Archive for the ‘Uncategorized’ Category

Supreme Court sets Arthrex oral argument for March 1st

Tuesday, January 5th, 2021

Mark your calendars. The Supreme Court has set the oral argument in United States v. Arthrex, Inc. for March 1, 2021.

Article Suggestion: Psychological studies of hindsight bias

Tuesday, January 5th, 2021

If anyone is looking for an article to write, I think a very good topic would be a survey of the psychological research (psychology research??) on hindsight bias. Moreover, a discussion of how the psychological research on hindsight has been applied in other legal settings would be useful. I suspect the bulk of the research focuses on how witnesses to accidents remember or misremember the details of an accident. But, it would still be interesting to see what that research teaches us. Hindsight is bandied about quite often when arguing about obviousness; but, isn’t it time to update our understanding of the principles of hindsight so that we can try to eliminate hindsight bias in the minds of those examining applications . . . as well as those adjudicating patents? I don’t ever remember reading a Federal Circuit or CCPA decision that cites a scientific journal on the factors that identify or suggest a hindsight bias.


Update 1/9/21:

Many thanks to Professor Karshtedt of GW Law for pointing me in the direction of some great resources on this topic. First, in In re Cyclobenzaprine Hydrochloride, 676 F.3d 1063 (Fed. Cir. 2012), the Federal Circuit points to some journal articles on hindsight bias, including a recent law review article by Professor Gregory Mandel [Link]:

Finally, not only is Stratoflex the law, it is sound in requiring that a fact finder consider the objective evidence before reaching an obviousness determination. The objective considerations, when considered with the balance of the obviousness evidence in the record, guard as a check against hindsight bias. Graham, 383 U.S. at 36, 86 S.Ct. 684 (quoting Monroe Auto Equip. Co. v. Heckethorn Mfg. & Supply Co., 332 F.2d 406, 412 (6th Cir.1964)). In Graham, the Court recognized the danger of hindsight bias and the ameliorative effect that the objective considerations might offer. In discussing the utility of the objective considerations, the Court cited a law review note published after the nonobviousness requirement was enacted in the 1952 Patent Act. Id. at 18, 86 S.Ct. 684 (citing Richard L. Robbins, Subtests of “Nonobviousness”: A Nontechnical Approach to Patent Validity, 112 U. Pa. L.Rev. 1169 (1964) (“Robbins”)). In that note, the author argued that the instruments of decision-making applied in patent cases at the time were inadequate and allowed judges to rely on “judicial hunches,” thereby deciding cases on extralegal grounds. Robbins, 112 U. Pa. L.Rev. at 1170 & n.11 (citing Joseph C. Hutcheson, Jr., The Judgment Intuitive: The Function of the “Hunch” in Judicial Decisions, 14 Cornell L.Q. 274, 278 (1929)). Such “judicial hunches” are encouraged by hindsight bias. As one commentator recently observed, “decision-makers unconsciously let knowledge of the invention bias their conclusion concerning whether the invention was obvious in the first instance.” Gregory N. Mandel, Patently Non-Obvious: Empirical Demonstration that the Hindsight Bias Renders Patent Decisions Irrational, 67 Ohio St. L.J. 1391, 1393 (2006). In other words, knowing that the inventor succeeded in making the patented invention, a fact finder might develop a hunch that the claimed invention was obvious, and then construct a selective version of the facts that confirms that hunch. This is precisely why the Supreme Court explained that objective considerations might prevent a fact finder from falling into such a trap, observing that objective considerations might serve to “resist the temptation to read into the prior art the teachings of the invention in issue.” 383 U.S. at 36, 86 S.Ct. 684.[6] And, it is precisely why fact finders must withhold judgment on an obviousness challenge until it considers all relevant evidence, including that relating to the objective considerations.

In re Cyclobenzaprine Hydrochloride, 676 F.3d 1063, 1079 (Fed. Cir. 2012)

Second, the Fifth Circuit even more recently noted some research in regard to hindsight in the case of Lisa M. v. LEANDER INDEPENDENT SCHOOL DIST., 924 F.3d 205 (5th Cir. 2019):

While judicial review unavoidably looks backward, our task is to assess eligibility with the information available to the ARD committee at the time of its decision. An erroneous conclusion that a student is ineligible for special education does not somehow become acceptable because a student subsequently succeeds. Nor does a proper finding that a student is ineligible become erroneous because the student later struggles. Subsequent events do not determine ex ante reasonableness in the eligibility context.

