on commercial success. Does the PTO really want every piece of evidence that our view for you as a company has on that point in an obvious misconduct? That's where I touched more, and that's really where I was going. One can say, hold back, but the fact of the matter is that every patent applicant has to make a judgment. Well, but if your judgment is, I think this is very pertinent, I'm going to use it in the district court, and I'm not going to give it to the PTO. You're saying they can do that, right? Well, your honor, if the patent applicant, I think it's only unlikely that that would occur, and that is why they do not design it. Can they do it? Can they say, this is very pertinent. No, I'm not going to give it to the PTO. I'm going to wait for the district court. Can he do it? Yes, I believe that the proper standard would permit a patent applicant who had evidence that was pertinent to introduce it in the district court if there was no basis for a stop in him from doing so. Was there no withholding here because there wasn't actually evidence to his argument? Well, your honor, I think there certainly was no withholding here, and there is, I do think there was evidence. Yes, well, what the applicant offered before the district court certainly was evidence. And let me, and that is true because... What was the evidence other than pointing to the specification saying, here is the support. It was evidence as to what a person of ordinary skill in the art would have understood from the specification. And that's actually very important evidence to be able to offer the district court. It's not necessarily some kind of proof for the PTO. It's from the inventor whose application it was. That's right, and that sort of evidence as Judge Moore actually pointed out in her dissenting opinion, a venture evidence about written description is admissible. Is admissible evidence, an expert testimony on written description is common. There are many, many cases on this court in which such evidence has been discussed. Council, I think you're out of the eye on this thought. The district court would be free to give less weight to what looks like an ex-coast rationale that is developed by an inventor or sort of last-minute evidence that seems to come out of nowhere. I mean, district courts, typically in civil actions, allow in evidence, but then the fact finders, of course, free to record less weight because the evidence seems less credible in light of its last-minute introduction. And that would be something that I would think you would agree is perfectly proffer under the circumstances. That is absolutely right, Your Honor. And indeed, many of the cases that the government relied on in their brief to suggest that evidence could have been excluded, involved precisely that situation, where evidence is proffered that is, for example, evidence about the statement of a witness who has died in the interim, who cannot rebut it. And the district court, you know, quite sensibly says, given that you could have offered this evidence before and did not do so, it's somewhat suspicious that you are now attributing to this dead witness. So if the district court here had said that, if he had said Mr. Hyatt, I believe this would have been responsive to the request for information by the patent examiner. And therefore, I'm going to admit the evidence, but I'm going to give it virtually no way. Do you have a basis to make an argument on appeal with respect to what the district court did? Well, I think that there would then be a question as to whether there was clear error around the findings of fact. There would be, you know, once the evidence is admitted and the district court makes a finding of fact, with regard to the adequacy of the written description, that would then be reviewed by this court under the court court clear error standard. And then we would have an argument about whether the evidence was sufficient to carry the burden that the plaintiff had to establish patentability. And that would have happened, if I could find the error. Mr. Panna, when new evidence is attempted to be admitted, who bears the burden as to whether that evidence falls on the right side or the wrong? And the evidence is on the right side of the line. The defendant had the burden to show that it's proper to submit the evidence. So does the patent office have the burden to show that it is impromptu? Well, you know, the evidence would be admitted under ordinary, evidentiary principles. I assume, let's leave aside for a moment any question on the Federal Rules of Medical. Let's assume it's otherwise competent evidence. With respect to the issue here, which would be, is there a basis for excluding otherwise competent evidence, say under the principle of the stop-up? The burden for the burden would rest squarely on the party is tempting to establish the stop-up, to try to establish that as a basis for excluding evidence. So that the, you know, if the evidence is otherwise admissible and there's no claim that this was not. So your default is that everything is inappropriate in a 145 action, except that which the government can show is inappropriate. If it's otherwise admissible, that's right. So the only limit would be the rules of evidence limitation at that point. Rules of evidence, civil procedure, ordinary equity practice, that's right, you're on our side. So that is where the, you know, it's an ordinary bill in equity and it has been for a very long time. 145 was born as a bill in equity. Correct, correct. So if in fact you had this evidence, so it could have presented the evidence before the patent office. The patent office shows that in its proceedings and its objections. Well, that'd be sufficient to keep the evidence tough as an estoppled basis or would it be just admitted anyway and let the court weigh the value of the evidence at that point? It would be a ladder, Your Honor, that