This quiz question concerns a situation where one of the three judges of a Federal Circuit panel dissents from the two judge majority opinion. Which of these answers is/are correct for designating the opinion precedential:
a). both judges in the majority vote to make the opinion precedential;
b). one judge in the majority votes to make the opinion precedential and the other two judges vote against it;
c). one judge in the majority votes to make the opinion precedential and the dissenting judge votes to make the opinion precedential;
d). neither judge in the majority votes to make the opinion precedential, but the dissenting judge votes to make the opinion precedential;
e). all of the judges in the panel vote to make the opinion precedential;
f). the Chief Judge can designate the opinion precedential, regardless of whether she is on the panel.
Judges Taranto and Newman pressed an issue during a recent oral argument as to who is the real party in interest when a membership organization brings an IPR. The importance in deciding the issue is that it affects how estoppel applies during future district court litigation (at least) for that patent. Should the estoppel apply just to the membership entity itself or should it also apply to the members of the membership entity? Should it apply to only the members who fund the IPR?
From Judge Newman’s and Judge Taranto’s comments, apparently this is an issue that is percolating now in the courts. So, look for more to come from the courts on this issue.
The oral argument was in the recently decided Rule 36 Judgment in VILOX TECHNOLOGIES, LLC v. UNIFIED PATENTS, LLC, No. 2019-2057 (Fed. Cir. Feb. 14, 2023). [Opinion]. The court ultimately didn’t reach the issue in this case because the patent at issue was affirmed as invalid — thus it won’t be asserted in future litigation and estoppel won’t be an issue.
The entire oral argument is available for download here: [Link]. However, the pertinent discussion concerning who is the real party in interest when a membership organization brings an IPR is available here:
I was down in Argentina earlier this month and had the opportunity to do some fishing for a fish known as the Golden Dorado (a.k.a., ‘El Tigre del Rio’). While I was a patent attorney literally on a fishing expedition, it was not the same type that the Federal Circuit was referring to in Monarch Assur. PLC v. US, 244 F.3d 1356 (Fed. Cir. 2001):
Having said that, we wish to make clear to plaintiffs and their counsel that the trial court is not expected to, nor should it, simply allow plaintiffs to embark on a wide-ranging fishing expedition in hopes that there may be gold out there somewhere, or worse, in hopes that the Government will get tired of litigating and settle an otherwise unprovable case.
Judge Wallach took senior status back in 2021. In the final oral argument over which he presided, he thanked the bar for its courtesy and hard work over the years. You can listen to his sign-off here:
There was another interesting sound bite during that oral argument. In an appeal from Judge Albright’s courtroom, Judge Wallach asked whether a person of skill in the art was a district court judge with twenty years of patent litigation experience:
Whether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination. Whether a particular technology is well-understood, routine, and conventional goes beyond what was simply known in the prior art. The mere fact that something is disclosed in a piece of prior art, for example, does not mean it was well-understood, routine, and conventional.
Berkheimer v. HP INC., No. 2017-1437 (Fed. Cir. Feb. 8, 2018)(slip opinion at 14).
An examiner’s assertion that a particular fact or principle is well-known is not evidentiary support. Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016).
In re Google, 2022-2012 (Fed. Cir. January 9, 2023)(slip opinion at 10 citing Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016) and DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006).
Sure sounds like the PTO should be required to provide evidence in a §101 rejection that something is well-understood, routine, and conventional to a skilled artisan at the time of the patent — not mere examiner or APJ opinions — or otherwise the rejection should fail for lack of substantial evidence.
The recent appropriations Act makes provisions for a new satellite patent office in the Southeast Region of the United States. The new office will be located in one of these states within the next three years: Virginia, North Carolina, South Carolina, Georgia, Florida, Tennessee, Alabama, Mississippi, Louisiana, and Arkansas.
So, where will it end up? I suppose the most logical place for the satellite office is the Research Triangle area of North Carolina; but, that’s open to debate. Criteria for assessing where to locate the new office will include:
(A) The number of patent-intensive industries located near the site.
(B) How many research-intensive institutions, including institutions of higher education, are located near the site.
(C) The State and local government legal and business frameworks that support intellectual property-intensive industries located near the site.
At any rate, it will be interesting to see where the ultimate location will be. Personally, I’m pulling for Florida.
Here’s the pertinent text from the Act:
(b) Southeast Regional Office.–
(1) In general.–Not later than 3 years after the date of
enactment of this Act, the Director shall establish a satellite
office of the Office in the southeast region of the United States.
(2) Considerations.–When selecting a site for the office
required under paragraph (1), the Director shall consider the
following:
(A) The number of patent-intensive industries located near
the site.
(B) How many research-intensive institutions, including
institutions of higher education, are located near the site.