We are not alone in this approach. The Ninth Circuit has held that review of a school district’s eligibility determination should be assessed “at the time of the child’s evaluation and not from the perspective of a later time with the benefit of hindsight.” L.J. by & through Hudson v. Pittsburg Unified Sch. Dist., 850 F.3d 996, 1004 (9th Cir. 2017). As L.J. put it, “We judge the eligibility decision on the basis of whether it took the relevant information into account, not on whether or not it worked.” Id.

Our sister circuits are split on whether courts can consider hindsight evidence in a different context—when assessing the appropriateness of an IEP. Compare R.E. v. New York City Dep’t of Educ., 694 F.3d 167, 187 (2d Cir. 2012) (disallowing use of “evidence that [a] child did not make progress under the IEP in order to show that [the IEP] was deficient from the outset”); with M.S. ex rel. Simchick v. Fairfax County Sch. Board, 553 F.3d 315, 327 (4th Cir. 2009) (“[W]e have concluded that, in some situations, evidence of actual progress may be relevant to a determination of whether a challenged IEP was reasonably calculated to confer some educational benefit.”); see also Dennis Fan, No IDEA What the Future Holds: The Retrospective Evidence Dilemma, 114 Colum. L. Rev. 1503 (2014) (describing various circuit positions); Maggie Wittlin, Hindsight Evidence, 116 Colum. L. Rev. 1323, 1386-88 (2016) (same).

Lisa M. v. LEANDER INDEPENDENT SCHOOL DIST., 924 F.3d 205, 214 (5th Cir. 2019).

The link to the article by Professor Maggie Wittlin, including a discussion of debiasing, is available [here].

Amicus briefs in support of Arthrex

Thursday, December 31st, 2020

The amicus briefs in support of Arthrex were filed recently. You can review them here:

Amicus brief of Pacific Legal Foundation submitted.
Amicus brief of 39 AGGRIEVED INVENTORS submitted.
Amicus brief of B.E. Technology, LLC submitted.
Amicus brief of Joshua J. Malone submitted.
Amicus brief of U.S. Lumber Coalition submitted.
Amicus brief of Americans for Prosperity Foundation and TechFreedom submitted.
Amicus brief of TiVo Corporation submitted.
Amicus brief of US Inventor, Inc. submitted.
Amicus brief of Jeremy C. Doerre submitted.
Amicus brief of Cato Institute submitted.
Amicus brief of New Civil Liberties Alliance submitted.
Amicus brief of Fair Inventing Fund submitted.

I thought these statistics from TiVo’s brief were interesting:

1. TiVo’s experience presents a particularly striking example of the abusive purposes for which the inter partes review regime can be employed. TiVo’s (and its subsidiaries’) patents have been the subject of well over one hundred inter partes review petitions since November 2016. Thirty-seven patents have been challenged—an average of 3.35 petitions per patent. In total, only about 5% of the challenged claims have survived. Many of these claims had been previously upheld against validity challenges by the International Trade Commission—a body made up of properly appointed principal officers. 

In effect, inter partes reviews have allowed TiVo’s competitors to violate its patent rights and then, after having been adjudged guilty of that conduct in one adjudicatory forum (for example, the ITC), obtain a second bite at the apple via one or more inter partes review petitions. Even worse, after the first proceeding has exposed flaws in the infringer’s invalidity arguments, the infringer can use those proceedings as a roadmap to attempt to fix those flaws in the subsequent inter partes review. In effect, the first proceeding functions as a practice run for the infringer to test out its invalidity case and assess the weaknesses in it so it may avoid those weaknesses when it challenges the patent before the Board. 

