717 Madison Place

The oral argument of the day is from today’s opinion in In re Kirilichen. The Federal Circuit wrote:

We are unable to discern the agency’s basis for reject- ing Appellants’ teaching-away arguments (or whether the issue was addressed at all). The Director seems to suggest that the Board resolved this issue by finding “that the claimed invention, Rothstein, and Lee all employ tapering.” Appellee’s Br. 10; see Board Decision, 2020 WL 5231917, at *4 (reasoning that Appellants’ arguments regarding the “tapering” of Lee’s components were unpersuasive because “Rothstein[’s], Lee[’s], and Appellant[s’] devices all rely on tapering”). We disagree that the Board (or the examiner) sufficiently addressed Appellants’ teaching-away argu- ments. First, the examiner’s findings with respect to Lee were limited to general preassembly by press fitting—the examiner stated that “the only teaching . . . gleaned from the disclosure of Lee is that it is known to be advantageous to press fittingly pre-assemble two components of a sealing insert.” J.A. 526 (emphasis in original). Second, the Board’s decision makes no mention of teaching away, and the Board’s generic statement that each of the three de- vices relies on tapering falls short of “setting out [the Board’s] reasoning in sufficient detail to permit meaningful appellate review” of the teaching-away issue. See Power Integrations, Inc. v. Lee, 797 F.3d 1318, 1327 (Fed. Cir. 2015). And “whether a reference teaches away from the claimed invention” is a “question[] of fact,” Meiresonne v. Google, Inc., 849 F.3d 1379, 1382 (Fed. Cir. 2017), that is not for us to decide in the first instance in this appeal, con- trary to the Director’s suggestion that we do so, see Appel- lee’s Br. 16–18 (arguing for a finding that Lee “does not teach away”).

In re Kirilichen, 2021-1168 (Fed. Cir. July 20, 2021).

Here are a couple of interesting sound bites from the oral argument; Chief Judge Moore’s questions to the Appellant and to the Office, respectively, sum up the ultimate decision that the court rendered.

You can listen to the entire oral argument here:

You can read the court’s opinion here: [Link].

Now, after Arthrex, with the Director being responsible for decisions emanating from the PTAB, will the Solicitor’s Office be able to pick and choose which issues of a PTAB decision to defend at the Federal Circuit and which not to? Stated differently, must the Director now defend decisions of the PTAB lock, stock, and barrel? It would seem so.

From the USPTO web site:

USPTO to expand Law School Clinic Certification Program

Program accepting law school clinic submissions through December 31, 2022June 1, 2021

The United States Patent and Trademark Office (USPTO) is extending the submission deadline for expanding its Law School Clinic Certification Program by admitting additional schools into the program. Founded in 2008, the program currently includes 60 law school clinics and offers patent and trademark applicants access to pro bono services. It also gives law students, under the supervision of a faculty clinic supervisor, experience in practicing intellectual property law before the USPTO. 

The program is administered by the USPTO’s Office of Enrollment and Discipline (OED). Participating law school clinics must maintain the requirements for USPTO certification in order for students to practice before the agency. 

“The USPTO is committed to fostering a strong and vital patent system,” said Drew Hirshfeld, performing the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO. “The development of legal skills through practical experience allows advocates to effectively support and represent their clients’ interests.”

Submissions from interested law school clinical programs will be accepted on a rolling basis through December 31, 2022. Details of the program expansion and application materials are available on the Law School Clinic Certification Program page of the USPTO website.

For additional information and application submission guidelines, please contact Jennifer Harchick, Emily Sprague, Gerard Taylor, Kim Weinreich, or Charlema Grant by telephone at (571) 272‐4097 or lawschoolinformation@uspto.gov.

The JPTOS asked that I post this request for article submissions. Isn’t it about time for you to update your CV with a new published article?

The Journal of the Patent and Trademark Office Society (“JPTOS”), America’s premiere intellectual property law journal for over one hundred years, hereby announces an OPEN CALL FOR SUBMISSIONS by direct email to editor@jptos.org or on Scholastica (go to https://jptos.scholasticahq.com and to set up a Scholastica account go to http://scholasticahq.com). After taking a publishing hiatus due to the pandemic, we are back on track for publishing Volume 102 and onwards! Thus, we are calling all practitioners, judges, law professors, law students, economists, legal professionals, writers and anyone with interest in the fields of intellectual property, law and technology! We are seeking articles involving intellectual property (patents, trademarks, copyrights, trade secrets, or hybrids between all such forms) or law & technology (blockchain, cryptocurrencies, NFTs, artificial intelligence, 3D printing, social media, privacy/surveillance, biotechnology, pharmaceuticals, COVID vaccine patents or patent policy and topics) and all related fields. JPTOS is one of the oldest intellectual property journals in the United States and for over a century, we have been at the very forefront of the intellectual property debate and we will stay there ONLY with your contributions. Again, you may directly email your submissions to editor@jptos.org or contact that email address for any questions about the Journal. In addition, see the above Scholastica website or our official website at http://jptos.org for further details regarding submission guidelines, our staff and Board of Governors, contact information, subscriptions or ordering/accessing past issues. Looking forward to your submissions!