(C) The State and local government legal and business
frameworks that support intellectual property-intensive
The audio bite of the day comes from Judge Moore during the oral argument of ADASA INC. v. AVERY DENNISON CORPORATION, No. 2022-1092 (Fed. Cir. Dec. 16, 2022).
I think you may be the only person I’ve ever heard . . . say that we have somehow created bright lines in 101. I can’t think of anything that’s further from the truth.
Chief Judge Moore, Oral Argument in ADASA INC. v. AVERY DENNISON CORPORATION, No. 2022-1092 (Fed. Cir. Dec. 16, 2022) at 00:34.
During the oral argument of In re Antor Media Corp., 689 F.3d 1282 (Fed. Cir. 2012) back in 2012, then-Chief Judge Rader expressed a concern about creating a blanket rule that would give any printed publication a presumption of enablement. He said:
My concern with a blanket rule that says a printed publication is presumed enabled is, what if it is really a cursory outline and it may recite each element of the claims but supplies no credible recitation of how that would be done.
In In re Antor Media, the Federal Circuit was dealing with a situation where during patent reexamination a non-patent reference was presumed enabled by the Board. The applicant was entitled to rebut the presumption of enablement; but, absent such a rebuttal, the non-patent reference was presumed enabled. Part of the Federal Circuit’s reasoning was that the Patent Office does not have the resources to carry out tests or access to experts to prove that a reference is enabling, whenever such an enablement challenge is made. And, that it would be too onerous to do so. SeeAntor Media at 1289. Therefore, it is best to transfer the cost to the Applicant to rebut the presumption.
An article might wish to explore the recognition in Nantkwest, Inc. v. Iancu, 898 F.3d 1177, 1183 (Fed. Cir. 2018) that the USPTO actually did engage expert witnesses for purposes of that case — thus demonstrating that the USPTO does have access to expert witnesses when it chooses to do so. The article might also explore which is more onerous, (1) asking a patent applicant proceeding as a micro entity in the USPTO or in forma pauperis in federal court to spend money overcoming the presumption of enablement or (2) having the USPTO — an agency currently allotted $4.25 billion dollars for operating expenses in 2023 — provide proof of enablement (or maybe . . . . just find a better reference!).
Perhaps the more important issue is whether the presumption should apply to non-US patents, including non-patent prior art, during litigation or IPR’s. What reason is there for such a presumption in litigation or quasi-litigation between two private parties? Why should the patent owner be put to the cost of showing lack of enablement rather than the patent challenger backing up the challenge with proof of enablement? In last year’s APPLE INC. v. COREPHOTONICS, LTD., No. 2020-1438 (Fed. Cir. June 23, 2021) decision, the Federal Circuit extended the presumption of enablement for AIA proceedings, noting that a published Japanese application (the Konno reference) was presumed enabled:
It is well-established that prior art patents and printed publications like Konno, a Japanese patent publication, are presumed enabling. See, e.g., Impax Labs., Inc. v. Aventis Pharm., Inc., 545 F.3d 1312, 1316 (Fed. Cir. 2008); Amgen, 314 F.3d at 1354-55; Antor, 689 F.3d at 1288-89. We have held in the context of both district court litigation and patent prosecution that the burden of proving that a prior art reference is not enabling is on the patentee/applicant, and that it is error to shift that burden to the patent challenger/examiner. For example, in Impax, we explained that “when an accused infringer asserts that a prior art patent anticipates specific patent claims, the infringer enjoys a presumption that the anticipating disclosure also enables the claimed invention.” 545 F.3d at 1316 (citation omitted). There, we relied on our earlier decision in Amgen— where we held that it was error to shift the burden of “proving the prior art reference’s enablement of the claimed invention on the alleged infringer,” id. (citing Amgen, 314 F.3d at 1355-56)—to conclude that “the district court correctly placed the burden of proving non-enablement on the patentee,” id. Likewise, in Antor, we explained that, “during patent prosecution, an examiner is entitled to reject claims as anticipated by a prior art publication or patent without conducting an inquiry into whether or not that prior art reference is enabling.” 689 F.3d at 1289. Once the examiner has made a prima facie case of anticipation, we held that “the burden shifts to the applicant to submit rebuttal evidence of nonenablement.” Id.
The Board, citing Antor and Amgen (among others), acknowledged this in its decision, but reasoned that “none of these cases were in the context of AIA trial proceedings.” Final Decision, 2019 WL 6999883, at *9. We disagree with the Board’s reasoning. We do not see a principled distinction between our cases holding that this presumption and burden apply during patent examination and in district court litigation, and AIA trial proceedings. Thus, regardless of the forum, prior art patents and publications enjoy a presumption of enablement, and the patentee/applicant has the burden to prove nonenablement for such prior art. It was error for the Board to suggest otherwise.
