Coe v. U.S.

April 23rd, 2017

I was researching an issue in the Chisum treatise the other day and stumbled upon the Coe v. U.S., 84 F.2d 240 (D.C. Cir. 1936) case.  I thought it might be of historical interest to some.  It was a rare use of a writ of mandamus to require the Patent Office to take action — in the Coe case that action was entry of an amendment.


COE, Commissioner of Patents,

No. 6607.United States Court of Appeals for the District of Columbia.

Decided April 27, 1936.241*241 R. F. Whitehead, of Washington, D. C., for appellant.

Charles M. Thomas, of Washington, D. C., and S. E. Darby, Jr., of New York City, for appellee.

Before MARTIN, Chief Justice, and ROBB, VAN ORSDEL, GRONER, and STEPHENS, Associate Justices.

VAN ORSDEL, Associate Justice.

The Commissioner of Patents appeals from an order of the Supreme Court of the District of Columbia granting appellee’s petition for a writ of mandamus directing the Commissioner to enter and consider a certain amendment filed on September 20, 1934 to a pending application for patent of one Lasker, serial No. 681,333, filed December 18, 1923 and assigned to the appellee, Remington Rand, Inc.

It appears that, during the period in which the Lasker application was pending in the Patent Office, eight different official actions were had, in five of which new art was cited by the Primary Examiner. It may be assumed that the delay in the consideration of this case by the Patent Office was due to these numerous actions.

After his application was allowed, applicant copied claims from a patent which had been issued to Lake and Storey on September 9, 1930. The Primary Examiner held that Lasker’s application supported certain of the claims, and accordingly, by direction of the Commissioner, an interference was declared involving the Lake and Storey patent. Lake and Storey moved to dissolve the interference, urging the failure of Lasker’s application to support the interference issues. The Examiner of Interferences granted the motion to dissolve, thereby reversing the decision of the Primary Examiner. Lasker then appealed to the Board of Appeals, which affirmed the decision of the Examiner of Interferences, and dissolved the interference.

This operated to restore the Lasker application to the Primary Examiner, where its prosecution was resumed. Upon further hearing the Primary Examiner rejected all claims involved in the interference, including the claims which had been previously allowed to Lasker. Lasker promptly filed an amendment to his application, traversing the new ground of rejection. The amendment included not only matter taken from prior art patents, which had been used as cross-references in the Lasker application as filed, but also additional claims tending to avoid the new ground of rejection found by the Examiner.

The Examiner refused to enter and consider the amendment, although the prosecution of the application was still pending; that is, the case had the status of a regularly pending application. Thereafter the Commissioner refused to enter the amendment, and it is urged that, since no appeal lies from his refusal, the remedy is by mandamus to compel him to order the Examiner to enter and consider the amendment.

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Helsinn v. Teva — Six months and counting

April 20th, 2017

It has been more than six months since the Federal Circuit heard oral argument in Helsinn v. Teva, which dealt with whether the AIA overruled Metallizing Engineering in regard to secret commercial use.  The oral argument was covered by the Written Description blog:  [Link].  Six months+ is quite a long time for the Federal Circuit to take to write an opinion, even with dissents.  Is it too early to wonder if this secretly went en banc?

Fox Television Stations v. Aereokiller Oral Argument

April 17th, 2017

The Ninth Circuit issued its opinion in Fox Television Stations, Inc. v. AEREOKILLER, LLC, No. 15-56420 (9th Cir. Mar. 21, 2017) last month.  You can watch the oral argument of this copyright appeal below.  Listen carefully and you can hear mention of the Charming Betsy case.  The court’s decision is available [here].

Here is a link to a Note from the Harvard Law Review in regard to the Charming Betsy canon: [Link].

Judge Sleet to take Senior Status

April 16th, 2017

Judge Sleet of the district of Delaware is slated to take senior status on May 1st.

