Happy Birthday to Patently-O! I think it turned eleven today. That was a quick eleven years.
Back in 2014, Judge Plager made a point of celebrating an anniversary for Judge Newman. The date marked her 30th year on the bench: [Listen].
Judge Newman speaking at NYU in February 2013.
It is taking the Federal Circuit panel of Judges Prost, Moore, and Linn quite a while to decide Akamai v. Limelight. The panel heard oral argument way back on September 11, 2014.
It looks like the USPTO has uploaded most of the public comments on the 2014 Interim Guidance on Patent Eligibility. You can view those comments at the following link: [Link].
I submitted my own comments. They are shown below in case you are interested. You’ll see they reflect some thoughts from earlier posts:
March 16, 2015
I am writing to suggest an addition to the 2014 Interim Guidance on Patent Subject Matter Eligibility. The views expressed below are my personal opinions and not necessarily those of any current, past, or future clients or colleagues. I am not submitting these views on behalf of anyone other than myself.
The Assertion of an Abstract Idea Should be Supported by Concrete Evidence
The guidance currently does not instruct the examining corps that the assertion of an abstract idea must be supported by concrete evidence. This should be corrected. The Federal Circuit has noted that patent subject matter eligibility is a question of law informed by underlying facts. Moreover, in order for the Federal Circuit to review a determination of patent ineligibility, there must be substantial evidence supporting the administrative agency’s determination.
First, the Federal Circuit noted as early as 1992 that:
“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).
This standard is similar to other standards of patent examination. For example, with respect to utility under 35 U.S.C. §101, the MPEP states in section 2107:
IV. INITIAL BURDEN IS ON THE OFFICE TO ESTABLISH A PRIMA FACIE CASE AND PROVIDE EVIDENTIARY SUPPORT THEREOF
To properly reject a claimed invention under 35 U.S.C. 101, the Office must (A) make a prima facie showing that the claimed invention lacks utility, and (B) provide a sufficient evidentiary basis for factual assumptions relied upon in establishing the prima facie showing. In re Gaubert, 524 F.2d 1222, 1224, 187 USPQ 664, 666 (CCPA 1975) “Accordingly, the PTO must do more than merely question operability - it must set forth factual reasons which would lead one skilled in the art to question the objective truth of the statement of operability.” If the Office cannot develop a proper prima facie case and provide evidentiary support for a rejection under 35 U.S.C. 101, a rejection on this ground should not be imposed. See, e.g., In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992)
Similarly, with respect to obviousness under 35 U.S.C. §103 — which is also a question of law supported by underlying questions of fact — the MPEP states:
2142 Legal Concept of Prima Facie Obviousness [R-11.2013]
The legal concept of prima facie obviousness is a procedural tool of examination which applies broadly to all arts. It allocates who has the burden of going forward with production of evidence in each step of the examination process. See In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Saunders, 444 F.2d 599, 170 USPQ 213 (CCPA 1971); In re Tiffin, 443 F.2d 394, 170 USPQ 88 (CCPA 1971), amended, 448 F.2d 791, 171 USPQ 294 (CCPA 1971); In re Warner, 379 F.2d 1011, 154 USPQ 173 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968). The examiner bears the initial burden of factually supporting any prima facie conclusion of obviousness. If the examiner does not produce a prima facie case, the applicant is under no obligation to submit secondary evidence to show nonobviousness.
And, with respect to ornamentality, the MPEP section 1504.01(c) (II) states:
II. ESTABLISHING A PRIMA FACIE BASIS FOR REJECTIONS UNDER 35 U.S.C. 171
To properly reject a claimed design under 35 U.S.C. 171 on the basis of a lack of ornamentality, an examiner must make a prima facie showing that the claimed design lacks ornamentality and provide a sufficient evidentiary basis for factual assumptions relied upon in such showing. The court in In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992), stated that “the examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.”
These portions of the MPEP emphasize that factual issues should be supported by evidence. Thus, the assertion that a claim includes an abstract idea should similarly be supported by supplying evidence of the abstract idea.
Second, for a USPTO decision to withstand appellate review, there must be substantial evidence in the record. The Federal Circuit observed this with respect to reviewing an obviousness determination in In re Zurko, 258 F.3d 1379, 1385 (Fed. Cir. 2001):
We cannot accept these findings by the Board. This assessment of basic knowledge and common sense was not based on any evidence in the record and, therefore, lacks substantial evidence support. As an administrative tribunal, the Board clearly has expertise in the subject matter over which it exercises jurisdiction. This expertise may provide sufficient support for conclusions as to peripheral issues. With respect to core factual findings in a determination of patentability, however, the Board cannot simply reach conclusions based on its own understanding or experience — or on its assessment of what would be basic knowledge or common sense. Rather, the Board must point to some concrete evidence in the record in support of these findings. To hold otherwise would render the process of appellate review for substantial evidence on the record a meaningless exercise. Baltimore & Ohio R.R. Co. v. Aderdeen & Rockfish R.R. Co., 393 U.S. 87, 91-92, 89 S.Ct. 280, 21 L.Ed.2d 219 (1968) (rejecting a determination of the Interstate Commerce Commission with no support in the record, noting that if the Court were to conclude otherwise “[t]he requirement for administrative decisions based on substantial evidence and reasoned findings — which alone make effective judicial review possible — would become lost in the haze of so-called expertise”). Accordingly, we cannot accept the Board’s unsupported assessment of the prior art.