there, because there is no principle under the traditional equity practice that any evidence not admitted before the agency would be excluded. There's no obligation on the part of the applicant to provide all of the evidence that could potentially be useful in a later proceeding before the agency. And the mere failure to provide evidence would not be a basis for exclusion. And that is really a principle that makes sense because the attempt to sort of look behind the rationale for the introduction of the, you know, why the evidence may have been or may not have been presented at the time before the PTO is a burden that that need to be undertaken in these proceedings. It is more efficient as I think the court made a point, some of a related point in Quaype Newman. The District Court can take in the evidence and decide the facts with respect to the issues that, you know, we're regard to the passability of the claims. You agree, I take it, that if there's no new evidence, then the task of the District Judge is simply to determine whether substantial evidence supports the fine news and the, on the basis of the record by the PTO, correct, by the board. That's right. All right. Now, does that change with the admission of any evidence? That is to say, the minute you introduce even the tiniest bit of evidence in the District Court proceeding, then the entire proceeding becomes District Court doing a denovo finding, excuse me, with respect to everything including all the evidence that was before the PTO. Or does the District Court still defer to those findings made by the PTO and simply make separate findings in light of the new evidence to the extent necessary to accommodate the new evidence? I think that's a fair question, Judge Bryson, and I don't think it's squarely presented here because the threshold issue was the admission of the evidence. As to what our position is on that, I think that as a practical amount of District Courts are likely to give significant weight to what the agency, what they see from the agency record. But as a matter of fact, we have to tell the District Courts what to do, and are we telling them the minute there's a drop of new evidence, then everything changes are we saying the new evidence has to be assessed in light of what the court is doing. What you've been doing previously and will do with respect to the substantial evidence difference with respect to the large body of evidence in the findings made by the Board. I think that what the District Court should do is to the extent there is new evidence going to a particular issue of fact, for example, the, it would be incumbent on the District Court to weigh a new, the evidence to evaluate all of the evidence and reach its own conclusion. The critical difference, I think, between the Denouvo standard and a definite standard is that in one case, the District Court has to reach its own conclusion. Now, the District Court presumably would look at the decision of the PTO and the argument put forward by the PTO in a 145 case and would give that appropriate weight and would look at the, you know, and consider the expertise of the fact finder simply as a matter of the District Court weighing evidence. But it would be a Denouvo finding, which is quite different from the review of a finding of a District Court based on the record that exists. And so that's really the significant difference is it not between looking at the 145 issue now with the history of Zerco and the patent office being placed under the APA where it was not when this entire body of judicial review arose. And I think that's still an interesting question which may not have to be answered in this particular appeal, although more likely than not it does, because the fundamental question underlying our taking this entire issue in bank, not so much to try and draw fine lines based on hypotheticals because there's no legal issue in the world for which you can't find a fine line with a difficult, and it's not a good idea. And so on particular facts, but the question of whether in fact it's appropriate and intended to continue the traditional Denouvo fresh review that underlay 30s or before the sense that we're not comfortable with administrative agencies. A person with the property right is entitled to judicial review. Do you feel that we're answering that question? It was focused upon by Judge Price and I think significantly. Well, gentlemen, I think this court actually has addressed that question non-end bank, but in two prior cases both in Fregaux and then in Missouri which was decided, of course, after Zerco. That was before the APA intervened with Missouri was after. And Fregaux was before. Correct, Fregaux was before, but Fregaux, Missouri was after. And I think that in both cases what got changed from Fregaux was what happens if the record is the same. Fregaux said, well, if the record is the same, we use the court court clear-air or standard, and of course that is what Zerco changed. So that now Missouri says no if it's on the same record, it is the substantial evidence APA standard. But both of those cases recognize and quite consistently with the opinion of the Supreme Court of Zerco that where there is new evidence, the district court is a fat finder. That is makes its own Denouvo findings. So the district court is making a decision. Now how the district court makes that decision what way it gives, I think it's going to depend on the particular matter. So if you know this is such a narrow issue, a question of patentability. We know the broad issues, 103, 112, whatever it is. To say that the district court reviews what it gets in so far as the office has a final decision for support by substantial evidence, looks at whatever additional information is presented, and then we review to see whether the district court correctly supported by a preference based on the court's accordingly. So the district court