Judge Smith’s dissenting opinion in In re Wiechert, 370 F.2d 927 (CCPA 1967)

August 6th, 2017

Back in 1967, Judge Smith of the CCPA dissented from the majority in the opinion of In re Wiechert, 370 F.2d 927, 152 U.S.P.Q. 247 (C.C.P.A. 1967).  Judge Smith opined that a panel of the PTO’s board of appeals at that time had been improperly constituted.  Therefore, Judge Smith remarked that the CCPA had no jurisdiction to review the decision of the board of appeals.  The entire opinion is available [here].

Judge Smith’s dissent is shown below:

SMITH, Judge (dissenting).

The majority opinion of this court rests on the novel concept that an Article III Federal Court does not have jurisdiction to inquire into the legality of an administrative quasi-judicial board whose decision it has been requested to review. This concept is unsupported by authority or precedent and seems to me to be lacking in both reason and logic. The power to inquire into the legality of such a board is a necessary and inherent power of the reviewing court. Such power is the court’s only safeguard against putting its judicial imprimatur on a legal nullity. Our obligation is to dispose of the present controversy in a judicial matter to the end that the duty of this court will not be compromised. As we recently stated, in In re Fischer, 360 F.2d 230, 231, 53 CCPA 1211:

* * * The judicial nature of the proceedings in this court, no matter at what stage, is no longer in question. Lurk v. United States, 370 U.S. 530, [82 S.Ct. 1459, 8 L.Ed.2d 671] (1962) and Brenner v. Manson, 383 U.S. 519, [86 S.Ct. 1033, 16 L.Ed.2d 69] (1966). As stated by the Supreme Court, the bulk of this court’s work involves the disposition of cases arising under Article III of the Constitution, that is cases arising under Federal law and cases to which the United States is a party. These cases and controversies are and must be disposed of in a judicial manner. * * * [Emphasis added.]

Three “principal reasons” are advanced to support the majority position:

(1) The question was not raised on this appeal by appellant;

(2) having raised the question in the Patent Office, he abandoned it by not arguing it before us (except as we insisted on his doing so at the reargument); and

(3) our limited statutory authority precludes our consideration of the question.

While Judge ALMOND and I differ as to how the issue of the legal competency of the board is to be resolved, we have no differences as to the inherent authority of this court to pass upon the issue here raised.

As I see it, the fallacy in the majority opinion results from confusing the issues of an appeal, required to be raised under 35 U.S.C. § 141, with the basic authority of this court, wholly independent of any reason of appeal or other limitations defined in section 141, to consider whether an appeal lies from the “decision” rendered by an alleged illegally constituted tribunal.

The Issue of Jurisdiction

To emphasize the agreement between Judge Almond and myself on this issue, his concurring opinion contains the statement with which I am in full and entire agreement which I here quote and embody in this opinion:

I am not concerned with whether appellant raised the issue of jurisdiction either in the Patent Office or before this court, or with whether the issue is covered by his Reasons of Appeal, or with whether appellant abandoned the issue. It is too well-settled to require citation of authority that jurisdiction of the subject matter is neverwaived in a pending case. This is the unvarying rule even in courts of general jurisdiction, and it should be applicable with special force in this court of limited jurisdiction.

It would also be a matter of no concern if appellant, the Commissioner, and counsel for both parties all agreed that this court has jurisdiction of the subject matter of this appeal. The parties before a Federal court cannot confer appellate jurisdiction by their 941*941 mere consent; only Congress can do so. Since Congress has confined our jurisdiction in ex parte patent cases to appellate review of a “decision of the Board of Appeals” under section 141, I believe we should consider the issue of whether the questionable “board” panel in the present case was legally constituted under section 7, so that it could conceivably render a valid decision on behalf of the “Board of Appeals.” If the “board” panel could not do so because of its illegal composition, this court would lack jurisdiction of the subject matter under the statute.