This holding was repeated by the Federal Circuit less than a year ago in K/S HIMPP v. Hear-Wear Technologies, LLC, 751 F.3d 1362 (Fed. Cir. 2014):
We agree with Hear-Wear that the Board was correct to require record evidence to support an assertion that the structural features of claims 3 and 9 of the ‘512 patent were known prior art elements. The patentability of claims 3 and 9 with the limitation “a plurality of prongs that provide a detachable mechanical and electrical connection” presents more than a peripheral issue. See In re Zurko, 258 F.3d 1379, 1386 (Fed.Cir.2001) (”[Board] expertise may provide sufficient support for conclusions as to peripheral issues.”). The determination of patentability of claims with this limitation therefore requires a core factual finding, and as such, requires more than a conclusory statement from either HIMPP or the Board. See id. (”With respect to core factual findings in a determination of patentability, however, the Board cannot simply reach conclusions based on its own understanding or experience….”). HIMPP must instead “point to some concrete evidence in the record in support of these findings.” Id.
Clearly, for a factual determination by the Office to withstand appellate review, the Office must establish concrete evidence in the record. Therefore, the assertion by the Office that a claim recites an abstract idea — which is clearly a core factual finding — must be supported by concrete evidence in the record.
I hope you will tailor the interim guidance to reflect that an Examiner must support any assertion of an abstract idea by supplying factual evidence, just as you have previously required the examining corps to do in MPEP sections 2107, 2142, and 1504.01(c) (II).
Finally, I think it is wise to take to heart the remarks of Judge Lourie from the oral argument of K/S HIMPP v. Hear-Wear Technologies, LLC:
“We have an examination system based on citation of references. I may have used the word ’slippery slope’ already. But, I worry about that — where an examiner who is of some skill and training in a particular art could simply say ‘Aha, I think, I think, and it is my common knowledge . . . .’ And, they start rejecting claims based on what they ‘think.’ Isn’t that a serious departure from our system of citation of references to reject claims?”
William F. Vobach
Judge Jeremy Fogel is sitting by designation with the Federal Circuit this month. This is the first judge to sit by designation with the Federal Circuit since Judge Prost took over the Chief Judge position last year. There was a dramatic drop off in judges sitting by designation after Chief Judge Michel retired.
By the way, I believe it is not unprecedented for retired judges to sit by designation — retired Justice Sandra Day O’Connor sits by designation frequently (although never before with the Federal Circuit). It would be fun to have Chief Judge Michel back sitting by designation.
Just a quick reminder that comments on the PTO’s interim guidance on patent subject matter eligibility are due by March 16th. From the PTO website:
HOW TO COMMENT
The USPTO is interested in receiving public feedback on all aspect of the Interim Eligibility Guidance, including the Guidance itself, the claim examples, and the training slides.
Any member of the public may submit written comments by electronic mail message over the Internet addressed to email@example.com(link sends e-mail). Electronic comments submitted in plain text are preferred, but also may be submitted in ADOBE® portable document format or MICROSOFT WORD® format.
Listening to the AIPLA presentation on patent eligibility a few weeks ago, it sounded as though one of the Federal Circuit cases that the PTO is watching is Ariosa Diagnostics, Inc. v. Sequenom, Inc. That case was argued on November 7, 2014 and has not yet been decided.
The parties drew a thoughtful panel — judges Reyna, Linn, and Wallach.
You can listen to the oral argument here: [Listen].
At the opening ceremonies for the Denver patent office, Denver’s mayor told the story of his first day on the job and receiving a call from a local patent attorney. The patent attorney was calling to recruit the mayor’s help in encouraging the USPTO to select Denver as one of the regional locations for the Patent Office. I forget if the mayor mentioned this or not; but, that has an uncanny parallel to Mark Twain’s A Connecticut Yankee in King Arthur’s Court:
That reminds me to remark, in passing, that the very first official thing I did in my administration — and it was on the very first day of it, too — was to start a patent office; for I knew that a country without a patent office and good patent laws was just a crab, and couldn’t travel any way but sideways or backways.
By the way, here is an update on the local patent rules being implemented by the U.S.District Court for the District of Colorado:
The United States District Court for the District of Colorado on June 4, 2014, formally adopted a Pilot Program that Implements Proposed Patent Rules. The Pilot Program is designed to facilitate the efficient management of patent cases through the use of local rules collaboratively developed with members of the local patent bar and with input from public comment. Patent cases following the procedures and deadlines set forth in the Pilot Project Local Patent Rules, began August 1, 2014.
The details of the Pilot Program, the Pilot Project Local Patent Rules, and the form Proposed Scheduling Order for a Patent Case can be found at the U.S. District Court’s website at: cod.uscourts.gov/CourtOperations/RulesProcedures/PilotProjects or can be obtained at the office of the Clerk of the Court at the Alfred A. Arraj U.S. Courthouse Annex located at 901 19th Street, Denver, Colorado 80294.