APPLE INC. v. COREPHOTONICS, LTD., No. 2020-1438 (Fed. Cir. June 23, 2021).
I suppose another point that could be discussed in the article is that Congress knows how to give certain material a presumption of validity, which carries with it a presumption of enablement. Namely, claimed portions of US patents are presumed valid under 35 U.S.C. §282. With that presumption of validity comes a presumption of enablement. Given that Congress knew how to give multi-faceted presumptions (e.g., new, non-obvious, and enabled) to some types of references, should the Federal Circuit bestow presumptions on other types of references that Congress omitted?
Finally, the article might want to discuss what are the implications for prior art submission during patent prosecution. Judges of the Federal Circuit, most notably, Judge Lourie, sometimes complain during oral argument about the number of references that applicants submit during prosecution of patent applications. The current rule arguably expands the scope of “prior art” even further to cover non-enabled references that are presumed enabled. (Ironically, Judge Lourie authored the In re Antor Media opinion mentioned above.) For example, should an inventor of an enhanced submarine be required to cite Jules Verne’s “20,000 Leagues Under the Sea” because it is presumed enabled. Captain Nemo would say “No.”
The draft appropriations bill includes resources for the operations of the Federal Circuit in the amount of $36,735,000. This is in addition to the salaries for the judges.
If somebody is looking for an article to write, I think it might be worthwhile to address the impact of 35 USC §121 on claim construction. What particularly should be addressed is: when a specification uses a phrase such as “the present invention,” should 35 USC §121 temper the impact of that language.
Historically, some patent applicants have probably innocently used the phrase “present invention” as a shorthand phrase in their specification. Moreover, the MPEP has historically counseled applicants to format their applications with phrases such as “Background of the Invention” and “Summary of the Invention.” At some point in recent history, the Federal Circuit seized on the “present invention” language in issued patents as a potentially limiting phrase. The Federal Circuit logic seems to be that an application when written can only be for one invention. So, any reference to the “present invention” impacts the claim construction. However, that logic ignores Congress’s express intent to allow there to be more than one invention disclosed in an application. Namely, 35 U.S.C. §121, the divisional statute, states:
§121. Divisional applications If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions. If the other invention is made the subject of a divisional application which complies with the requirements of section 120 it shall be entitled to the benefit of the filing date of the original application. A patent issuing on an application with respect to which a requirement for restriction under this section has been made, or on an application filed as a result of such a requirement, shall not be used as a reference either in the Patent and Trademark Office or in the courts against a divisional application or against the original application or any patent issued on either of them, if the divisional application is filed before the issuance of the patent on the other application. The validity of a patent shall not be questioned for failure of the Director to require the application to be restricted to one invention. (July 19, 1952, ch. 950, 66 Stat. 800 ; Pub. L. 93–596, §1, Jan. 2, 1975, 88 Stat. 1949 ; Pub. L. 106–113, div. B, §1000(a)(9) [title IV, §4732(a)(10)(A)], Nov. 29, 1999, 113 Stat. 1536 , 1501A-582; Pub. L. 107–273, div. C, title III, §13206(b)(1)(B), Nov. 2, 2002, 116 Stat. 1906 ; Pub. L. 112–29, §§4(a)(2), 20(j), Sept. 16, 2011, 125 Stat. 295 , 335.)
Notably, 35 USC 121 recognizes that the Director’s power to restrict is discretionary and that a patent may issue in which the Director did not require the patent to be restricted to one invention. So, I think an interesting article could be written discussing whether the Federal Circuit’s jurisprudence on this topic fails to take into account 35 U.S.C. §121 and divisional practice. It might also be interesting to search a database of US issued patents to see how many divisional patents contain the phrase “the present invention.”
In the Federal Circuit’s recent opinion in CUPP COMPUTING AS v. TREND MICRO INC., No. 2020-2262 (Fed. Cir. Nov. 16, 2022), the court made a statement that caught my eye. Judge Dyk writing for the court and the other members of the panel (Judges Taranto and Stark) wrote “We now make precedential . . . .” More specifically, he wrote:
We now make precedential the straightforward conclusion we drew in an earlier nonprecedential opinion: “[T]he Board is not required to accept a patent owner’s arguments as disclaimer when deciding the merits of those arguments.” VirnetX Inc. v. Mangrove Partners Master Fund, Ltd., 778 F. App’x 897, 910 (Fed. Cir. 2019). A rule permitting a patentee to tailor its claims in an IPR through argument alone would substantially undermine the IPR process. Congress designed inter partes review to “giv[e] the Patent Office significant power to revisit and revise earlier patent grants,” thus “protect[ing] the public’s paramount interest in seeing that patent monopolies are kept within their legitimate scope.” Cuozzo Speed Techs., LLC v. Lee, 579 U.S. 261, 272, 279-80 (2016) (internal quotation marks, citation, ellipses, and alterations omitted). If patentees could shapeshift their claims through argument in an IPR, they would frustrate the Patent Office’s power to “revisit” the claims it granted, and require focus on claims the patentee now wishes it had secured. See also Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, 138 S. Ct. 1365, 1373 (2018) (emphasis altered) (“[T]he decision to grant a patent is a matter involving . . . the grant of a public franchise. Inter partes review is simply a reconsideration of that grant.”).