is putting a substantial evidence standard to the portion of the entirety which was decided by the office. It seems to me that in the mind of human beings it doesn't work that way. Well, I'm not sure. I think that this case actually illustrates how it can work quite well. There was a focused issue which was the adequacy of the written description for certain claim limitations. There was evidence that was introduced as to how in the how particular elements in specification and in the drawings should have been understood to describe those limitations, how they would have been understood by someone with ordinary skill of the in the art to present to provide that description. And the district court should have looked at that evidence and made a factual finding based on the arguments and the evidence that the PTO would have introduced a trial as to whether that written description was adequate in light of what a person of ordinary skill in the art would have understood. Mr. Paner, would you like to retain your report about time? I would. Thank you. We move on to this statement. Chief Judge Raider may please the court. Section 145 provides for judicial review of the patent offices rejection of a patent. It does not provide for a denoubo trial and it does not require admission of all evidence. The evidence that should have been presented to the patent office is excludable by the district court. The authority of the court, that authority of the court is rooted in three sources of law. First, there's the tax and structure of the statute and the Supreme Court's interpretation in Serko and in Morgan. How about the evidence that didn't exist during the time of the patent office prosecution, what could have, for example, laboratory testing that was resorted to later. Didn't exist. Would that have been excludable? It may be excludable or also may be admissible. That's where the court has to look to determine whether there's a reasonable basis for not having presented to the patent office. And that is consistent with the, what we think that the Morgan court would have done under the principles and law of equity at the time of that decision. The court made clear that the starting point is the record of the patent office and it made clear that it wasn't just an appeal. This was in the nature of emotion to set aside a judgment. Well, in the context of the Morgan case, which had absolutely nothing to do with the introduction of evidence because neither party attempted at any stage to introduce any. So when the Supreme Court may be a very equivocal statement, this is like a bill of review. It's for the purposes of that case and what that case is analyzing, right? Not for all purposes. That's right, Your Honor. What we rely on Morgan for is the core nature of the proceeding and of course, the Zerco then relied on Morgan and Zerco was against the standard of review. Well, it was an ex party case that looked to Morgan to see the nature and it also recognized that new evidence could be admitted. But it nowhere set that it was agent Novo proceeding. And if you look at I think as my opposing counsel has suggested he's relying on equity, we think there's equity at the time of Morgan that points to our standard. There's the law of administrative exhaustion and waiver that was developed under the predecessor statute 49, 115 in Barrett and its progeny. And also modern day APA law and rules of waiver and exhaustion all point our position for the district court's authority to exclude evidence that should have been before the patent office. And on Barrett, I'd like to say one thing I think that's clear, that's critical about their equity argument. And court of that is their proposition that in Barrett, the new evidence was sent from contradictory to the earlier evidence. I didn't see that anywhere in the reading of that opinion. It had to do with whether or not it had been reduced to practice. And before the patent office, the evidence was about laboratory experiments. And the copy at that point, it instructed some witnesses not to talk about commercial development or commercial success. And then that was the evidence they tried to admit later. It doesn't mean it was contrary, it could have been very consistent and there may have been other reasons for not admitting that. So that does not support this rule that opposing counsel is trying to create about equitable stock. I'm confused about what your rule is. You have a sweeping statement that lumped in Barrett, APA and everything else is supporting your rule. It doesn't be consistent with the rule that you proposed for new evidence because the APA says no new evidence really absent really exigent circumstances. Oh, it doesn't say that, you're honor. It doesn't say that. What the standard would be under the APA? APA supports exactly what you are particularly. I will do that. The APA makes quite clear that there's a statutory framework for agency action and judicial review. That governs. The APA has certain things about standards or review that apply. And one of the things that the APA recognizes first, under Darby versus Sineros, is that if there are rules of administrative exhaustion that the agency has those have to be abide by. It's clear that the patent office has those. I believe it's a 47-13 that are 31, 31-47 that says you have to raise all of your arguments before the board. The statute here makes clear it has to be exhausted through the board. And that's what apply in a 141 type action before us. And in the Missouri panel opinion in this case, interpreting Zirco, the court, I think very much answered Judge Bryce's question of fact because there there was both the record evidence which this court held was reviewed on the record. Under APA section 706 to E. E is the provision that says that an agency's judgment is reviewed on the record. It was an under F which is the Denelvo standard. It was under E. E under