To take one illustrative example, Rovi, a TiVo subsidiary, asserted U.S. Patent Nos. 9,369,741 and 7,779,011 (among other patents) against Comcast Cable Communications in Certain Digital Video Receivers and Related Hardware and Software Components, Inv. No. 337-TA-1103 (U.S.I.T.C.). In the course of that proceeding, Comcast tried and failed to show that the claims of the ’741 patent were invalid in light of a prior-art reference called Sie. See Initial Determination on Violation of Section 337 and Recommended Determination on Remedy and Bond (Public) at 257–60 (June 27, 2019). Comcast also tried and failed to show that the claims of the ’011 patent were invalid as obvious over two prior-art references called Gross and Smith. See id. at 101–13. While the ITC investigation was ongoing, Comcast filed multiple inter partes reviews against the ’741 and ’011 patents. Using the Commission proceedings as a roadmap, Comcast ultimately succeeded in convincing the Board to invalidate those two patents based on the very same prior art that the ITC had already considered. Specifically, the PTAB concluded that the ’741 patent was obvious over Sie, see Comcast Cable Commc’ns, LLC v. Rovi Guides, Inc., No. IPR2019-00231, Paper 44 (P.T.A.B. May 8, 2020), and that the ’011 patent was obvious over Gross and Smith, see Comcast Cable Commc’ns, LLC v. Rovi Guides, Inc., No. IPR2019-00239, Paper 50 (P.T.A.B. June 30, 2020).3   

This is not how the system is supposed to work. Patent owners should be entitled to some measure of repose. They should not be subjected to repeated attacks on the validity of their patents throughout their twenty-year term. The perpetual cloud of uncertainty that results from this system undermines the presumption of validity and harms incentives to innovate. It also flatly contradicts the original intent of the drafters of the AIA, who made clear that the new post-grant proceedings established by that statute were “not to be used as tools for harassment or a means to prevent market entry through repeated litigation and administrative attacks on the validity of a patent.” H.R. Rep. No. 112-98, pt. 1, at 48 (2011). 

2. TiVo, unfortunately, is not an outlier with regard to its experience with the inter partes review system. According to TiVo’s research, for patents that have survived a validity challenge in district court or the ITC and are also challenged before the Board, the Board institutes inter partes review at a rate of 58% and cancels claims upon which review was instituted at a rate of 63%. These numbers are only marginally lower than the corresponding rates for all challenged patents, which are 66% and 75%, respectively. In other words, patents that have survived an expensive validity challenge in district court or the ITC are almost as likely to be reviewed—and ultimately invalidated—by the Board as a patent that was never the subject of litigation. It is little wonder that accused infringers use inter partes reviews to gain a second bite at the invalidity apple. 

Amicus brief of TiVo Corporation at pages 6-9, footnotes omitted.

Article suggestion: Disparate treatment of incorporation by reference between §112 and §101

Tuesday, December 29th, 2020

If anyone is looking for a short article topic, they might want to look at Judge Taranto’s recent opinion for the Federal Circuit in ADAPTIVE STREAMING INC. v. NETFLIX, INC., No. 2020-1310 (Fed. Cir. Dec. 14, 2020) and compare it to Judge Lourie’s opinion for the Federal Circuit in Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d 1374 (Fed. Cir. 1999).

In Adaptive Streaming, the Federal Circuit takes into account material incorporated by reference in a patent specification to assess patent eligibility:

The written description, through material incorporated by reference, itself explains the familiarity of translation of content—from a format (including a language) of a sender to one suited to a recipient—as a fundamental communication practice in both the electronic and pre-electronic worlds. J.A. 337-38. We have held that the ideas of encoding and decoding image data and of converting formats, including when data is received from one medium and sent along through another, are by themselves abstract ideas, and accordingly concluded that claims focused on those general ideas governing basic communication practices, not on any more specific purported advance in implementation, were directed to abstract ideas.

ADAPTIVE STREAMING INC. v. NETFLIX, INC., No. 2020-1310 (Fed. Cir. Dec. 14, 2020)(slip. opinion at page 6).