A belated happy birthday to Judge Newman! I believe she turned 94 on June 20th. Feared by glass ceilings everywhere.

I stumbled upon this compendium of open source casebooks that I thought was pretty cool. The list includes open source casebooks on the subjects of: IP, Copyright, Patent, Trademark, Advertising, Music, Licensing, Internet, Artificial Intelligence, Telecommunications, National Security, IP & Administrative, and IP & Antitrust Law. Here’s the link: https://james.grimmelmann.net/files/casebooks .

Judge Evan Wallach of the Federal Circuit assumed senior status today. I always admire the judges who take senior status when it becomes available. They free up slots on the court for new judges while still making themselves available for significant participation on the court as senior judges. It is a selfless act that expands the ranks of the court.

Ronald Reagan once quipped that the nine most terrifying words in the English language are: “I’m from the government and I’m here to help.” I thought it was somewhat humorous that Judge Newman, who was appointed by Reagan, heard a similar sentiment from the Solicitor’s Office when the Solicitor’s Office intervened in the Biogen v. Iancu appeal.

And while we understand that “[t]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation,” we also recognize that we cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.

Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358 (Fed. Cir. 2017).

The oral argument of the day comes from Biogen v. Iancu. This case was decided in December 2020; but, it was argued in December of 2019. It took the Federal Circuit over twelve months to decide the appeal by a Rule 36 judgment. How strange. If a case qualifies for Rule 36, why would the panel take so long to dispatch the appeal? Usually, Rule 36 judgments issue within a few weeks of oral argument, at the longest. This one took over a year from the date of oral argument.

I took a look on PACER and there were no clues as to why the decision took a long time. The panel was comprised of Judge Newman, Judge Moore, and Judge Chen. I have some theories on why it could have taken a long time. One, perhaps the court was pondering taking the case en banc sua sponte. Two, perhaps there was a majority and a dissent and no strong opinion on either side. So, after protracted deliberation, the panel opted for a Rule 36. Three, perhaps Covid got in the way somehow.

There were two issues that might have prompted a sua sponte en banc review. First, Judge Newman has been vocal about the Director interloping into appeals of IPR’s when one of the parties drops out. [Link] Such was the case in this oral argument, where Judge Newman again challenged the presence of the Director at the oral argument.

Second, the PTAB invalidated the claims at issue based on a five reference combination — in the unpredictable art of treating cancer, no less. Judge Moore once again expressed some concern about a rejection that involved so many references.

Perhaps the court was considering this case as a potential vehicle for overruling or putting some gloss on In re Gorman (authored by Judge Pauline Newman). For previous times when Judge Moore and others have expressed concern about combining a smorgasbord of references, see this previous post [Link]. At the end of the day, perhaps this outcome was best. If the court is going to address obviousness rejections based on an excessive number of references, it seems best to tee up that issue after Judge Moore has become Chief Judge. At that point she will have seniority to author the opinion.

At any rate, the oral argument was very well done and merits being the oral argument of the day. You can listen to the entire oral argument here:

You can read the Rule 36 judgment here: [Link].

_____________________________________________________________________________________________

Update 5/13/21:

Query: Would the Federal Circuit be better served by appointing an amicus to defend the arguments of the party that drops out of an appeal of an IPR? It is somewhat confusing as to whether the Director is representing the Director’s position, the PTAB’s position, or the dropped-out party’s position when the Director intervenes in an appeal like this. Moreover, the government has previously argued that it can take a position opposite to what the PTAB decided and pick and choose which parts of the PTAB decision to defend at the CAFC. So, I think it can be confusing to the Federal Circuit judges who probably assume that the Director by default is defending all of the positions taken by the PTAB. Should the Federal Circuit adopt an operating procedure that requires the government to identify which portions of the PTAB decision (or arguments below of the dropped-out party) that the government does not endorse at the time of filing its brief? Seems unlikely to me that the government would feel comfortable endorsing all the positions that a dropped-out party took below.

