No Appellate Deference to Post-Judgment USPTO Determinations
Whether the later reissuance of the ’250 patent by the PTO, subsequent to the decision by the trial court in this case, is pertinent to the appeal is a different question. It is self-evident that the PTO’s subsequent reaffirmation of its earlier position, that claim 33 is a valid claim despite the alleged prior art, can have no legal effect as such on the already-rendered judgment of a court of competent jurisdiction. No one suggests that the PTO has power to exercise review authority over a judgment of a federal trial court.
That said, there remains the question of what deference, if any, needs to be accorded on appeal to such an administrative re-determination when it first appears at the last moment in an appeal from a trial court’s final judgment. It hardly needs noting that it is the trial court’s decision, not the PTO’s, that is before us on appeal. The reissuance of the patent occurred after the trial court rendered its final judgment. An appellate court ordinarily declines to consider new evidence or argument not previously presented to the trial forum whose judgment is under review. We think that, in a circumstance such as this, judicial efficiency and the policy of repose counsels against our re-weighing of the evidence to add an additional deference-thumb to the scale, or, even more disruptive, our asking the trial court to reopen the entire invalidity question to reweigh the intangible worth of additional deference.
This is not to say that the determinations made by the corps of examiners are not important, or should not be worthy of appropriate deference to their expertise in these technical matters, especially when we have the benefit of well-reasoned explications. It is to say that when dealing with the intangible worth to be accorded an administrative agency’s decision making, the judicial process cannot be held hostage to the timing of either the agency or the litigants who have invoked the agency’s further review. In some circumstances a party may be able to obtain a stay from the trial court while awaiting the sought-for agency action; absent that, and absent extenuating circumstances not here present, the case must be decided on the record the litigants present for appeal.