In Atmel, however, the Federal Circuit noted that material incorporated by reference (from a non-patent document), could not be relied upon for §112,¶6 purposes:

Section 112, ¶ 6, however, does not have the expansive purpose of ¶ 1. It sets forth a simple requirement, a quid pro quo, in order to utilize a generic means expression. All one needs to do in order to obtain the benefit of that claiming device is to recite some structure corresponding to the means in the specification, as the statute states, so that one can readily ascertain what the claim means and comply with the particularity requirement of ¶ 2. The requirement of specific structure in § 112, ¶ 6 thus does not raise the specter of an unending disclosure of what everyone in the field knows that such a requirement in § 112, ¶ 1 would entail. If our interpretation of the statute results in a slight amount of additional written description appearing in patent specifications compared with total omission of structure, that is the trade-off necessitated by an applicant’s use of the statute’s permissive generic means term.

Atmel argues that even though the text of the Dickson article is not in the specification, sufficient structure is nevertheless disclosed in the specification, and that the district court erred in limiting possible structures corresponding to the high-voltage generating means to those structures included in the Dickson article. While we do agree with ISD that the district court properly held that the Dickson article may not take the place of structure that does not appear in the specification, the specification plainly states that “[k]nown Circuit techniques are used to implement high-voltage circuit 34. See On-Chip High Voltage Generation in NMOS Integrated Circuits Using an Improved Voltage Multiplier Technique, IEEE Journal of Solid State Circuits . . . .” ‘811 patent, col. 4, ll. 58-62. Atmel’s expert, Callahan, testified that this title alone was sufficient to indicate to one skilled in the art the precise structure of the means recited in the specification. The record indicates that that testimony was essentially unrebutted. That being the case, we conclude that summary judgment was improperly granted invalidating the ‘811 patent for indefiniteness under § 112, ¶ 2. We therefore reverse the grant of summary judgment of invalidity and remand for further consideration of other issues consistent with this opinion.

Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d 1374, 1382 (Fed. Cir. 1999)

Query: In what other cases has the Federal Circuit looked to material incorporated by reference when making §101 determinations?

Free Patent Law Casebook

Sunday, December 27th, 2020

I thought this was kind of cool: Excerpt from Masur & Ouellette’s Free Patent Law Casebook (Forthcoming Summer 2021) .

Update 12/28/2020:

Here is yet another free patent law casebook — note that the authors of each casebook welcome feedback on their texts: [‘The Invention, The Patent, and The Claim’ in Patent Law: An Open-Access Casebook].

Arthrex files its brief with the Supreme Court

Wednesday, December 23rd, 2020

Arthrex has filed its brief with the Supreme Court in United States of America v. Arthrex, Inc. et al. You can read the brief [here].

Federal Circuit to receive $33.5M for operating expenses in Covid relief/government funding legislation

Tuesday, December 22nd, 2020

I thought it was interesting that the COVID relief/government funding bill has a special carve out for the Federal Circuit. Other courts of appeal and district courts are allocated money in one big bolus of $5.3B. But, the Federal Circuit is called out separately and given $33.5M. That’s a lot of money — I wonder what that comes out to for every Rule 36 opinion that the court issues.


For salaries of officers and employees, and for nec- essary expenses of the court, as authorized by law, $33,500,000. In addition, there are appropriated such sums as may be necessary under current law for the salaries of the chief judge and judges of the court. 

You can read the text of the legislation starting at page 529 here: [Link].

Should you deliver your telephonic oral argument by sitting or standing?

Wednesday, December 9th, 2020

I saw a sketch today of two oral advocates making their presentations to the Supreme Court during Covid. Because they were making their presentations from remote locations, the sketches showed them seated at their desks. That raises an interesting question — what is the best position for an advocate to use when making a remote presentation, sitting or standing?

As a fan of stand-up desks, I have been attuned to several articles over the years that suggest we think better when in a standing position. Here is one such article that suggests tested individuals responded better to the Stroop test when in a standing position. [Link]. The Stroop test is a psychological test indicative of an individual’s processing ability.

I suppose at the end of the day the answer is particular to the individual. One might feel more relaxed seated at his/her desk and perform better for that reason; while, another might feel more alert when standing and perform better for that reason. But, it is worth considering the standing option.

