The oral argument prior to the Federal Circuit’s decision in IN RE WHITE, No. 2018-1242 (Fed. Cir. Jan. 16, 2019) had an interesting sound bite. The case is a trademark case in which the Appellant asked the Federal Circuit to take judicial notice of the teaching of American history in public schools. Judge Wallach asked the Appellant if there was some source upon which the court could base such a taking of judicial notice.
It is interesting to note the care of the court when judicial notice is requested explicitly. Compare that situation to the court’s frequent pronouncements of abstract ideas (without evidentiary support) in step 1 of the Alice analysis under 35 U.S.C. §101. Some would argue that a court’s pronouncement of something being an abstract idea is a taking of judicial notice.
You can listen to Judge Wallach’s comment from In re White here:
Judge Lourie warned about the slippery slope of divorcing patent examination from the citation of references back in the oral argument of HIMPP v. HEAR-WEAR TECHNOLOGIES, LLC, No. 2013-1549 (Fed. Cir. May 27, 2014). His comments were focused on obviousness; but, they ring true for patent eligibility, as well:
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? [Listen]
It doesn’t seem to me to be the function of the appellate court to take judicial notice of the ordinariness of certain decided claim limitations. We can take judicial notice that ‘today is Wednesday’ and ‘we had snow earlier in the week’ — I’m glad you made it through the snow — but, we don’t make rejections based on judicial notice of . . . finding a claim limitation to be common sense. [Listen]