Quote of the Day

April 10th, 2017

Chief Judge Rader’s (retired) opinion for the court in Ultramercial, Inc. v. HULU, LLC, 722 F.3d 1335 (Fed. Cir. 2013) was ultimately GVR’d (granted, vacated, and remanded) by the Supreme Court due to the Alice v. CLS decision.  I think it is interesting, nevertheless, to review what Chief Judge Rader said about the factual nature of a §101 analysis:

First, it will be rare that a patent infringement suit can be dismissed at the pleading stage for lack of patentable subject matter. This is so because every issued patent is presumed to have been issued properly, absent clear and convincing evidence to the contrary. See, e.g., CLS Bank Int’l v. Alice Corp., 717 F.3d 1269, 1304-05, 2013 WL 1920941, *33 (Fed. Cir. May 10, 2013) (Chief Judge Rader, and Judges Linn, Moore, and O’Malley, concluding that “any attack on an issued patent based on a challenge to the eligibility of the subject matter must be proven by clear and convincing evidence,” and Judges Lourie, Dyk, Prost, Reyna, and Wallach, concluding that a statutory presumption of validity applies when § 101 is raised as a basis for invalidity in district court proceedings.). Further, if Rule 12(b)(6) is used to assert an affirmative defense, dismissal is appropriate only if the well-pleaded factual allegations in the complaint, construed in the light most favorable to the plaintiff, suffice to establish the defense. See Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555, 127 S.Ct. 1955, 167 L.Ed.2d 1339*1339 929 (2007)Jones v. Bock, 549 U.S. 199, 215, 127 S.Ct. 910, 166 L.Ed.2d 798 (2007). Thus, the only plausible reading of the patent must be that there is clear and convincing evidence of ineligibility. For those reasons, Rule 12(b)(6) dismissal for lack of eligible subject matter will be the exception, not the rule.

Second, as is shown more fully below, the analysis under § 101, while ultimately a legal determination, is rife with underlying factual issues. For example, while members of this court have used varying formulations for the precise test, there is no doubt the § 101 inquiry requires a search for limitations in the claims that narrow or tie the claims to specific applications of an otherwise abstract concept. CLS Bank, 707 F.3d at 1298-1302, 2013 WL 1920941 at *27-30 (meaningful limitations); Id. at 1282-83, 2013 WL 1920941 at *10 (opinion of Lourie, J.). Further, factual issues may underlie determining whether the patent embraces a scientific principle or abstract idea. Id. (opinion of Lourie, J.) (”The underlying notion is that a scientific principle … reveals a relationship that has always existed.”) (quoting Parker v. Flook, 437 U.S. 584, 593 n. 15, 98 S.Ct. 2522, 57 L.Ed.2d 451 (1978)). If the question is whether “genuine human contribution” is required, and that requires “more than a trivial appendix to the underlying abstract idea,” and were not at the time of filing “routine, well-understood, or conventional,” factual inquiries likely abound. Id. at 1283-85, 2013 WL 1920941 at *11-12. Almost by definition, analyzing whether something was “conventional” or “routine” involves analyzing facts. Id. at 1284-85, 2013 WL 1920941 at *12. Likewise, any inquiry into the scope of preemption — how much of the field is “tied up” by the claim — by definition will involve historic facts: identifying the “field,” the available alternatives, and preemptive impact of the claims in that field. The presence of factual issues coupled with the requirement for clear and convincing evidence normally will render dismissal under Rule 12(b)(6) improper.

Judge Moore and Learned Hand

April 3rd, 2017

Those of you who know me, know that I am a big fan of stand-up desks.  I was in Austin the other day and stopped by the University of Texas Law School’s law library to check out their IP collection.

In addition to this antique stand-up desk (with built-in swiveling ink well!) located near the IP stacks, I noticed that the law library has a rare copy of Blaustein’s Learned Hand on Patent Law.  That reminded me of an oral argument in which Judge Moore mentioned one of her favorite Learned Hand quotes:  [Listen].

By the way, to hear Learned Hand singing folk songs, go to this [link].