The Supreme Court has requested that the Solicitor General of the United States file a brief expressing its views as to whether the Court should grant cert. in American Axle v. Neapco. I was curious when one should expect that brief to be filed. Back in Google v. Oracle, the Court requested such a brief on April 29th of 2019 and the SG filed its brief on September 29th of 2019. In American Axle, the Court requested the view of the SG on May 3, 2021. So, it looks like one could expect the SG’s brief in American Axle around the end of September.

The oral argument of the day is from MEDICINOVA, INC. v. GENZYME CORPORATION, No. 2020-1064 (Fed. Cir. Dec. 14, 2020). This was a Rule 36 Judgment. I thought the oral argument was interesting for its discussion of “derivative claim construction.” This not so common expression refers to construing a term not present in the claim itself, but rather, present in the construction of the claim term. One example of this is from the Advanced Fiber Technologies Trust v. J & L FIBER, 674 F.3d 1365 (Fed. Cir. 2012) case:

The disputed term at issue, “perforated,” appears not in the claims but rather in the district court’s construction of a disputed claim term. We note, as an initial matter, that “we do not ordinarily construe words that are not in claims.” Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1334 (Fed.Cir.2009); see also Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 339, 81 S.Ct. 599, 5 L.Ed.2d 592 (1961) (“[T]he claims made in the patent are the sole measure of the grant.”). However, in those cases in which the correct construction of a claim term necessitates a derivative construction of a non-claim term, a court may perform the derivative construction in order to elucidate the claim’s meaning.

Advanced Fiber Technologies Trust v. J & L FIBER, 674 F.3d 1365, 1374 (Fed. Cir. 2012).

You can listen to the oral argument here:

You can read the Rule 36 Judgment here: [Link].

Lately, my pleasure reading has gone in the direction of books about neuroplasticity. It has prompted me to wonder how brain imaging might be used in the practice of patent law. For example, could evidence in the form of fMRI scans on a sampling of PHOSITA’s be introduced as secondary indicia of non-obviousness? Is there an area(s) of the brain that could be identified as becoming active when hindsight is invoked? Could fMRI scans be used on patent examiners/judges to better assess patent eligibility? There are a myriad of other issues that one might use neuroscience and brain analysis to weed out the biases that are so prevalent in patent law. Pretty far-fetched, I know; but, fun to think about.

This 2019 article discusses the role that neuroscience scholarship has recently played in the criminal courts: [link].

Some good books if you want to explore neuroscience further are:

The Brain’s Way of Healing by Norman Doidge.

The Brain That Changes Itself by Norman Doidge.

The Brain by David Eagleman.

Train Your Mind Change Your Brain by Sharon Begley.

Incognito — The Secret Lives of the Brain by David Eagleman.

Soft-Wired by Michael Merzenich.

Some interesting brain health programs are:

BrainHQ at www.brainhq.com

Neuroflux and its free five day brain bootcamp: https://www.neuroflux.io

I was trying to figure out if the phrasing of the questions during the recent Supreme Court oral argument of Minerva v. Hologic signaled any outcome in the US v. Arthrex case. For example, would the justices refer to the role of the PTAB judges in eliminating bad patents? Would there be references to IPR’s or post-grant review? The transcript shows that there were not that many references to the PTAB. And, when there were, it was by the advocates — not by the justices. Justice Gorsuch, however, did reference IPR’s. For example, he stated: “And now we have the Patent Office itself refusing to apply patent estoppel in its own proceedings, for — in IPR proceedings. So the only place left that this doctrine seems to apply is in court.” Later he stated: “Unless they get challenged in the Patent Office in the IPR, which they could be. And then —.” At the end of the day, I don’t think the oral argument in Minerva suggests how the Court is deciding Arthrex one way or the other.

I did think one of Chief Justice Robert’s questions was intriguing:

CHIEF JUSTICE ROBERTS: Thank you, Mr. Hochman. I want to focus a little bit on your — your policy argument that getting rid of assignor estoppel would help, you know, get rid — rid of bad patents in encouraging inventors to — to challenge particular claims. But I thought strong patents was the way we encourage invention and that assignor estoppel helped ensure the strength and stability of — of those patents. How do you sort out those competing policy arguments?

The Supreme Court is scheduled to hear oral argument in Minerva Surgical, Inc. v. Hologic, Inc. on Wednesday April 21st at 9AM Mountain time. The case addresses assignor estoppel — an issue the Supreme Court clearly deems more important at this time than patent eligibility. You can review the briefs on the SCOTUSBLOG at this [LINK].

You should be able to audio stream below once the C-SPAN presentation goes live: