Where’s the beef!

January 19th, 2018

The Patently-O blog recently reported on the new petition for writ of certiorari in R&L Carriers, Inc. v. Intermec Technologies Corp. [Cert. petition]. The question presented asks:

Do Fed. R. Civ. P. 56(c), Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986) and Celotex Corp. v. Catrett, 477 U.S. 317 (1986) prohibit a court from entering a summary judgment nding that an invention is ineligible for patent protection when the record contains uncontroverted, relevant evidence establishing that there is at least a genuine issue of material fact as to whether the claim is “directed to” an abstract idea?

Stated differently, where’s the factual inquiry?

I couldn’t help but be reminded of the classic Wendy’s commercial:



While the Federal Circuit has recently been fond of saying that §101 is a question of law, the court in the past has repeatedly said that factual issues can underlie the §101 analysis:

Whether a claim is directed to statutory subject matter is a question of law. Although determination of this question may require findings of underlying facts specific to the particular subject matter and its mode of claiming . . . .

Arrhythmia Research Technology v. Corazonix Corp., 958 F.2d 1053 (Fed. Cir. 1992).

It is well-established that “whether the asserted claims … are invalid for failure to claim statutory subject matter under 35 U.S.C. § 101, is a question of law which we review without deference.” AT & T Corp. v. Excel Commc’ns, Inc.,172 F.3d 1352, 1355 (Fed.Cir.1999). As a question of law, lack of statutory subject matter is a “ground [for affirmance] within the power of the appellate court to formulate.” Chenery, 318 U.S. at 88, 63 S.Ct. 454. While there may be cases in which the legal question as to patentable subject matter may turn on subsidiary factual issues, Comiskey has not identified any relevant fact issues that must be resolved in order to address the patentability of the subject matter of Comiskey’s application. Moreover, since we would review a Board decision on the issue of patentability without deference, see AT & T, 172 F.3d at 1355, the legal issue concerning patentability is not “a determination of policy or judgment which the agency alone is authorized to make.” Chenery, 318 U.S. at 88, 63 S.Ct. 454.

In re Comiskey, 554 F.3d 967 (Fed. Cir. 2009)(Judge Dyk writing for the court).

Moreover, in McRo v. Bandai, the Federal Circuit pointed to a lack of evidence in an abstract idea challenge:

2. Claims Directed To

Claim 1 of the ’576 patent is focused on a specific asserted improvement in computer animation, i.e., the automatic use of rules of a particular type. We disagree with Defendants’ arguments that the claims simply use a computer as a tool to automate conventional activity. While the rules are embodied in computer software that is processed by general-purpose computers, Defendants provided no evidence that the process previously used by animators is the same as the process required by the claims.

McRO v. Bandai, 837 F.3d 1299, 1314 (Fed. Cir. 2016)(emphasis added).


In the administrative context, the PTO’s solicitor’s office noted in its briefing of Apple v. Ameranth:

The Board’s § 101 analysis is reviewed for legal error, while its underlying factual findings are reviewed for substantial evidence. See Versata Dev. Group, Inc. v. SAP America, Inc. (“Versata II”), 793 F.3d 1306, 1336 (2015).

USPTO Brief in Apple et al. v. Ameranth at page 13 (Associate Solicitor Joe Matal signing for the Office).


“Finally, with respect to the claims that the Board confirmed, the petitioners failed to meet their burden of showing that these claims recite ineligible subject matter. Although the petitioners showed that the claims are directed to an abstract idea, they failed to present any evidence or analysis that the claims’ recited technologies are routine and conventional.”

USPTO Brief in Apple et al. v. Ameranth at page 20 (Associate Solicitor Joe Matal signing for the Office).


In Versata II, the Federal Circuit stated:

The section 101 analysis applied by the PTAB was not legally erroneous under Mayo and Alice. And its underlying fact findings and credibility determinations are supported by substantial evidence in the record. See Microsoft Corp. v. Proxyconn, Inc., Nos. 14-1542, -1543, 789 F.3d 1292, 1297, 2015 WL 3747257, at *2 (Fed.Cir. June 16, 2015)(noting that as a general matter, we review the PTAB’s findings of fact for substantial supporting evidence in the record).

Versata Dev. Group, Inc. v. SAP America, Inc. (“Versata II”), 793 F.3d 1306, 1336 (2015).

Judge Moore Reflects on In re Comiskey

January 13th, 2018

The infamous In re Comiskey decision came up recently in the oral argument of TAKEDA PHARMACEUTICAL COMPANY LIMITED v. ARRAY BIOPHARMA INC., No. 2017-1079 (Fed. Cir. Dec. 26, 2017).

Judge Moore had some frank comments about the In re Comiskey opinion.  She referred to In re Comiskey as an “administrative law nightmare” and “horrifically wrongly decided.”

You can listen to Judge Moore’s comments here:

You can read the Takeda v. Array opinion here: [Link].

You can read the In re Comiskey en banc order here, which includes Judge Moore’s dissent: [Link].

You can read the In re Comiskey reissued opinion here: [Link].

