Evidence

In Roku, Inc. v. Universal Elec’s, Inc., Case No. 2022-1058 (Fed. Cir. Mar. 31, 2023) (Reyna, Stoll, JJ.) (Newman, J., dissenting), the Federal Circuit reviewed a PTAB decision finding a patent for a universal remote control was patentable over prior art by looking only at the underlying factual issues leading to the obviousness decision, with those underlying factual issues being reviewed for substantial evidence, which is a determination as to whether a reasonable factfinder could have arrived at the same conclusion as to the facts.

Judge Newman dissented, arguing that de novo review of the obviousness–a legal question–was required and had the majority undertaken that required review, it would have resulted in a reversal of the PTAB's decision.

• Review

In Kappos v. Hyatt, the Supreme Court upheld the Federal Circuit's reversal of a Summary Judgment granted to the PTO without review of a declaration filed for the first time in District Court. The Court specifically held that 35 U.S.C. §145 neither imposes unique evidentiary limits in district court proceedings nor establishes a heightened standard of re- view for factual findings by the PTO; neither it nor the APA, nor the principles of administrative exhaustion, prohibit an applicant from introducing new evidence on appeal from the Board of Appeals to the U.S. District Court for the District of Columbia. Stated the Court: “Likewise, we conclude that a district court conducting a §145 proceeding may consider “all competent evidence adduced,” id., at 61, and is not limited to considering only new evidence that could not have been presented to the PTO.”

• Summary, discussion