The basic consideration to which we must give effect, it seems to me, is set forth in the following statement from 5 C.J.S. Appeal & Error § 1355, Want of Jurisdiction (1958):

Inasmuch as lack of jurisdiction in the appellate court renders any decision which it might make on the merits a nullity, if such lack of jurisdiction is patent, or can be readily ascertained by an examination of the record, it warrants the dismissal * * * (citations omitted, 9 columns of cases).

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Oral argument of the day: LUNAREYE, INC. v. MATAL

August 3rd, 2017

The oral argument of the day comes from LUNAREYE, INC. v. MATAL, No. 2016-1413 (Fed. Cir. July 24, 2017).  In this oral argument, the panel of judges pressed the Solicitor’s office on what the PTO’s position is with respect to whether the PTAB owes deference to district court determinations of claim construction.

You can listen to the oral argument: [here].

You can review the court’s Rule 36 Judgment [here].

I put this oral argument under the “hot bench” category.

Oral argument of the day: NOBELBIZ, INC. v. GLOBAL CONNECT, LLC

August 1st, 2017

The oral argument of the day is from NOBELBIZ, INC. v. GLOBAL CONNECT, LLC, No. 2016-1104 (Fed. Cir. July 19, 2017).  I enjoyed listening to this oral argument because there were a lot of references to various court precedents, particularly with respect to claim construction issues.  One of the nice aspects of listening to oral arguments like this is that they serve as a nice refresher about holdings of previous cases.

Prospective appellants will be interested in one sound bite from Judge Dyk.  During the oral argument, the appellee challenged the appellant’s reliance on the summary of the patent to construe the claims — because that argument was apparently not used at the district court.  Judge Dyk responded that it was not waiver to make new arguments on appeal as long as the issue was raised below.  He asserted that there is only waiver of issues — not waiver of arguments. [Listen].  The appellee attempted to refer the court to the Federal Circuit’s Conoco decision.  I believe the appellee was referring to Conoco, Inc. v. ENERGY & ENVIRONMENTAL INTERN., 460 F.3d 1349 (Fed. Cir. 2006), which states:

Normally, a district court faced with a patent infringement suit engages in a two-step analysis, involving: (1) construing the disputed claims of the patent — a matter of law — and (2) comparing the accused device to the patent claims — a matter of fact. Cybor Corp., 138 F.3d at 1454, 1456. However, legal issues in patent infringement suits are not immune to the doctrine of waiver on appeal, and except for certain circumstances, those issues not raised below at the district court cannot be heard for the first time on appeal. Interactive Gift Express, Inc. v. Compuserve, Inc., 256 F.3d 1323, 1344-45 (Fed. Cir.2001). Thus, a party may not introduce new claim construction arguments on appeal or alter the scope of the claim 1359*1359 construction positions it took below. Id. at 1346-47; see also NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1296 (Fed. Cir.2005). Moreover, litigants waive their right to present new claim construction disputes if they are raised for the first time after trial. See Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352, 1360 (Fed. Cir.2004).

Conoco, Inc. v. ENERGY & ENVIRONMENTAL INTERN., 460 F.3d 1349 (Fed. Cir. 2006).  [Link]

The majority decision in NOBELBIZ, INC. v. GLOBAL CONNECT, LLC did base its decision, in part, on the summary of the patent. It did not mention Conoco.

You can listen to the oral argument here: [Listen].

You can review the court’s decision: [here].

Petitions for rulemaking

July 29th, 2017

The case of Flyers’ Rights v. FAA caught my eye today, as I am a tall person who is ever-aware of the shrinking amount of leg room on airline flights.  In Flyers’ Rights, the appellant appealed to the D.C. Circuit after the FAA denied Flyers’ Rights petition for a rulemaking by the FAA.  The proposed rulemaking had to do with the minimum amount of leg room that should be provided on a flight.

That got me to wondering whether the USPTO ever receives any proposed petitions for rulemaking and what some good new rules might be.  For example, if the vast majority of requests for amendments in IPR proceedings are being denied by the PTAB, should an industry group petition for a rulemaking to correct that situation?

Or, in view of the statement in Versata Development Group v. SAP America, Inc. that states:

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.