Supreme Court Intellectual Property Oral Arguments — 2016-17 Term

April 2nd, 2017

I lose track of how far along each of the Supreme Court’s IP cases are this term.  So, here’s a handy chart:


Oral Argument


Samsung v. Apple

10/11/16   [Link]

12/6/16     [Link]

Star Athletica v. Varsity   Brands

10/31/16   [Link]

3/22/17     [Link]

SCA Hygiene v. First Quality Baby

11/1/16     [Link]

3/21/17     [Link]

Life Technologies v. Promega

12/6/16     [Link]

2/22/17     [Link]

Lee v. Tam

1/18/17     [Link]

Impression Products v. Lexmark

3/21/17     [Link]

TC Heartland v. Kraft

3/27/17     [Link]

Amgen v. Sandoz

4/26/17     []

Oral argument of the day: Thales Visionix, Inc. v. U.S.

March 30th, 2017

The oral argument of the day comes from this month’s Federal Circuit decision in THALES VISIONIX INC. v. US, No. 2015-5150 (Fed. Cir. Mar. 8, 2017) (reversing a holding of patent ineligibility).  This reversal has not gotten as much coverage as other patent eligibility cases, I suspect — probably because it is the result of an appeal of a decision by the Court of Federal Claims.  Appeals of patent cases from the Court of Federal Claims are a bit of rarity.

The Federal Circuit decision is available [here].

The recording of the oral argument is available [here].

Judge William Bryson — Foreign Intelligence Surveillance Court of Review

March 29th, 2017

It is interesting to note that Senior Judge Bryson of the Federal Circuit is the presiding judge of the three-judge “Foreign Intelligence Surveillance Court of Review” which hears appeals from the “Foreign Intelligence Surveillance Court.”

The Foreign Intelligence Surveillance Court was established by Congress in 1978.  The Court entertains applications made by the United States Government for approval of electronic surveillance, physical search, and certain other forms of investigative actions for foreign intelligence purposes.

See (last accessed March 29, 2017).

Given current events, I wonder if we will hear more about the court in the coming months.

New Subject Matter Eligibility Chart

March 29th, 2017

The USPTO has updated its chart of subject matter eligibility decisions.  The new chart from the PTO website is available [here].

The USPTO continues to include Rule 36 judgments in the chart despite cases like Rates Tech., Inc. v. Mediatrix Telecom, Inc., 688 F.3d 742, 750 (Fed.Cir. 2012) and TecSec, Inc. v. International Business Machines Corp., 731 F.3d 1336 (Fed. Cir. 2013).

Rule 36 allows us to “enter a judgment of affirmance without opinion” under certain circumstances. Since there is no opinion, a Rule 36 judgment simply confirms that the trial court entered the correct judgment. It does not endorse or reject any specific part of the trial court’s reasoning. In addition, a judgment entered under Rule 36 has no precedential value and cannot establish “applicable Federal Circuit law.” See, e.g., U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1556 (Fed.Cir.1997)

Rates Tech., Inc. v. Mediatrix Telecom, Inc., 688 F.3d 742, 750 (Fed.Cir. 2012)

Similarly, our Rule 36 judgments only affirm the judgment of the lower tribunal. “[A] Rule 36 judgment simply confirms that the trial court entered the correct judgment. It does not endorse or reject any specific part of the trial court’s reasoning.” Rates Tech., Inc. v. Mediatrix Telecom, Inc., 688 F.3d 742, 750 (Fed.Cir. 2012).

TecSec, Inc. v. International Business Machines Corp., 731 F.3d 1336 (Fed. Cir. 2013).

As one example, the In re Alsabah case presented in the chart was an appeal of both 101 and 103 issues.

Query whether a rejection based on one of the Rule 36 Judgments in the chart could satisfy the requisite agency reasoning required by In re Sang-Su Lee:

Judicial review of a Board decision denying an application for patent is thus founded on the obligation of the agency to make the necessary findings and to provide an administrative record showing the evidence on which the findings are based, accompanied by the agency’s reasoning in reaching its conclusions. See In re Zurko, 258 F.3d 1379, 1386, 59 USPQ2d 1693, 1697 (Fed. Cir.2001) (review is on the administrative record); In re Gartside, 203 F.3d 1305, 1314, 53 USPQ2d 1769, 1774 (Fed.Cir. 2000) (Board decision “must be justified within the four corners of the record”).

In re Sang-Su Lee, 277 F.3d 1338 (Fed. Cir. 2002).