Judge Dyk has apparently been loaned out to the U.S.District Court of Delaware where he is sitting by designation. You might have noticed that he did not hear oral arguments at the Federal Circuit in August — nor in July if I remember correctly.
You can read Judge Dyk’s recent district court opinion and order in BAXALTA INCORPORATED v. GENENTECH, INC., Civil Action No. 17-509-TBD (D. Del. Aug. 7, 2018) at this [link].
I suppose it is somewhat fun for appellate judges to be fact finders in district court bench trials — fact finding expeditions are not something they have an opportunity to do at the appellate level . . . .
Judicial independence at administrative agencies seems to be a universal issue these days. In response to a recent removal of a judge from an immigration matter, retired immigration judges and former members of the Board of Immigration Appeals recently published a letter calling on the Executive Office for Immigration Review (EOIR) to refrain from interfering with the decisions of its judges. The letter, reproduced below, highlights beliefs and concerns that citizens would have with respect to any judicial proceeding, including one conducted by an appeal board like the Patent Trial and Appeal Board:
“An independent judiciary is imperative to democracy.”
“[E]rrors should be corrected through the appeals process, not through interference by managers.”
“The agency therefore removed the case from the docket of a capable judge in order to ensure an outcome that would please its higher-ups.”
“[M]anagement exists to fulfill an administrative function, not to impede on the decision-making process of its judges.”
“As a democracy, we expect our judges to reach results based on what is just, even where such results are not aligned with the desired outcomes of politicians.”
You can view the entire letter below and at this [link].
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Retired Immigration Judges and Former Members of the Board of Immigration Appeals Statement in Response to Latest Attack on Judicial Independence
July 30, 2018
On Thursday, July 26, 2018, the Executive Office for Immigration Review (EOIR), in a costly and inefficient use of the agency’s resources, sent an Assistant Chief Immigration Judge to the Philadelphia Immigration Court to conduct a single preliminary hearing. Although there was no indication of any legitimate basis for doing so, the case had been taken off of the calendar of an experienced Immigration Judge in Philadelphia, apparently for the sole reason that the judge had exercised independent judgment by asking for briefs on the issue of whether the respondent had in fact received notice of the hearing. The Assistant Chief Judge (a part of EOIR’s management) ordered the respondent removed in absentia without further inquiry into such question, fulfilling the purpose for which she was sent to Philadelphia.
An independent judiciary is imperative to democracy. Immigration Judges have always struggled to maintain independence while remaining in the employ of an enforcement agency, the Department of Justice, and serving at the pleasure of a political appointee, the Attorney General. Although not entitled to the same due process safeguards as criminal proceedings, the consequences of deportation can be as harsh as any criminal penalty. As their decisions often have life-or-death consequences, Immigration Judges must be afforded the independence to conduct fair, impartial hearings. For this reason, some important due process safeguards are required in deportation proceedings, and errors should be corrected through the appeals process, not through interference by managers.
Last Thursday’s case had been remanded by Attorney General Jeff Sessions. In the absence of another explanation, it would seem that EOIR’s management did not believe Sessions’ purpose in remanding the case was for an Immigration Judge to then exercise independent judgment to ensure due process. The agency therefore removed the case from the docket of a capable judge in order to ensure an outcome that would please its higher-ups. While as former Immigration Judges and BIA Members with many decades of combined experience, we appreciate the pressures on EOIR’s leadership, such interference with judicial independence is unacceptable. EOIR’s management exists to fulfill an administrative function, not to impede on the decision-making process of its judges. EOIR more than ever needs leadership with the courage to protect its judges from political pressures and to defend their independence. As a democracy, we expect our judges to reach results based on what is just, even where such results are not aligned with the desired outcomes of politicians.
If you are like me, you are probably getting tired of typing out “well-understood, routine, conventional activity.” I suspect a new acronym is coming down the pike one of these days. “WURCA” seems the obvious choice. “WURACA” if you want to add the grammatically implicit “and.” Interesting aside, I believe that WURACA was the Aztec god of patent eligibility.