APA is on the record. And Missouri held that for that that's a substantial evidence standard. In addition, when there's new evidence that comes in and in some situations there is new evidence that comes in. We have no disagreement with that. But in those instances it would be to know the review. What is the, give me some examples of when new evidence would be allowed in under Zirstandard? Something that was not, there's not a reasonable ground for having failed to present it to the patent office is what is the standard we suggest for the district court having the authority to exclude it. Is there a reasonable ground in this case? No, not at all. In fact, in this case from the moment that the examiner put Mr. Hyde on a clear, unequivocal notice that the examiner needed to have the parts of the specification identified to demonstrate the support for the claims. He was on notice, had this readily available. It's evidence that was certainly within his power. So, how many rejections did the examiner make against Mr. Hyde's 117 claims? He, I don't know that number, you're on our. 2546. Is that normal? Would you understand that to be a normal number in a patent application? Well, I could tell you this. There was a 238 page specification here. And it took the Pat exam, the board, three weeks, three weeks to go through it. And they make sure they weren't relying on Mr. Hyde's case. I'm Mr. Hyde's case. This matrix table of how many times words are put on certain pages. You're looking quite quizzical, but actually back in the day when this patent was being prosecuted and Mr. Hyde had propered that table, was there computerized, surgical capability and indexing of patent applications? It doesn't matter. I think the yours suggesting this table was on helpful. But in fact, if this table references exactly where in the spec you can find the precise language that the examiner is struggling with. And at the time, there's no computer search capability and no indexing capability, then why wouldn't that be helpful? I'm not suggesting your honor. That's what the board said. That's what the district board said. They said it was not useful. And I think it clearly demonstrated by what Mr. Hyde eventually did put together. And try and present on rehearing, but laterally after he had waved it before the board, it was much more detailed, much more analytical. And then when he presented to the district court, all of that he could have presented to the examiner and certainly to the board. Was that what their computer search capability is? I don't know your honor. It doesn't matter because if you look at what the board said and what the district court said, they needed to understand the support for the plaintes. And not just no word of certain word appears. As I think the board of the district court explained it as if you had a dictionary, you were suggesting that if you knew where the words in the dictionary was giving support to the law argument. They needed the analysis and it's proven in this case, your honor by what Mr. Hyde, but laterally put together and tried to introduce in the district board. That's what he should have presented to the examiner. There's no reasonable realm for him not having presented that to the examiner. And I wanted to address it normal for there to be 2,546 rejections against a patent application. You can find that within your experience in the PTO to be formal. I couldn't say your honor. I can say that here there were 117 new claims that were not the original claims when the specification was originally filed. And the examiner point blank to Mr. Hyde gave him every chance and every opportunity to provide that information that the examiner needed. And I wanted to get back to what I was going to come up. But before you leave our point, I think that's very you saying that there is an obligation for an applicant to view the examiner and the board as if they were generalists with no technical background. And therefore to provide an explicit simplified detailed statement as one would provide to a generalist judge who knows nothing about the technology and not having done that, but having dealt expert to expert as an examination. Most of the time precedes the applicant when he finally ends up in court before generalist judge is barred from elaborating in this way as did Mr. Hyde on the information that was before the office. Is that what I heard you say? No, your honor. If Mr. Hyde had presented his arguments and evidence concerning the support for the claims from the written description. That's right. To the explicit. He pointed out to the judge exactly where the specific aspects were described, but the examiner is supposed to know that. That's what the examination is all about. He didn't provide that here was much more abbreviated than that very short and it was clear certainly by the time of the board from the Alton case that once the examiner came forward and with that rejection of primatation was the burden on Mr. Hyde. I don't disagree that the district court needs it, but I do agree with you the latter that is what the PTO needs. Under opposing counsel's test, the PTO is deprived of what they need. For example, if there's commercial success that's material, the PTO needs that. And it can't be what Congress meant for the applicant to sand back the PTO go to the district court for at least three reasons. Certainly in this ex party situation. Well, you're premise that somebody who has a chance at obtaining the patent during examination from the examiner and the board in squandered 11 years undoing so with deliberately withhold information in order to have a few more years and a few more days. I can't answer hundreds of thousands of dollars, whatever it costs in the district court having withheld information that might have succeeded. I can maybe there are people who do this, but I doubt if they I can give you four situations in