Certiorari To The United States Court Of Appeals For The Federal Circuit
No. 10–1219. Argued January 9, 2012—Decided April 18, 2012
Under the Patent Act of 1952, if a Patent and Trade Office (PTO) examiner denies a patent application, 35 U. S. C. §131, the applicant may file an administrative appeal with the PTO’s Board of Patent Appeals and Interferences, §134. If the Board also denies the application, the applicant may appeal directly to the Court of Appeals for the Federal Circuit under §141. Alternatively, the applicant may file a civil action against the PTO Director under §145, which permits the applicant to present evidence that was not presented to the PTO.
Respondent Hyatt filed a patent application covering multiple claims. The patent examiner denied all of the claims for lack of an adequate written description. Hyatt appealed to the Board, which approved some claims but denied others. Pursuant to §145, Hyatt filed a civil action against the Director, but the District Court declined to consider Hyatt’s newly proffered written declaration in support of the adequacy of his description, thus limiting its review to the administrative record. Applying the deferential “substantial evidence” standard of the Administrative Procedure Act (APA) to the PTO’s factual findings, the court granted summary judgment to the Director. On appeal, the Federal Circuit vacated the judgment, holding that patent applicants can introduce new evidence in §145 proceedings, subject only to the limitations in the Federal Rules of Evidence and the Federal Rules of Civil Procedure. It also reaffirmed its precedent that when new, conflicting evidence is introduced, the district court must make de novo findings to take such evidence into account.
Held: There are no limitations on a patent applicant’s ability to introduce new evidence in a §145 proceeding beyond those already present in the Federal Rules of Evidence and the Federal Rules of Civil Procedure. If new evidence is presented on a disputed question of fact, the district court must make de novo factual findings that take account of both the new evidence and the administrative record before the PTO. Pp. 5−14.
(a) Section 145, by its express terms, neither imposes unique evidentiary limits in district court proceedings nor establishes a heightened standard of review for PTO factual findings. Nonetheless, the Director contends that background principles of administrative law govern the admissibility of new evidence and impose a deferential standard of review in §145 proceedings. As the Director concedes, however, judicial review in §145 proceedings is not limited to the administrative record because the district court may consider new evidence. If it does so, the district court must act as a factfinder and cannot apply the APA’s deferential standard to PTO factual findings when those findings are contradicted by new evidence. Moreover, the doctrine of administrative exhaustion―the primary purpose of which is “the avoidance of premature interruption of the administrative process,” McKart v. United States, 395 U. S. 185―does not apply because the PTO process is complete by the time a §145 proceeding occurs. Pp. 5−7.
(b) The core language of the 1870 Patent Act, codified as Revised Statute §4915 (R. S. 4915), remains largely unchanged in §145. Decisions interpreting R. S. 4915 thus inform this Court’s understanding of §145. Both Butterworth v. United States ex rel. Hoe, 112 U. S. 50, and Morgan v. Daniels, 153 U. S. 120, describe the nature of R. S. 4915 proceedings, but the two opinions can be perceived as being in some tension. Butterworth described the proceeding as an original civil action seeking de novo adjudication of the merits of a patent application, while Morgan described it as a suit for judicial review of agency action under a deferential standard. The cases are distinguishable, however, because they addressed different circumstances. Butterworth discussed a patent applicant’s challenge to the denial of his application, whereas Morgan involved an interference proceeding that would now be governed by §146, not §145, and in which no new evidence was presented. Here, this Court is concerned only with a §145 proceeding in which new evidence was presented to the District Court, so Butterworth guides this Court’s decision. Thus, a district court conducting a §145 proceeding may consider all competent evidence adduced and is not limited to considering only new evidence that could not have been presented to the PTO. The introduction of new evidence in §145 proceedings is subject only to the Federal Rules of Evidence and the Federal Rules of Civil Procedure, and if new evidence is presented to the district court on a disputed factual question, de novo findings by the district court will be necessary for that new evidence to be taken into account along with the evidence before the Board. Pp. 7−13.
(c) The district court may, however, consider whether the applicant had an opportunity to present the newly proffered evidence before the PTO in deciding what weight to afford that evidence. Pp. 13−14.
625 F. 3d 1320, affirmed and remanded.
Thomas, J., delivered the opinion for a unanimous Court. Soto- mayor, J., filed a concurring opinion, in which Breyer, J., joined.