Versata Development Group v. SAP America, Inc., 793 F.3d 1306, 1336 (Fed. Cir. 2015)

and thus implies that the USPTO’s §101 determinations are based on underlying factual findings (e.g., whether a claim as a whole recites well-understood, routine, and conventional activities),  should an industry group petition for a rulemaking that a USPTO rejection of a claim under §101 must provide evidence that the proposed claim recites well-understood, routine, and conventional activities?

The D.C. Circuit’s opinion in Flyers’ Rights v. FAA is available [here].

The oral argument in Flyers’ Rights v. FAA is available [here].

My favorite quote from the Flyers’ Rights v. FAA decision is:

But that is not how judicial review works. We cannot affirm the sufficiency of what we cannot see. “[A]n agency decision based on ‘reliable data reposing in the [agency’s] files’” but hidden from judicial view “simply cannot withstand scrutiny.” United States Lines, Inc. v. Federal Maritime Comm’n, 584 F.2d 519, 535 (D.C. Cir. 1978).

Indeed, we have long held that, when “the data relied on by [an agency] in reaching its decision is not included in the administrative record and is not disclosed to the court[,]” we cannot “determine whether the final agency decision reflects the rational outcome of the agency’s consideration of all relevant factors[.]” United States Lines, 584 F.2d at 533 (footnote omitted). Whatever deference we generally accord to administrative agencies, “we will not defer to a declaration of fact that is ‘capable of exact proof’ but is unsupported by any evidence.” McDonnell Douglas Corp. v. United States Dep’t of the Air Force, 375 F.3d 1182, 1190 n.4 (D.C. Cir. 2004) (citation omitted).

Flyers’ Rights v. FAA, No. 16-1011 (D.C. Cir. July 28, 2017) at page 13.

Query:  If the Director of the USPTO utilizes panel stacking to implement new USPTO procedure in place of notice and comment rulemaking, has the Director disclosed all the data relied on in reaching its decision?

For more on petitions for rulemaking under the APA see:  [link].

Judicial Takings of Property Rights

July 18th, 2017

Those of you who like to follow the development of the legal theory of “judicial taking of property,” since that theory was discussed in the plurality opinion in Stop the Beach Ren. v. Fla. Dept. of Env. Prot., 130 S. Ct. 2592, 560 U.S. 702, 177 L. Ed. 2d 184 (2010) will be interested in yesterday’s decision in Petro-Hunt, L.L.C. v. United States [Link].   This appears to be only the fourth time that the Federal Circuit has addressed the “judicial taking of property” cause of action since Stop the Beach issued.

In a footnote in Petro-Hunt, Judge Clevenger notes for the court:

In Smith v. United States, 709 F.3d 1114, 1116–17 (Fed. Cir. 2013), this court noted that “judicial action could constitute a taking of property,” and that the Supreme Court applied the theory of a judicial taking in Stop the Beach. But the Court’s decision in Stop the Beach that a cause of action for a judicial taking exists is a plurality decision, and therefore not a binding judgment. Stop the Beach, 560 U.S. at 715–19 (Justice Scalia, joined by Chief Justice Roberts and Justices Thomas and Alito, concluded that a court may effect a taking. There were two separate opinions concurring in the judgment but not in the plurality’s views on judicial takings—one by Justice Kennedy, joined by Justice Sotomayor, the other by Justice Breyer, joined by Justice Ginsburg. Justice Stevens did not participate.)

I always think of “judicial takings” when during an oral argument a Federal Circuit judge comments with respect to a 35 U.S.C. §101 argument:  “That may have been true when the patent issued; but, the Supreme Court changed the law of patent eligibility with Alice.”

In sum, the Takings Clause bars the State from taking private property without paying for it, no matter which branch is the instrument of the taking. To be sure, the manner of state action may matter: Condemnation by eminent domain, for example, is always a taking, while a legislative, executive, or judicial restriction of property use may or may not be, depending on its nature and extent. But the particular state actor is irrelevant. If a legislature or a court declares that what was once an established right of private property no longer exists, it has taken that property, no less than if the State had physically appropriated it or destroyed its value by regulation. “[A] State, by ipse dixit, may not transform private property into public property without compensation.” Ibid.