That struck me as such an unusual choice of words for a court to write; so, I was curious how often the Federal Circuit uses the phrase “we now make precedential.” Interestingly, this is the only time the court has used the phrase. The CCPA never used the phrase — but, now that I think about it, due to the size of their panels, each of their opinions was precedential. And, the Supreme Court has never used the phrase. Odd.
ENIAC was a computer built in 1946. Unlike modern computers, this machine was externally programmed; its circuitry had to be manually rewired each time it was used to perform a new task. See Gemignani, Legal Protection for Computer Software: The View From `79, 7 Rutgers J. Computers, Tech. & L. 269, 270 (1980).
So, do you consider ENIAC to have been a “general purpose computer”?
The first issue was whether a question asked by one judge of an IPR panel with respect to a purportedly undisputed claim construction limitation adequately put the parties on notice that that the limitation was in play for a different and sua sponte claim interpretation by the Board panel. Under the facts of this appeal, the Federal Circuit panel (Moore, Reyna, and Stoll) ruled that notice was not sufficient and that the parties were not given adequate opportunity to respond to the sua sponte claim construction ruling.
The second — and potentially more interesting issue — was whether use of a means plus function claim limitation that was supported by a circuit element in the specification further required that an algorithm for programming the circuit element be included as part of the structure of the MPF limitation. Namely, the claim used the term “means for determining a single power tracking signal . . ..” This claim limitation was supported in the specification by a “power tracking circuit.” Qualcomm contended that the algorithm (disclosed in the spec.) for programming the power tracking circuit must also be included as part of the structure in support of the MPF term. The Federal Circuit rejected that argument. Judge Moore was particularly vocal during the oral argument about the precedent that would set and the implications for thousands and thousands of patents in the electrical arts. You can listen to some of her comments here:
A similar sentiment is reflected in the court’s eventual opinion where the panel states:
Qualcomm asks us to extend the algorithm requirement to circuitry. See Oral Argument at 20:14-40 We decline to do so. The reasoning for the algorithm requirement of WMS Gaming does not apply to functions implemented through circuitry. Unlike a general-purpose computer or microprocessor, circuitry does not “perform very different tasks in very different ways.” Aristocrat, 521 F.3d at 1333. Nor does circuitry require special programming to perform particular functions. Cf. WMS Gaming, 184 F.3d at 1348. Circuitry therefore provides structure that necessarily limits the scope of a claim without the aid of special programming. Our holding is consistent with our prior precedent. See Nevro, 955 F.3d at 35, 42-43(“Nevro argues that the asserted patent specifications’ disclosure of a signal generator as the structure for this limitation should end the inquiry. We agree.”). Also, Qualcomm’s proposed extension would jeopardize a plethora of patents in the electrical arts that rely on circuitry as the corresponding structure for their means-plus-function claim limitations. Accordingly, we see no error with the Board’s construction of the power tracker limitation in claim 28.
QUALCOMM INC. v. Intel Corp., 6 F.4th 1256, 1267 (Fed. Cir. 2021)(emphasis added).
You can listen to the entire oral argument here:
An FPGA walks into a bar. His friend EEPROM asks him why he’s so late. “Oh, I took a circuitous route to get here.”
“Learning is not attained by chance, it must be sought for with ardor and attended to with diligence.”
Abigail Adams (1780)
I used to enjoy attending what I still think of as the Kayton Courses; namely, three day intensive courses on topics of interest to patent practitioners. With the internet, these courses seem to have fallen by the wayside. I hope that some enterprising group of practitioners will pick up the mantle and revive this format of courses. Maybe a group like Strafford could use their platform to expand into this type of deep-dive offering.
I think my September 1st resolution will be to be more proactive in sharing my thoughts about IP laws with my Congresspeople. If you are of the same mindset, I’ve added a link to the front page of this site called “Contact Your Congresspeople.” You should be able to use it to quickly find contact information for your personal Congresspeople, as well as membership lists for pertinent IP committees in Congress.
Don’t be shy about reaching out to your Congresspeople and inviting them to relevant meetings of the IP community. I’m sure they would welcome the opportunity to visit with members of their constituencies.
