Ex Parte Bhogal and Ex Parte Galloway

July 19th, 2018

You probably already read the excellent article “Berkheimer, the Administrative Procedure Act, and PTO Motions to Vacate PTAB § 101 Decisions”  by Doerre and Boundy.

The article references two recent decisions by the PTAB applying Berkheimer.  Copies of those PTAB opinions are available below:

Ex parte Bhogal, appeal no. 2016-008742, (PTAB Mar. 19, 2018)

Ex parte Galloway, appeal no. 2017-004696, (PTAB May 24, 2018).


UPDATE JULY 20, 2018:

Here’s another PTAB decision applying Berkheimer, mentioned in the comments section for the above article:

Ex Parte Young, appeal no. 2017-006731, (PTAB June 29, 2018).


Thirteen years since Phillips

July 16th, 2018

Wow, it has already been thirteen years since Phillips was decided (July 12, 2005).  In Part IV-B of Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005), the en banc majority stated:

While we have acknowledged the maxim that claims should be construed to preserve their validity, we have not applied that principle broadly, and we have certainly not endorsed a regime in which validity analysis is a regular component of claim construction. See Nazomi Communications, 403 F.3d at 1368-69. Instead, we have limited the maxim to cases in which “the court concludes, after applying all the available tools of claim construction, that the claim is still ambiguous.” Liebel-Flarsheim, 358 F.3d at 911; see also Generation II Orthotics Inc. v. Med. Tech. Inc., 263 F.3d 1356, 1365 (Fed.Cir.2001) (“[C]laims can only be construed to preserve their validity where the proposed claim construction is `practicable,’ is based on sound claim construction principles, and does not revise or ignore the explicit language of the claims.”); Elekta Instrument S.A. v. O.U.R. Scientific Int’l, Inc., 214 F.3d 1302, 1309 (Fed.Cir.2000) (“having concluded that the amended claim is susceptible of only one reasonable construction, we cannot construe the claim differently from its plain meaning in order to preserve its validity”); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1434 (Fed.Cir.1988) (rejecting argument that limitations should be added to claims to preserve the validity of the claims). In such cases, we have looked to whether it is reasonable to infer that the PTO would not have issued an invalid patent, and that the ambiguity in the claim language should therefore be resolved in a manner that would preserve the patent’s validity.

Phillips v. AWH Corp., 415 F.3d 1303, 1327 (Fed. Cir. 2005).

So, it was interesting to read the dissent today in BLACKBIRD TECH LLC, DBA BLACKBIRD TECHNOLOGIES v. ELB ELECTRONICS, INC., ETI SOLID STATE LIGHTING INC., FEIT ELECTRIC COMPANY INC., __ F.3d __ (Fed. Cir. 2018), which stated:

The majority’s construction thus opens the door for the ’747 patent to be subsequently invalidated for failure to satisfy the written description requirement. Stated differently, the majority’s construction is a route towards rendering the patent invalid. See Carman Indus., Inc. v. Wahl, 724 F.2d 932, 937 (Fed. Cir. 1983) (“Claims should be so construed, if possible, as to sustain their validity. If such a construction would result in invalidity of the claims, the appropriate legal conclusion is one of noninfringement, not invalidity.”). The majority likewise invites an enablement challenge; under the majority’s approach, the retrofit aspect of the invention is merely an afterthought, one for which a skilled artisan must figure out for themselves the means by which the retrofit function of the invention shall be achieved, without any guidance from the patent. See Maj. Op. at 9. This result is absurd, given that when the patent is read as a whole, such guidance is clearly provided.


It is interesting that this topic crops up from time to time.  I believe there is still a slight disagreement within the court as to whether claims should be construed to preserve their validity, regardless of ambiguity — despite what Phillips says.

Article suggestion

July 15th, 2018

I find it curious that the Federal Circuit only publishes the names of its panel members on the morning of an oral argument.  Some of the other circuit courts of appeal publish the names of the panel members far longer in advance. For example, the Tenth Circuit has already published panel membership for arguments two weeks in the future: [Link].  If I recall correctly, the Federal Circuit experimented with a longer notification period; but, eventually, the court resumed its previous and now current practice.