Renaissance Woman

Saturday, December 5th, 2020

I did a post about a year and a half ago about a local student inventor [Link]. It was nice to see that she was recently named Time magazine’s “Kid of the Year.”

She is quite the Renaissance woman with interests ranging from detecting lead in drinking water, helping physicians identify opioid addiction in their patients, and using artificial intelligence to identify early cases of cyberbullying of teenagers.

So, what were you doing when you were 15?

Judge Chen gives a shout-out to patent prosecutors

Friday, December 4th, 2020

At the conclusion of the oral argument in IN RE GOOGLE TECHNOLOGY HOLDINGS LLC, No. 2019-1828 (Fed. Cir. Nov. 13, 2020), Judge Chen made a comment that will please patent prosecutors — noting the disparity between patent prosecution budgets and patent litigation budgets:

I have added this sound bite to the audio key for Judge Chen.

Before Arthrex

Tuesday, December 1st, 2020

Patently-O has the initial briefs for the U.S. v. Arthrex appeal at the Supreme Court [Link]. As I was reading the government’s brief and its assertions of how the Director of the Patent Office can purportedly control PTAB judges [Link], I was reminded of the DOJ/PTO’s brief before the Federal Circuit back in July of 2017 in Knowles Electronics LLC v. Iancu, 886 F.3d 1369 (Fed. Cir. 2018)(then-captioned Knowles Electronics LLC v. Matal). In that disinterested brief before the court, the government explained how the Director is the representative of the agency, i.e., the USPTO; but, the PTAB is the USPTO’s adjudicator. The Director can ask the PTAB to reconsider a decision. But, when the PTAB makes a decision, it is in reality an order of the agency itself. If the Director disagrees with a PTAB decision, he/she is free to challenge that decision at the Federal Circuit.

Indeed, Ingalls directly addresses the Director’s position in these appeals, not as a representative of the Board but as a representative of the agency as a whole. When the Board—the USPTO’s adjudicator—makes a decision, the “order of the agency’s designated adjudicator is in reality an order of the agency itself.” 519 U.S. at 268. The agency “may then be free to designate its enforcer/litigator as its voice before the courts of appeals.” Id. The agency’s litigator—in this case the USPTO Solicitor—while appearing on the side of the appellee, “is free to argue on behalf of the petitioner and to challenge the decision of the Board.” Id. at 270. Thus, if the Director (or Solicitor) disagrees with the Board’s decision, he need not argue in support of affirmance. This prevents “a ‘lopsided’ scheme whereby the Director can appear only in defense of the [Board’s] decisions.” Id. (citations omitted).3 

Footnote 3. Practically speaking, the Solicitor would not often argue in support of reversal of a Board decision because the agency would likely handle those cases administratively. For example, the Director can ask the Board to reconsider a decision. If the decision has already been appealed and the Director then determines that it is somehow defective, the Solicitor can seek a remand for the Board to reconsider.See, e.g.In re Bursey, No. 2016-2675 (Fed. Cir. Apr. 28, 2017) (nonprecedential) (remanding appeal upon Solicitor’s request to allow Board to reconsider); In re DiStefano, 562 Fed. App’x 984 (Fed. Cir. June 4, 2014); In re Shield, No. 2013-1562 (Fed. Cir. Apr. 16, 2014); In re Motorola Mobility LLC, No. 2012-1470 (Fed. Cir. Mar. 5, 2013).

DOJ/USPTO’s Supplemental Brief filed July 31, 2017 in Knowles Electronics LLC v. Iancu, 886 F.3d 1369 (Fed. Cir. 2018)(then-captioned Knowles Electronics LLC v. Matal).

This quote and the accompanying footnote 3 seem to suggest that it is really the Federal Circuit that controls the PTAB.