which that could arise. First of all, in scenarios that pre-gad applicants like Mr. Hyde, it's everything to gain from delay because his term starts from 17 years after issue. Well, but not anymore. This was this is such an out of place that it has this independence. But so that reason wouldn't apply to anybody. A second category is the concern of applicants with prosecution history, a stoppile and the tendency to not want to make statements could be used again, then, then, later infringement litigation and seen how far they can go without that. And then perhaps a time well now that I've got to district court, you know, I lost with that. I didn't get that so I'm going to have to now introduce it. That's another scenario where there's a lot of delay even within the patent examination process. But it's just outlandish scenarios. Your own. The way to handle patent applications in a way that's fair and just and accordance with the statutes and what the premise of Congress has been all along. And so in its wisdom, we have had for a long time this dual path of review on the record goes to one court, the CCPA, and then this court. If you feel you can improve your record for whatever reason, you have another path, the standard path of review, which until recently went by another district court, but also to the regional circuit. Now the appeal comes here as well. What we need to put our minds to, and I would think what the government would need to put its line to, is the separate purposes that are intended to be served by the separate paths and how to fulfill them, not how to defeat them. Your honor, we thoroughly embrace that we acknowledge that new evidence can be introduced into 145. We think the text and structure of the statute, holy support that. Also, we have the Supreme Court having definitively ruled in two instances, one more than 100 years ago, one within the past decade or so, on these issues. More than make clear, not about a missibility of evidence, but certainly about the proceeding and its interpretation of what Congress intended and that it was in the nature of a motion to set aside a judgment. As this court has said, the operative nucleus is the administrative record. This is denoted in Omo trial. There is no requirement that all the evidence be admitted. The district court has the authority, and indeed under, now well-established doctrines of exhaustion and waiver and the PTO's own rules and the APA, has the authority to exclude evidence that should have been before the Patent Office, and there's no reasonable reason why it wasn't presented there. So the first thing that happens is we have, as we have here, another few more years of arguing about whether it could have or should have, or might have been provided to the Patent Office. I don't see how there's going to be any difference between what needs to be considered under opposing councils, creative, suggestion of collateral, a stop-bel, and maybe abandon it some other things. We have rooted our analysis in how the Supreme Court has read this data in the decades of development of law under 4915 and a current administrative procedure, and I'm sorry, panels, recognition that there's substantial evidence review under 7062E for the record from the Patent Office and new evidence that can be admitted, but not limitless in the way that evidence. If there was no reason, if there's a reasonable basis for not having presented it. How is the Supreme Court to define the parameters of the new evidence, that the experiments are conducted after the submissions of the Patent Office, after the PTO's court rule? What else would be available as new evidence? I think you'd have a rich vein of authority to look to both the bill of review and equity, and we should point out, it's an original bill known as the bill of review. It's a type of bill in equity. It's not inconsistent with the bill in equity at all. We have the Barrett and its progeny. We have this court's rulings and conserva light, and also the DC Circuits and Latin and Decevresky, which all recognize these waiver rules, both for our evidence. I think that the evidence, I should say, and I think to give you some specific examples, certainly prior art that was later discovered, I think could be something that could be new evidence. There would be a question of whether there was adequate diligence. That back in the motion to set aside a judgment, it had to have been reasonable diligence. You can always be testimony, right? We wouldn't say there's a per se right for testimony. I think it would have to be where there is a reasonable ground for demonstrating that it would be testimony that would have been relevant, couldn't have been presented. I know no testimony can be presented to the examiner, but in many instances, declarations would be adequate because it's not a credibility issue. It's really the force of the argument. What about if Mr. Hire, rather than submitting this declaration, had wanted to get on the witness stand and essentially say, testified to everything that was contained in the declaration? Would that have been permissible? Why not? Because there would have been adequate opportunity for him to present that to the office. If he came and had some issue about reduction to practice, and there was a question about credibility in a witness that could attest to this, and said, you know, this is very important. I have a more than reasonable ground for not have presented that because the oral testimony is key here because of credibility. That I think would meet the test. Couldn't you make that argument any time there was oral testimony that a declaration could have been submitted? I think it depends on what the testimony and the oral testimony goes to, what the issue is. And in some instances, there isn't any relevance about credibility going to if there's cooperation and say, you know, statement of a chronology of what