The USPTO and access to experts

March 14th, 2018

I thought it was interesting that during the recent en banc oral argument of NantKwest v. Iancu that the PTO acknowledged that it has access to experts for purposes of a §145 action in US district court.  That raises the question of whether an examiner at the USPTO similarly has access to experts for purposes of determining whether a prior art reference that the examiner is relying upon is enabling.

In In re Antor Media Corp., 689 F.3d 1282 (Fed. Cir. 2012) the Federal Circuit said that the burden is shifted to the Applicant to show that a reference is not enabling because an examiner does not have access to experts (or laboratories):

In discussing the theory of the rejection, the prior art basis for the rejection, and where each limitation of the rejected claims is shown in the prior art reference, an examiner has met his initial burden. Id. at 1363 (“[A]ll that is required of the office to meet its prima facie burden of production is to set forth the statutory basis of the rejection and the reference or references relied upon in a sufficiently articulate and informative manner as to meet the notice requirement of § 132.”). Indeed, as indicated with regard to unclaimed patent prior art, an examiner, who has no access to experts or laboratories, is not in a position to test each piece of prior art for enablement in citing it, and requiring him to do so would be onerous, if not impossible. An examiner, therefore, is not required to anticipate every possible response to a rejection, including showing that a cited reference is enabling.

Consistent with the statutory framework and our precedent, we therefore hold 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. As long as an examiner makes a proper prima facie case of anticipation by giving adequate notice under § 132, the burden shifts to the applicant to submit rebuttal evidence of nonenablement.


In re Antor Media Corp., 689 F.3d 1282, 1289 (Fed. Cir. 2012)(Judge Lourie writing for the court).

En Banc Oral Argument: NantKwest v. Iancu

March 8th, 2018

The Federal Circuit sat en banc today and heard the oral argument in NantKwest v. Iancu.  The case concerns the issue of whether the USPTO can chill efforts by an applicant to seek review by a district court of a USPTO rejection, by requiring the applicant to pay the USPTO’s attorneys’ fees for the judicial review, regardless of whether the applicant prevails at the district court.

You can listen to the oral argument here:

Oral Argument of the Day: In re Nordt Development Co., LLC

March 7th, 2018

The oral argument of the day is from IN RE NORDT DEVELOPMENT CO., LLC, No. 2017-1445 (Fed. Cir. Feb. 8, 2018).

The argument focuses on whether the term “injection molded” should have been treated as a structural limitation by the USPTO during prosecution.

In part, the Federal Circuit opinion states:

Moreover, as we have explained, “words of limitation that can connote with equal force a structural characteristic of the product or a process of manufacture are commonly and by default interpreted in their structural sense, unless the patentee has demonstrated otherwise.” 3M Innovative Props. Co. v. Avery Dennison Corp.,350 F.3d 1365, 1371-72 (Fed. Cir. 2003). Indeed, since Garnero, we have in numerous instances held such limitations to convey structure even when they also describe a process of manufacture. See, e.g., Hazani v. U.S. Int’l Trade Comm’n,126 F.3d 1473, 1479 (Fed. Cir. 1997) (concluding that “chemically engraved” was not a process term); Vanguard Prods. Corp. v. Parker Hannifin Corp., 234 F.3d 1370, 1372 (Fed. Cir. 2000) (holding that the claim term “integral” describes a structural requirement, not the particular manufacturing process discussed in the specification); 3M Innovative Props. Co., 350 F.3d at 1371 (finding “superimposed” to describe a structural relationship and not a process); SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1322 (Fed. Cir. 2006) (Newman, J., dissenting)(listing “a molded plastic” as an example of a process limitation that connotes structure). Here, not only does the specification itself convey a structural meaning to “injection molded,” Nordt has repeatedly represented that it does.

The court’s opinion is available [here].

The oral argument is available here:


Portrait of Judge Evan Wallach

March 2nd, 2018

The Court of International Trade commissioned a portrait of Judge Wallach a few years ago.  Judge Wallach served on the Court of International Trade for sixteen years before being appointed to the Federal Circuit.

From the portrait, it appears that Judge Wallach is quite a dog lover.*  You can see the portrait [here].


*I’m not entirely certain what breed of dog the dogs in the portrait are.  My best guess is English Springer Spaniel.  The American Kennel Club describes the personality of the English Springer Spaniel as “Friendly, playful, obedient at home; hardworking and steady in the field.”  And, the AKC describes the barking level as “Barks when necessary.”


Extra-record evidence and the Supreme Court

February 20th, 2018

A couple of the Justices got a little bit exercised during the oral argument of City of Hays, Kansas v. Vogt, at the U.S. Supreme Court today.  Chief Justice Roberts and Justice Breyer had the following exchange in regard to Justice Breyer’s inquiry about extra-record evidence:


JUSTICE BREYER: And for that reason I’ve looked up whether you objected, because I do not see how the magistrate running the preliminary hearing can know what to do unless somebody tells him that these statements were taken in violation of the Fifth Amendment.

One, I don’t see where you ever did tell the magistrate that.

Two, looking at the transcript of the preliminary hearing, I couldn’t find any instance where any of the compelled statements were introduced into the preliminary hearing.

So what I would like you to do is to tell me what pages to look at in the preliminary transcript, which I have here, which will show that you did object or at least that some of the compelled statements were used?

MS. CORKRAN: So none of this is in the record and the reason it’s not -¬

JUSTICE BREYER: It may not be in the record –

MS. CORKRAN: Yeah. But I -¬

CHIEF JUSTICE ROBERTS: That’s an important point, isn’t it?