The Unified Theory of Patent Law

Saturday, November 7th, 2020

Not always correct

Thursday, November 5th, 2020

The oral argument of DANA-FARBER CANCER INSTITUTE v. ONO PHARMACEUTICAL, 964 F.3d 1365 (Fed. Cir. 2020) is probably an instructive case for those arguing cases before the Federal Circuit. When a judge — even a highly experienced judge — asserts how the mechanics of patent prosecution work, they just might be flat out wrong. That was the situation in the Dana-Farber oral argument, where Judge Lourie suggested that the inventors listed for a divisonal application must be the same as the inventors listed in the parent of that divisional application. Listen:

Oral argument of the day: Bikram’s Yoga College of India v. Evolation Yoga

Monday, October 26th, 2020

It is interesting that the 1952 Patent Act sets forth what is patent eligible in 35 U.S.C. §101 but does not expressly recite any exceptions. In contrast, the 1976 Copyright Act sets forth what is copyrightable in 17 U.S.C. §102(a) and Congress did expressly recite exceptions in 17 U.S.C. §102(b).

Today’s oral argument is a few years old. It is the Ninth Circuit oral argument of Bikram’s Yoga College of India v. Evolation Yoga, 803 F.3d 1032 (9th Cir. 2015). The case addressed whether a sequence of twenty-six yoga poses and two breathing exercises is entitled to copyright protection. Because the case was argued at the Ninth Circuit, there is video of the argument.

You can read the Ninth Circuit opinion here: [Link].

Quotes of the day

Friday, October 23rd, 2020

As the nation’s lone patent court, we are at a loss as to how to uniformly apply § 101. All twelve active judges of this court urged the Supreme Court to grant certiorari in Athena to provide us with guidance regarding whether diagnostic claims are eligible for patent protection. There is very little about which all twelve of us are unanimous, especially when it comes to § 101. We were unanimous in our unprecedented plea for guidance. 

AMERICAN AXLE & MANUFACTURING, INC. v. NEAPCO HOLDINGS LLC, NEAPCO DRIVELINES LLC, 2018-1763, Order (Fed. Cir. October 23, 2020)(Judge Moore concurrence at page 2).

Section 101 is clear: “[w]hoever invents or discovers any new and useful process,” like the claims here, “may obtain a patent.” Yet, we have struggled to consistently apply the judicially created exceptions to this broad statutory grant of eligibility, slowly creating a panel-dependent body of law and destroying the ability of American businesses to invest with predictability. 

AMERICAN AXLE & MANUFACTURING, INC. v. NEAPCO HOLDINGS LLC, NEAPCO DRIVELINES LLC, 2018-1763, Order (Fed. Cir. October 23, 2020)(Judge Moore concurrence at page 2).

The majority concluded as a matter of law that claims to a manufacturing process are not eligible for patent protection because they are directed to a law of nature even though no law of nature appears in the claims, the patent, or the prosecution history. Under the majority’s new “Nothing More” test, claims are ineligible when they merely make use of a natural law. 

AMERICAN AXLE & MANUFACTURING, INC. v. NEAPCO HOLDINGS LLC, NEAPCO DRIVELINES LLC, 2018-1763, Order (Fed. Cir. October 23, 2020)(Judge Moore concurrence at page 3).

Instead, our decision in American Axle is a patent killing judicial exception of our own creation. The claims here are directed to a process for manufacturing car parts—the type of process which has been eligible since the invention of the car itself. They do not preempt the use of a natural law, a building block of science, which should be freely available to all. To nonetheless hold these claims ineligible, the majority broadens the judicial exceptions in a way that threatens to swallow the whole of the statute. Such a rejection of the plain language of the patent statute in favor of a vast and amorphous judicial exception in which we Federal Circuit judges get to decide de novo not just the legal principles, but the application of the science itself, cannot stand.

AMERICAN AXLE & MANUFACTURING, INC. v. NEAPCO HOLDINGS LLC, NEAPCO DRIVELINES LLC, 2018-1763, Order (Fed. Cir. October 23, 2020)(Judge Moore concurrence at page 4).

Once upon a midnight dreary, while I pondered, weak and weary,
Over many a quaint and curious volume of forgotten lore—
    While I nodded, nearly napping, suddenly there came a tapping,
As of some one gently rapping, rapping at my chamber door.
“’Tis some visitor,” I muttered, “tapping at my chamber door—
            Only this and nothing more.”

“The Raven” by Edgar Allan Poe, first stanza.

You can read the entire concurring opinion here: [Link].

You can read “The Raven” by Edgar Allan Poe here: [Link].