Archive for November, 2016

Too many references?

Thursday, November 24th, 2016

The PTO might be setting itself up for an overruling of In re Gorman, 933 F.2d 982, 18 U.S.P.Q.2d 1885 (Fed. Cir. 1991).  On at least three occasions in recent months, Federal Circuit judges have commented on the number of references that the PTO is relying upon to reject claims.

In the most recent comment, Judge O’Malley commented about an Inter Partes reexamination in which combinations of four, five, six, and even seven references were relied upon by the PTO to reject claims:  [Listen].

In two previous appeals, Judge Moore had more pointed comments.

In the oral argument of In re Neill, she had this exchange with the PTO’s Associate Solicitor:

Judge Moore: How often do you see four reference obviousness rejections? Because I’ll be honest, I’ve never seen one. That’s a lot of references you’ve got to piece together to get to obviousness.

Associate Solicitor for the USPTO:    It’s a good number of references; but, in this case the Examiner found the motivation to ….

Judge Moore:  The question I asked is actually quite personal.  How often have you seen a four reference obviousness rejection; because, I never have.  Not out of the PTO. Never.  I’ve seen people try to argue it in litigation, sure. But, I’ve never seen the PTO go to four separate references and cherry pick items and then combine them together.

Associate Solicitor for the USPTO:    Well, I don’t know if I’ve seen a four reference one; but, I don’t believe that the Board….

Judge Moore:  Or anything greater than four, let’s be clear so that this deposition transcript reads right, four or greater. (Laughter) That’s a lot of references!

Associate Solicitor for the USPTO:    It is; but, the Examiner here . . . All of those references come from the same field of art.  It’s all the transmission and recording of video programming data….

Judge Moore:  Yeah, but the whole reason that Cablevision came up with this invention was to get around Sony.  Like the whole reason they came up with this is to get around the copyright problems with DVR’s in homes and try to reduce the amount of storage you need in your home.  That’s so different than pulling together these pieces … ‘well, this one mentions in the background cost savings;’…  ‘and this one mentions in the background efficient bandwidth;’ … ‘and this one mentions’. . . . And then you’re just like cherry picking random elements from these references and smushing them together to come up with the invention. And it’s . . .  I don’t know, I mean you’re awfully lucky this is a very deferential standard of review, that’s for sure.

[Listen]

And, in one of the recent Data Treasury appeals, Judge Moore had these comments: [Comment to Patent Owner] and [Comment to PTO].

I would not be surprised if Judges Taranto, Reyna, Newman (even though she authored In re Gorman), and Hughes are in the same camp.

Update 11/25/16:

I forgot about a similar comment that Judge Rader made when he was on the bench.  Judge Rader was also part of the panel in In re Gorman.  His comment from the oral argument of In re Medicis Pharmaceutical Corp., 2009-1291, (Fed. Cir. December 14, 2009) is available here: [Listen].

Update 12/1/16:

Judge Hughes made a comment recently in the oral argument of ENDO PHARMACEUTICALS INC. v. ACTAVIS LABORATORIES UT, INC., No. 2016-1146 (Fed. Cir. Oct. 14, 2016). I think Judge Hughes might have been under a misimpression at the time that the Appellant was proposing a seven reference combination; nevertheless, his remark is interesting: [Listen].  This is from an appeal of a district court decision, rather than an appeal from the USPTO.

Update 7/12/17:

Judge Reyna made comments in the oral argument of INTELLECTUAL VENTURES II LLC v. ERICSSON INC., No. 2016-1803 (Fed. Cir. Apr. 18, 2017) about the number of references used by the PTAB and expressed concern about hindsight: [Listen] and [Listen].  The court appeared to avoid having to deal with a six-reference combination by affirming a four-reference combination.  In footnote 2 of the decision, Judge Lourie writing for the court stated:

The Board also instituted review of claims 1 and 2 based on a combination of six references, and later determined that the six-reference combination also rendered claims 1 and 2 unpatentable as obvious. Final Decision, 2016 WL 380219, at *11-12. Because we affirm the Board’s conclusion based on the combination of Li, Yamaura, Zhaung, and Beta, we need not, and do not, reach the second combination.



Judge Barry of the Third Circuit

Wednesday, November 23rd, 2016

You might recall that Judge Barry of the Third Circuit is the sister of Donald Trump. If you were curious what Judge Barry sounds like during oral argument, you can listen to her questioning in the oral argument of MAIDEN CREEK ASSOCIATES, LP v. UNITED STATES DEPARTMENT OF TRANSPORTATION, No. 15-3224 (3d Cir. May 19, 2016) at this [link].  Her opinion for the Third Circuit is available [here].

An article from the Seattle Times about Judge Barry is available [here].  I thought it was interesting that she was appointed to a district court judgeship by President Reagan and appointed to the Third Circuit by President Clinton.

Federal Circuit Increases Number of Days Per Month for Oral Argument

Thursday, November 17th, 2016

The Federal Circuit will increase the number of days that it sits for oral arguments in upcoming months.  The announcement from the Federal Circuit web site is below.  While I suspect a big reason for the increase is due to the AIA, one has to believe that the fiasco commonly known as the Alice/Mayo test has a lot to do with the number of appeals going up to the court.

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FEDERAL CIRCUIT EXTENDS COURT WEEK IN FEBRUARY, MARCH, APRIL, AND MAY 2017

The Court of Appeals for the Federal Circuit has added an extra day of oral arguments in February, March, April, and May 2017 (the Monday after court week). Please click here for the updated court sessions calendar.

November 2, 2016 USPTO Subject Matter Eligibility Update

Wednesday, November 2nd, 2016

The USPTO issued a new memorandum today on subject matter eligibility.  The memo is available [here].

The table of Federal Circuit decisions was also updated.  The table is available [here].