happened. What a piece testifies as to what one skilled in the art would have read particular limitations and specification. Is that the kind of thing that we would have allowed to have a credibility? No, I mean, no. No, your honor. That is something that could be adequately presented and is fully provided for under the patent office rules. Mr. Hire, a few minutes ago, you started to answer a question by talking about three main points why you want your reading of 145. I don't know if that was already covered with your analysis of Morgan or not. So I think you did fast. Thank you, Your Honor. The first is really the tax instruction, how does the Supreme Court has interpreted that in Morgan and Zurko? Recognizing that it's in the nature of motion to set aside a judgment. If you look at that body of law, you will look to law that gives you the grounds for setting forth when new evidence can be admitted or not. There's a font of law there. And it really had to be newly discovered evidence. If it had been readily discoverable with due diligence, it would not have been admitted. We think that Zurko follows on that and embraces looking towards Morgan even for ex party and in this court, Missouri case, it followed from that. The second source of law, we would look to the decades of development of the lower courts under 4915. Under Barrett and many other cases, those courts, done in a very practical way with this issue and always had the agency record as the starting point. I mean, there is no case suggest this is the Denomotrial and that is out the window. I mean, that would be directly contrary not just to Morgan, but to this decades of the case laws of these judges struggling with this issue. And you look and you see and in many of those cases, they loosely use the words Denomot, but is this court even said in conservative light? You know, Denomot did not need a Denomotrial and you look at that, they were certainly saying, we have to make review before the agency meaningful. And now that meaningful, you have given the agency the opportunity to pass on this. And I have to say it is particularly true in the party scenario because if the evidence is properly presented to the examiner in the board, there will be a patent issue and there will be no further appeal. It is even more important, I would say, to talk about 145 versus 146. It is more important than 145 scenario because it never goes to court if it is fully presented in the patents granted. Well, hypothetically, what happens if the patent office finds a reference after the completion of the award proceeds? Can they introduce that patent reference at the 145? Yes, you honor. That is the night. I forget which case it is, but to the scenario is as if there was newly discovered art by the... I think there would be the same determination, but yes, it could be. There was a reason around that. It means that an unsymmetrical situation, a patent office can introduce new evidence, but the applicant cannot, based on your... No, Your Honor, it would have to fulfill the same standard. First, we do diligence in both cases. Exactly, exactly, Your Honor, precisely. If there was a failure of due diligence and a prior effect, this would not be related at that point. That is right, it would not be. I have to say also, Your Honor, on the third round. I have to add a quick question to understand that because obviously that reference could always be used later against the patent itself if it is issued. What happens if the patent application issues in a patent is this very strong reference against it? Your Honor. Can the patent office issue a validity, presumption of validity and question at that point? Well, by the time that the 145 proceeding has occurred, the board has already made its determination that 145 proceeds to review the action of the agency subject to this recognition of the new evidence in certain limited situations. And we would submit that if there was that type of new evidence, and there was some question that there had not been due diligence, it might be a scenario where there would be some kind of remand or... or further proceeding, but we don't think that it is an avenue for all and missibility of evidence before the district court. The district court has the authority to exclude evidence that should have been before. The district court has the issue to an order of men, Davis, against the commissioner issue the patent at that point. After the completion of 145 proceedings. The mandamus is actually to issue a consistent with law. With the order. Right, it authorizes me. So what issue do the patent applications of patent with an outstanding reference out there that could invalidate? Right? Is that correct? I'm not sure. I'm sorry. Could you repeat your question? Well, if the district court issues an order of men, Davis, against the patent office, is to issue the patent application in the repat. Knowing that there is a valid reference against it, at that point in time, that the validity of the patent would be in question. Your Honor, I've been informed that we actually have an obligation to reject the claims after the 145 actions. So whether the district court considers or it would be, it is available. So I guess that you could see that as an asymmetrical situation. I think it's really maybe compelled by the restrictions on the patent office and issuing a patent that is not valid. So as I understand it, the district court in the 145 action doesn't have the authority to order the issuance of a patent. That's right. So it has to go back to the agency and if there was some new evidence that either side, the discovery of that could be brought before the agency after the district court action. That's right, Your Honor. Courts have long suggested that the court reviews are actually part of that patent process and the order that comes from the district court is one authorizing, not mandating the patent