Certiorari To The United States Court Of Appeals For The District Of Columbia Circuit
No. 11–88. Argued February 28, 2012—Decided April 18, 2012
While visiting the West Bank, Azzam Rahim, a naturalized United States citizen, allegedly was arrested by Palestinian Authority intelligence officers, imprisoned, tortured, and ultimately killed. Rahim’s relatives, petitioners here, sued the Palestinian Authority and the Palestinian Liberation Organization under the Torture Victim Protection Act of 1991 (TVPA), which authorizes a cause of action against “[a]n individual” for acts of torture and extrajudicial killing committed under authority or color of law of any foreign nation. 106Stat. 73, note following 28 U. S. C. §1350. The District Court dismissed the suit, concluding, as relevant here, that the TVPA’s authorization of suit against “[a]n individual” extended liability only to natural persons. The United States Court of Appeals for the District of Columbia Circuit affirmed.
Held: As used in the TVPA, the term “individual” encompasses only natural persons. Consequently, the Act does not impose liability against organizations. Pp. 2–11.
(a) The ordinary, everyday meaning of “individual” refers to a human being, not an organization, and Congress in the normal course does not employ the word any differently. The Dictionary Act defines “person” to include certain artificial entities “as well as individuals,” 1 U. S. C. §1, thereby marking “individual” as distinct from artificial entities. Federal statutes routinely distinguish between an “individual” and an organizational entity. See, e.g., 7 U. S. C. §§92(k), 511. And the very Congress that passed the TVPA defined “person” in a separate Act to include “any individual or entity.” 18 U. S. C. §2331(3). Pp. 2–5.
(b) Before a word will be assumed to have a meaning broader than or different from its ordinary meaning, Congress must give some indication that it intended such a result. There are no such indications in the TVPA. To the contrary, the statutory context confirms that Congress in the Act created a cause of action against natural persons alone. The Act’s liability provision uses the word “individual” five times in the same sentence: once to refer to the perpetrator and four times to refer to the victim. See TVPA §2(a). Since only a natural person can be a victim of torture or extrajudicial killing, it is difficult to conclude that Congress used “individual” four times in the same sentence to refer to a natural person and once to refer to a natural person and any nonsovereign organization. In addition, the TVPA holds perpetrators liable for extrajudicial killing to “any person who may be a claimant in an action for wrongful death.” See TVPA §2(a)(2). “Persons” often has a broader meaning in the law than “individual,” and frequently includes non-natural persons. Construing “individual” in the Act to encompass solely natural persons credits Congress’ use of disparate terms. Pp. 5–6.
(c) Petitioners’ counterarguments are unpersuasive. Pp. 6–11.
(1) Petitioners dispute that the plain text of the TVPA requires this Court’s result. First, they rely on definitions that frame “individual” in nonhuman terms, emphasizing the idea of “oneness,” but these definitions make for an awkward fit in the context of the TVPA. Next they claim that federal tort statutes uniformly provide for liability against organizations, a convention they maintain is common to the legal systems of other nations. But while “Congress is understood to legislate against a background of common-law adjudicatory principles,” Astoria Fed. Sav. & Loan Assn. v. Solimino, 501 U. S. 104, Congress plainly evinced its intent in the TVPA not to subject organizations to liability. Petitioners next argue that the TVPA’s scope of liability should be construed to conform with other federal statutes they claim provide civil remedies to victims of torture or extrajudicial killing. But none of the statutes petitioners cite employs the term “individual,” as the TVPA, to describe the covered defendant. Finally, although petitioners rightly note that the TVPA contemplates liability against officers who do not personally execute the torture or extrajudicial killing, it does not follow that the Act embraces liability against nonsovereign organizations. Pp. 6–8.
(2) Petitioners also contend that legislative history supports their broad reading of “individual,” but “reliance on legislative history is unnecessary in light of the statute’s unambiguous language.” Milavetz, Gallop & Milavetz, P. A. v. United States, 559 U. S. ___, ___. In any event, the history supports this Court’s interpretation. Pp. 8–10.
(3) Finally, petitioners argue that precluding organizational liability may foreclose effective remedies for victims and their relatives. This purposive argument simply cannot overcome the force of the plain text. Moreover, Congress appeared well aware of the limited nature of the cause of action it established in the TVPA. Pp. 10–11.
634 F. 3d 604, affirmed.
Sotomayor, J., delivered the opinion of the Court, in which Roberts, C. J., and Kennedy, Thomas, Ginsburg, Breyer, Alito, and Kagan, JJ., joined, and in which Scalia, J., joined except as to Part III–B. Breyer, J., filed a concurring opinion.