You can listen to then Assistant Solicitor Chen respond to questioning from Judge Dyk in the oral argument of In re Comiskey here:


Administrative Agencies and Constitutional Issues

January 12th, 2018

After posting the previous post about the SEC Supreme Court matter, I got sidetracked into looking at some SEC cases that dealt with the constitutional issue of whether ALJ’s are appointed under the Appointments Clause of the Constitution.  In some previous SEC matters, plaintiffs sought  TRO’s or preliminary injunctions in district court in order to have a district court decide the constitutional issue, rather than the SEC.  See, e.g., Duka v. SEC, 2015 WL 4940057 (S.D.N.Y. Aug. 3, 2015); Hill v. SEC, 2015 WL 4307088 (N.D. Ga. June 8, 2015)

That made me wonder about the current sovereign immunity cases at the PTAB and whether any of the affected parties in those proceedings would opt for pursuing a TRO or preliminary injunction in order to have a district court, rather than the PTO, decide the constitutional* issue of sovereign immunity protection.  Apparently, there is some Supreme Court authority for the proposition that administrative agencies are not well-suited to decide constitutional issues:

3. Plaintiff’s Constitutional Claims Are Outside the Agency’s Expertise.

The SEC claims that Plaintiff’s challenges “fall within the Commission’s expertise,” and the “SEC is in the best position to interpret its own policies and regulations in the first instance.” Dkt. No. [12] at 13. The Court finds that Plaintiff’s Article I, Seventh Amendment, and Article II claims are outside the agency’s expertise.[6]

1310*1310 Plaintiff’s constitutional claims are governed by Supreme Court jurisprudence, and “the statutory questions involved do not require technical considerations of agency policy.” Free Enterprise, 561 U.S. at 491, 130 S.Ct. 3138(alteration and internal quotations omitted) (quoting Johnson v. Robison, 415 U.S. 361, 373, 94 S.Ct. 1160, 39 L.Ed.2d 389 (1974)); see also Thunder Basin, 510 U.S. at 215, 114 S.Ct. 771 (“[A]djudication of the constitutionality of congressional enactments has generally been thought beyond the jurisdiction of administrative agencies.”) (quoting Johnson, 415 U.S. at 368, 94 S.Ct. 1160). These claims are not part and parcel of an ordinary securities fraud case, and there is no evidence that (1) Plaintiff’s constitutional claims are the type the SEC “routinely considers,” or (2) the agency’s expertise can be “brought to bear” on Plaintiff’s claims as they were in Elgin. Elgin, 132 S.Ct. at 2140.

The Court finds that as to this factor, Plaintiff’s constitutional claims are outside the SEC’s expertise, and that this Court has subject matter jurisdiction.

Hill v. SEC, 114 F. Supp. 3d 1297, 1309-10 (N.D. Ga. 2015).

Also, in Public Utilities Comm’n v. United States, 355 U. S. 534, 539 (1958) the Supreme Court said:

But where the only question is whether it is constitutional to fasten the administrative procedure onto the litigant, the administrative agency may be defied and judicial relief sought as the only effective way of protecting the asserted constitutional right.

* Categorizing sovereign immunity as a constitutional issue appears to be strongest in the state-owned patent IPR’s, see, e.g., Pennsylvania v. Union Gas Co., 491 U.S. 1, 7  (1989), as opposed to the tribe-owned patent IPR’s where tribal sovereign immunity might be considered a common law doctrine rather than a constitutional issue.

ALJ’s — Officers of the United States or Employees?

January 11th, 2018

The Supreme Court in its conference tomorrow will review the petition for writ of certiorari in Lucia v. SEC.  The question presented is whether administrative law judges of the SEC are considered to be  employees or officers of the United States under the Appointments Clause.

I believe the USPTO encountered a similar issue a few years ago.

You can read the petition here: [Link].

Update 1/12/2018:

The Supreme Court granted the petition for certiorari in this case today.

Article Suggestion: Equitable Power of the Federal Circuit to Supplement the Record

January 10th, 2018

I sometimes wonder when listening to oral arguments whether judges are straying outside the record.  If you are looking for a topic to write about, a helpful article might address the authority or lack of authority for the Federal Circuit to rely on extra-record evidence.  The Sixth Circuit case of Inland Bulk Transfer Co. v. Cummins Engine Co., 332 F. 3d 1007 (6th Cir. 2003) suggests that there is a split among the circuits on whether circuit courts of appeal possess equitable power to permit supplementation of the record.  In my quick search, I did not find any support either way for whether the Federal Circuit has weighed in on this issue.   A sub-topic of the article might be whether such extra-record evidence is permitted at all for review of agency determinations—e.g., TTAB proceedings—as opposed to district court cases.

Brott v. US

December 30th, 2017

There is an interesting new petition for writ of certiorari pending before the Supreme Court of the United States.  The question presented is:

Can the federal government take private property and deny the owner the ability to vindicate his constitutional right to be justly compensated in an Article III Court with trial by jury?

Sound familiar?

The case is Brott v. United States.  You can read the petition for writ of certiorari [here].  You can review the amicus briefs [here].  A related case has been stayed at the Federal Circuit.



Quote of the day

December 30th, 2017

“A patent is property carried to the highest degree of abstraction — a right in rem to exclude, without a physical object or content.”

Oliver Wendell Holmes, Jr. in his letter to Frederick Pollock dated June 26, 1894.

A blast from the past

December 28th, 2017

I found myself feeling a bit nostalgic for the articulate and insightful questioning during oral arguments of retired Chief Judges Michel and Rader.  If you are like me, and appreciated their knowledge of patent law, I thought you might enjoy listening to an oral argument recording from the past that features them both, along with Judge Linn — a formidable trio.

Here is the oral argument from 2007 in Ortho-McNeil v. Mylan Labs:



Trademarks for Aroma Marketing

December 20th, 2017

I happened to see a report on TV the other day about aroma marketing.  For example, Westin Hotels uses aroma marketing by circulating a White Tea aroma at the entrances to their hotels. [Link].  It would be interesting to see an article that updates how many trademark/service mark applications have been allowed for aromas/scents.  Here’s a link for more on aroma marketing: [Link].

Who let the dogs out?

December 17th, 2017

While takings of patent rights is an unusual cause of action faced by the Federal Circuit, the court recently encountered an even more unusual takings case — one related to sleep deprivation caused by barking dogs. Barth v. U.S.  Of course, this case “begs” the question:  “Who let the dogs out?”