In today’s en banc decision in Hyatt v. Kappos, No. 2007-1066 (Fed. Cir. Nov. 8, 2010), the Federal Circuit addressed 35 U.S.C. § 145, which concerns the alternative routes by disappointed patent applicants can contest BPAI rulings rejecting a patent: an “appeal” to the Federal Circuit or a “civil action against the Director in the United States District Court . . . .” Addressing the “civil action” alternative, the court held:
(1) § 145 itself imposes no limit on an applicant’s right to introduce new evidence in the district court, regardless of whether he could have introduced before the BPAI;
(2) such new evidence is subject only to the Federal Rules of Civil Procedure and Evidence;
(3) the district court must make de novo findings on any issues implicated by the new evidence;
(4) in contrast, the district court must apply the deferential APA “substantial evidence” standard of review as to issues for which no new evidence was taken; and
(5) issues (as opposed to evidence) not raised in the Patent Office cannot be raised for the first time in a district court action.
The opinion did not mention the trademark-side counterpart to 35 U.S.C. § 145 (i.e., 15 U.S.C. § 1071(b)). In my view, however, (so take it for whatever it's worth), these standards on the patent side may very well apply to proceedings challenging TTAB trademark decisions too, for the wording of the two provisions is virtually identical, at least in the respects that the en banc court found significant:
35 U.S.C. § 145
"An applicant dissatisfied with the decision of the [BPAI] may, unless appeal has been taken to the United States Court of Appeals for the Federal Circuit, have remedy by civil action against the Director in the United States District Court . . . . The court may adjudge that such applicant is entitled to receive a patent for his invention . . . as the facts in the case may appear . . . ."
15 U.S.C. § 1071(b)
"Whenever a person . . . is dissatisfied with the decision of the [TTAB], said person may, unless appeal has been taken to said United States Court of Appeals for the Federal Circuit, have remedy by a civil action . . . . The court may adjudge that an applicant is entitled to a registration . . . , that a registration involved should be canceled, or such other matter as the issues in the proceeding require, as the facts in the case may appear."
I also commend Judge Newman’s partial dissent. She didn’t like points (4) & (5), above. As usual, her dissent seems to make sense.