It would be interesting to see a short article that compares the various circuits and the amount of notification given to the parties about the composition of a panel.  What seems implicit in the Federal Circuit’s short lead time is the notion that the court is so badly fractured that advocates will focus their arguments to cater to the particular panel members.  One benefit I see to a longer lead time is that an advocate would probably know how much technical explanation would be required during oral argument depending on the composition of the panel.  For example, a panel comprised of Judges Hughes, Dyk, and Reyna might need more technical background on an electronics case than would Judges Moore, Stoll, and Linn (some of the EE judges).

Mark Twain and the Federal Circuit

July 7th, 2018

Next door to the Federal Circuit sits a statue of a somber woman in a cowl.  The statue is a replica of a statue that Henry Adams (grandson of President John Quincy Adams) commissioned after the death of his wife.  In 1909, Mark Twain visited the original statue and gave it the nickname “GRIEF.”

The replica — ironically, an unauthorized replica — eventually made its way to the courtyard behind the Dolley Madison House, next door to the Federal Circuit.


If the original was nicknamed “GRIEF,”  what would be a good nickname for the replica?  How about “THE RULE 36 STATUE” or “THE SUPREME COURT WEIGHS IN ON PATENT ELIGIBILITY.”  Maybe “FIRST INVENTOR TO FILE.”

I am somewhat reminded of the dust bowl photograph by “THE RULE 36 STATUE”:




Patent Eligibility Guidance Update: Vanda memorandum

June 18th, 2018

The USPTO has posted its memorandum to the examining corps following the Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals decision.  The memorandum is available [here].

The Federal Circuit decision is available [here].

The oral argument at the Federal Circuit is available below:

Oral Argument of the Month: St. Regis Mohawk Tribe v. Mylan Pharmaceuticals

June 11th, 2018

The Federal Circuit heard oral argument in St. Regis Mohawk Tribe v. Mylan Pharmaceuticals last week.  The oral argument focuses on whether tribal sovereign immunity applies to IPR proceedings.  The panel consists of Judges Dyk, Moore, and Reyna. You can listen to the oral argument here:

I will add some sound bites in the future, if time permits.


June 7th, 2018

In the last few weeks, the Federal Circuit has been publishing opinions via its web site that include a date that follows the case name.  You can see some examples below:

The dates tend to be one or two working days before the opinions are released to the public.  So, they are not actually the date of the opinions.  The Federal Circuit has not published any explanation on its web site for this new procedure.  My best guess is that perhaps it reflects the date that the opinions are submitted to the clerk’s office.  And, perhaps the dates are intended to be one mode of precedential tie-breaker, if two opinions are released officially on the same day but with opposing viewpoints on an issue.  See Patently-O, “Priority of Precedent: When Same-Day Federal Circuit Opinions are in Tension” [Link].

Update June 19, 2018:

Curiously, the Federal Circuit is now publishing the list of cases without dates.  And, the court has removed the dates that were previously listed.  So, we are back to the old system.

Video of Judge O’Malley sitting by designation with the 9th Circuit

June 5th, 2018

Judge O’Malley also sat by designation with the 9th Circuit in 2017.  You can watch a video of one of the oral arguments below (Altera v. CIR).  From what I could glean, the case deals with taxation issues concerning cost sharing arrangements for the development of intangible property.


Video of Judge Linn Sitting by Designation with the Ninth Circuit

May 31st, 2018

Judge Linn of the Federal Circuit has a lot fans throughout the country from his work with the American Inns of Court, as well as the sound judicial reasoning in his opinions for the court.  He sat by designation with the Ninth Circuit back in November in the following cases:

The video below is from the oral argument in one of those cases — a copyright case, ABS Entertainment, Inc. v. CBS Corp.:


Director Andrei Iancu’s testimony before the House Judiciary Committee on 5/22/18

May 22nd, 2018


Director Iancu’s written statement is available [here].