JUSTICE BREYER: Of course it’s an important point.


MS. CORKRAN: But the -¬

CHIEF JUSTICE ROBERTS: Well, before we start having an extended exchange about material and something that’s not in the record, I — well, I guess I would just like to point out that it’s not in the record. There’s a reason we confine things to what’s in the record, including how do we know what this is if it’s not in the record.

MS. CORKRAN: But the —

CHIEF JUSTICE ROBERTS:  How do we know that it’s been adequately — had a chance for people to object to it and all that?  It’s — it’s not just a passing comment that it’s not in the record.

JUSTICE BREYER: Nor is actually mine a passing comment because Article III of the Constitution says we are to take real cases and controversies. And to decide a major matter where, in fact, going from what is in the record to an earlier stage of this and discovering if it’s true, that there was no instance about which you are complaining, in my mind raises the question as to whether this is, in fact, an appropriate case or controversy for the Court to take.

CHIEF JUSTICE ROBERTS: And we’re supposed to decide whether the cases are controversies according to law. And as far as I’m concerned coming in and saying I want to know about this thing that’s not in the record is no different from somebody else coming off the street and saying: Hey, wait a minute, I know what happened in this case.

So, go ahead and answer it.


CHIEF JUSTICE ROBERTS: It’s a question that you’ve been presented with. Go ahead and answer it.

JUSTICE BREYER: You don’t have to answer it.


CHIEF JUSTICE ROBERTS: No, no, feel free. I’m just saying I will discount the answers because it’s not something that’s in the record.


You can listen to the audio here:


See this earlier post about whether the Federal Circuit has equitable power to consult extra-record evidence: [Link]. 

Query:  Should a Brandeis Brief be considered extra-record evidence?

Query:  Did the Supreme Court rely on extra-record evidence in its assertion of a purported abstract idea in Alice v. CLS?

On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk. Like the risk hedging in Bilski, the concept of intermediated settlement is “`a fundamental economic practice long prevalent in our system of commerce.'” Ibid.; see, e.g.,Emery, Speculation on the Stock and Produce Exchanges of the United States, in 7 Studies in History, Economics and Public Law 283, 346-356 (1896) (discussing the use of a “clearing-house” as an intermediary to reduce settlement risk). The use of a third-party intermediary (or “clearing house”) is also a building block of the modern economy. See, e.g., Yadav, The Problematic Case of Clearinghouses in Complex Markets, 101 Geo. L.J. 387, 406-412 (2013); J. Hull, Risk Management and Financial Institutions 103-104 (3d ed. 2012). Thus, intermediated settlement, like hedging, is an “abstract idea” beyond the scope of § 101.

Alice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S. Ct. 2347, 2356 (2014).

Listing of agencies with the most Administrative Law Judges

February 19th, 2018

The US government’s office of personnel management keeps a list of how many administrative law judges are employed by each administrative agency.  The OPM does not include the USPTO’s administrative patent judges on the list.

The top five agencies and their corresponding number of ALJ’s are:

Social Security Administration:  1655 ALJ’s

Department of Health and Human Services/Office of Medicare Hearings and Appeals: 101 ALJ’s

Department of Labor: 41 ALJ’s

National Labor Relations Board:  34 ALJ’s

Federal Mine Safety and Health Review Commission:  15 ALJ’s.


Comments are still open

February 17th, 2018

Just a reminder that the comment period for the USPTO’s subject matter eligibility guidance is still open.  If you want to submit comments on how you think the subject matter eligibility guidance should be revised — particularly in response to the recent Berkheimer v. HP precedential opinion — you can still do so.  The USPTO explains the process on its web site, part of which is reproduced below:

How to comment

We are interested in receiving public feedback on this guidance.  The comment period is open-ended, and comments will be accepted on an ongoing basis.

Anyone may submit written comments to sends e-mail). Email comments submitted in plain text are preferred, but also may be submitted in ADOBE® portable document format or MICROSOFT WORD® format. Because comments will be available to the public, information that is not desired to be made public, such as an address or a phone number, should not be included in the comments.

Comments are available for public viewing here:



Utah IP Summit

February 15th, 2018

The Utah IP Summit is next Friday.

More info available [here].

Quotes for the day

February 13th, 2018

Software can make non-abstract improvements to computer technology just as hardware improvements can, and sometimes the improvements can be accomplished through either route. We thus see no reason to conclude that all claims directed to improvements in computer-related technology, including those directed to software, are abstract and necessarily analyzed at the second step of Alice, nor do we believe that Alice so directs.

ENFISH, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)(Judge Chen writing for the court).


Our cases confirm that software-based innovations can make “non-abstract improvements to computer technology” and be deemed patent-eligible subject matter at step 1.

FINJAN, INC. v. BLUE COAT SYSTEMS, INC., No. 2016-2520 (Fed. Cir. Jan. 10, 2018)(slip opinion at page 7)(Judge Dyk writing for the court).

Transforming a patent eligible claim into a patent ineligible claim — by narrowing the claim

February 10th, 2018

Somebody commented on the Patently-O blog the other day that a claim that is patent eligible under §101 can become patent ineligible simply by narrowing the claim to recite a specific function that is a purported abstract idea.  Judge Linn made a similar comment back in 2016 in the oral argument of IPLearn-Focus v. Microsoft. You can listen to that sound bite here:


You can view the previous post about the IPLearn-Focus v. Microsoft case [here].