office issued a patent. I just want to come back to my third source of law to look through for this standard and it is being APA and the current 145 jurisprudence, the requirements under the patent office for exhaustion and the rules of waiver if it's not the issue and evidence is not presented to the board before the reply brief. And as we pointed out, we think the Missouri is fully consistent with that and recognizes that it's substantial evidence review under the APA 7062E but for a new evidence, it would be de novo determination. And Judge Dumont, I think you have a point about the complexities of judicial review from there. But I'm going to ask you this question about what your position means to the extent that it seems to me this is a shift from the practice the way the way of spin and certainly the way on all of the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the, the technical, technological, technological information, comparative data. The applicant just doesn't turn up and argue it again to a different judge, but does indeed come forward. Why is it go to the federal circuit before that, to the CCPA? So we have additional data, comparative data with the prior art. I think that that's what's seen in the vast majority of 145 actions. From what I hear you saying, if in fact those experiments could have been run because it relates to the prior art, but hadn't been performed while the application was before the office, the office would take the position that it's too late, and it can't be provided in a 145 action, which I think would affect the vast majority, eliminate the vast majority of 145 actions, would as many of the Amicus briefs pointed out, and to the expense before the applicant to conduct additional experiments, even though the applicant is dealing with experts in the federal, rather than the judge. And so would I hear you saying that if in fact you go back, perform additional experiments, or may even have had the nucleus of them, or some of them in your record, and didn't file it before that you can be excluded from presenting it to the district court. The district court may be able to be excluded, it depends on the termination about whether it was reasonable grounds for not having done that to the patent office. That was expensive. Is that a reasonable ground? No, that would not be a reasonable ground. So now we go to the library to do it. I believe changed the present 145. Perhaps this is now if this is one way perhaps of, don't know, cutting back on patent applications. You're on to the contrary, we think that the opposing position would radically transform it. This would mean that cases where a patent could be issued, an applicant could stand back for commercial reasons, for prosecution of stop-al-reasons, because they think in this particular technology they have a better chance with the judgment. Because of the nature of the submission, in one case to a non-technical judge, in the other case to an expert patent office. And there may be reasonable grounds in some instances you honor for, I'm just not sure if you're spitting about it in order to get your evidence here. Well, you've spent a lot of time and effort between the patent office who could have issued the patent if you had provided them this information with more technical expertise and more understanding of the intricacies of patent law. And to change that would mean that the patent office will now be wasting time on applications that are just going to have a total redo. They're going to be treated as a dress rehearsal. The federal court, district court judges are going to be left without the expertise of the patent office. And the patent office will be sending cases to district court that never needed to go there because they would have grabbed the patent if they had the evidence. Excuse me. Your argument is that the 145 action is akin to a bill of review, a bill of review of what you should be a full and comprehensive agency determination with all of the evidence. That's the case then. Should the patent office be permitted to raise a new ground of rejection in a 145 action? In the situation of a 145 generally, new grounds of rejection arise when there often has been some kind of new evidence or argument that was allowed in district court. And certainly my question is simply should the patent office be permitted to raise a new ground of rejection in a 145 action? Certainly, if it would eventually be the scenario that went back to the patent office, they were going to reject it on that ground. Anyone would think that that would be the appropriate way to proceed so the district court is not wasting its resources and deciding that something that would not eventually need to be decided. How is that consistent with the idea that this is akin to a bill of review? It would be a type of situation where you would have to look at I think in the same kind of setting aside judgment under newly discovered evidence or a new ground that with reasonable diligence had not been appreciated earlier. I mean, when I talk about new evidence, we're talking about a new ground of rejection. It seems to me to be entirely inconsistent with the notion of a bill of review. Well, one thing I just want to make clear, we are not saying that new evidence and argument cannot come in at a 145 proceeding. We agree with that. We think it's clear from the structure, the history of it. And also, may I continue your honor, I think, my time is excellent. You're talking about the police continuing to finish this question. We think that that is wholly consistent and important and crucial to the structure that Congress set up because of the DOS 3141 and 145. Also, as you can see from there are many cases in which new evidence has come forward that have met standards. But it can't be that the district court is without authority to exclude evidence that should have been before the patent office that contains the same arguments that were weighed under the rules of the patent office and the APA. So in that ground, I would say that a new ground for rejection will fall within this scenario where you can have new evidence and argument before the district court, but it is not a trial to no vote. And is not required for the district court to introduce all evidence. Thank you. Thank you, Mr. Pinkman. Mr. Paner, would you add one minute to Mr. Paner and then we'll have about equal time. You have about five minutes, Mr. Paner. Thank you, Judge Rear. In this case, the intent of Congress to provide for a remedy through a new trial that is a trial that provides for the introduction of evidence is to try to establish the patentability of the claims that were before the patent office. This is absolutely clear. The bill of equity has existed for 170 years. It was re-adopted by Congress in 1927. The legislative history is absolutely clear that this proceeding was intended to be a denouvelled proceeding with the introduction of new evidence. The suggestion that this, and there is simply nothing in the legislative history that is to the contrary. How long do you define new evidence at that point? You know, it's the evidence. Everything that's available and even before the patent office sort of, I mean new evidence which was not available will be put in the patent office. The evidence that is admissible, the fact that the evidence was not admitted before the patent office is not a grounds for exclusion. We've cited several cases in which new evidence and indeed new arguments were put forward in the court. Later Chief Justice Taft, as a case from the Sixth Circuit in which he specifically says this argument about the fact that this could have been put before the patent office, really is not because this is a new action. Again, you can introduce new evidence. The same thing happened in the Curtis case decided by the Second Circuit which we've cited. And when you look at the legislative history of the 1927 act where the Section 4915 was revised. Again, every witness who spoke to this, including the commission of the patent office, indicated that this was a new proceeding in which new evidence could be admitted in accordance with the ordinary evidence. As well, suggestion livenants couldn't be excluded. They were concerned about oral testimony, billing, and the auditions of credibility. But you are what is utterly lacking is any suggestion that the failure to introduce a particular type of evidence before the patent office would have been in general a basis to exclude it in the new action. There is no principle in equity and nothing in the legislative history to support that suggestion. And the suggestion by the government that this is going to lead to bad consequences, I think is frankly fanciful. They could not lead to bad consequences. What you are doing is saying the patent office is not going to have the opportunity to see this evidence and to bring its expertise to be. You are concluding the patent office reaching its best judgment on this and you are concluding the district court from getting the best judgment of the patent office. First of all, that is not correct, Your Honor. It is a technical matter because the patent office will be a party in the district court and will certainly bring its best expertise to bear. But furthermore, as a party in the district court, it is not as well established that the agency counsel does not speak for the agency in that respect. The agency's judgment is the agency's judgment reached by the board on the exam. That is true. But Your Honor, the point that I wanted to make in terms of the ability of the patent office to bring its expertise to bear, the patent applicant has every incentive to diligently pursue the application. As this applicant did, the idea that this was somehow evidence that was put from the patent office is simply false. The board's decision gave a focused explanation for the rejections that was simply lacking from the examiner's rejection. And I think Judge Moore has very accurately portrayed the context in which this decision by the board was made. There was a Mr. Hines that the David had been presented to the patent office. There would have been no reason. First of all, Mr. Hyatt made it. I don't know whether technically under the rules it could have been done. Mr. Hyatt did present in his adhering petition, the focused argument. Indeed, the PTO has conceded that in the adhering petition Mr. Hyatt presented what they argue should have been presented in an earlier point and the patent office disregarded it. So there's no question of somehow trying to pull the wool over the eyes of the office. What it is was important for Mr. Hyatt to, or I should say, the plaintiff to present not necessarily in his own affidavit, but as evidence. Was evidence regarding what would have been understood by someone with ordinary skill in the art that is not evidence that would have been required before the patent office, because the patent office is presumed to have that skill and to understand to be an expert in the art that is being presented. And so in this circumstance, this actually illustrates why the introduction of new evidence is entirely justified. Thank you, Mr. Paner. I think your time's expired. Thank you, Your Honor. The court thanks both Mr. Paner and this Franklin for their assistance today. Our next case is slide on the state. Thank you. Thank you. So the court for him. You know that's my role, Mr. Paner. Yeah, it's a time you better pick the name and come in. So please. See you on a second. Thank you. We have a new, but I'm sure equally interested in this

Legal Case Summary

Hyatt v. Kappos

Date Argued: Thu Jul 08 2010

Case Number:

Docket Number: 2598606

Judges:Not available

Duration: 68 minutes

Court Name:

Case Summary

Hyatt v. Kappos

Oral Audio Transcript(Beta version)