Stop the Beach Renourishment, Inc. v. Florida Department of Environmental Protection, ___ U.S. ___, 130 S.Ct. 2592, 2602 (2010).

Oral Argument of the Day

July 17th, 2017

The oral argument of the day is from INTEGRATED CLAIMS SYSTEMS, LLC v. TRAVELERS LLOYDS OF TEXAS INSURANCE COMPANY, No. 2016-2163 (Fed. Cir. Apr. 11, 2017).  The oral argument primarily concerns application of the court’s SECURE AXCESS, LLC, v. PNC BANK NAT. ASSOCIATION decision from earlier this year with respect to how to determine whether a patent is subject to covered business method (CBM) review.

You can listen to the oral argument [here].

You can study the court’s Rule 36 Judgment [here].

Countdown to Aqua Products

July 14th, 2017

The Federal Circuit’s en banc decision in In re Aqua Products should be out soon.  Aqua challenges the Patent Trial and Appeal Board’s amendment procedures, which require the patentee to demonstrate that amended claims would be patentable over art of record.

You can listen to the en banc oral argument [here].

You can review the vacated panel opinion [here].

Aqua Products’ supplemental brief is available [here].

Totally off-track, not particularly pertinent to this case, and not from this case; but, this is one of my favorite sound bites from Judge Dyk about interpreting regulations based on public statements: [Listen].

Those of you who like to try to read the tea leaves of other oral arguments in order to predict how the court is leaning in an en banc appeal might be interested in the oral argument of ZAGG INTELLECTUAL PROPERTY HOLDING CO., INC. v. TECH 21 UK LTD., No. 2016-1976 (Fed. Cir. Apr. 11, 2017).  That oral argument is available [here].


July 12th, 2017

The oral argument of the day comes from INTELLECTUAL VENTURES II LLC v. ERICSSON INC., No. 2016-1803 (Fed. Cir. Apr. 18, 2017).  This case is primarily an obviousness case.

Interestingly, near the end of the decision, Judge Lourie, writing for the court, added the following footnote:

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.

That footnote is given more context by these comments during oral argument from Judge Reyna, who was concerned with possible hindsight being applied by the PTAB when a large number of pieces from different references are combined together* [Listen] and [Listen].  To listen to similar comments by other Federal Circuit judges in other oral arguments, visit this [post].

You can listen to the entire oral argument [here].

You can read the court’s opinion [here].

*Sometimes referred to as a Frankenstein’s Monster rejection.

Naruto v. Slater oral argument

July 9th, 2017

The oral argument at the U.S. Court of Appeals for the Ninth Circuit in the Naruto v. Slater case is scheduled for July 12th in San Francisco.  [Notice].  I will post the video of the oral argument once it is available.  This case concerns whether a monkey — more specifically, a Crested Macaque — that used a photographer’s camera to take a selfie portrait can be considered an “author” under the Copyright Act.  The briefs are available [here].

For more on the background of the case, this is the link to the Wikipedia entry: [Link].

By the way, in the unique town of Boulder, CO a city regulation requires all public signage to refer to dog “guardians” rather than dog “owners.”  [Link].

Update 7/13/2017

The Judicial Oath

July 7th, 2017

We often see pictures of judges or justices being sworn-in; but, we rarely have a chance to observe the words of the judicial oath.  Pursuant to 28 U.S.C. §453:

Each justice or judge of the United States shall take the following oath or affirmation before performing the duties of his office: “I, ___ ___, do solemnly swear (or affirm) that I will administer justice without respect to persons, and do equal right to the poor and to the rich, and that I will faithfully and impartially discharge and perform all the duties incumbent upon me as ___ under the Constitution and laws of the United States. So help me God.”

(June 25, 1948, ch. 646, 62 Stat. 907Pub. L. 101–650, title IV, § 404, Dec. 1, 1990104 Stat. 5124.)