By the way, do you find the recent variations in PHOSITA annoying? I hear a lot of these variations used during the oral arguments: POSA, POSITA, etc. I think I might have even seen or heard OOSITA. Why don’t we just stick with PHOSITA . . . and WURCA.
Acronyms are interesting during oral argument. The cynic in me is suspicious that at least one of the judges of the Federal Circuit likes to throw around acronyms when a non-patent lawyer is arguing a patent case or a Supreme Court advocate shows up at the Federal Circuit to argue a patent case. Acronyms or abbreviations like ODP, DOE, and even PHOSITA are tricky ones for the uninitiated.
Judge O’Malley penned a dissent last week while sitting by designation with the 9th Circuit. The dissent might be of interest to some as it concerns agency action and the Chenery Doctrine.
You can read her dissent in ALTERA CORPORATION & SUBSIDIARIES v. COMMISSIONER OF INTERNAL REVENUE, No. 16-70496 (9th Cir. July 24, 2018) [here].
You can watch the video of the oral argument [here].
The oral argument of the week is from PHILIPS LIGHTING NORTH AMERICA v. WANGS ALLIANCE CORPORATION, No. 2017-1526 (Fed. Cir. Apr. 18, 2018). The oral argument is interesting for its discussion of “design choice” as well as other issues concerning motivation to combine references in an obviousness argument.
Philips complains that the Board did not identify the specific “affirmative reason” for a person of skill looking at Hochstein to adopt the alternative configuration in Hildebrand. But in the circumstances of this case, we conclude, Philips is demanding too much. Under KSR, we see no need for more than what the Board found in this case, including that (1) there were just two obvious design choices in the respect put at issue (Hochstein and Hildebrand), which solve the same problem in the same way but with the filter and current-conducting network swapped in their locations, (2) the two references “show the demand for designs that solve the known problem,” id. at 33; (3) Hildebrand’s location choice was a common and approved design that could be used in Hochstein; and (4) Hochstein would not malfunction if modified to use such a design. These findings suffice to establish a reason for a skilled artisan, seeking to solve the status-test problem, to use a three-component circuit arrangement as found in both references and to choose either of the two disclosed orders of the first two components within that arrangement—specifically, the order that is especially common in the art and that is used in the ‘988 patent. See KSR, 550 U.S. at 416 (combining “familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results”).
PHILIPS LIGHTING NORTH AMERICA v. WANGS ALLIANCE CORPORATION, No. 2017-1526 (Fed. Cir. Apr. 18, 2018).
During the oral argument, the appellant repeatedly referenced three cases: Metalcraft v. Toro, ActiveVideo v. Verizon, and Innogenetics v. Abbott. Since the court’s opinion does not mention those cases, I thought it might be helpful to reproduce them below for your reference as you listen to the oral argument.
The district court rejected Toro’s motivation to combine argument. It recognized that “a patent `composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art'” and that “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” J.A. 13-14 (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418-19, 127 S.Ct. 1727, 167 L.Ed.2d 705 (2007)). It concluded that Toro failed to raise a substantial question of validity, stating Toro offered “no reason, and the Court cannot imagine one, that a person of ordinary skill in this field would combine a motorcycle shock with a suspended truck cab and come up with a suspended operator platform.” J.A. 13-14.
On appeal, Toro argues the district court’s analysis is inconsistent with KSR, 550 U.S. at 420-21, 127 S.Ct. 1727, which stated: “The idea that a designer hoping to make an adjustable electronic pedal would ignore Asano because Asano was designed to solve the constant ratio problem makes little sense. A person of ordinary skill is also a person of ordinary creativity, not an automaton.” Toro argues it would have been obvious to a person of skill in the art to combine Henriksson and Sasaki because Henriksson sought to solve the problem of transmission of shock loads to the operator and specified conventional and telescope-type shock absorbers as methods of reducing shock loads.
We hold that the district court’s finding that there would not have been a motivation to combine is not clearly erroneous. The district court correctly acknowledged that it is not enough for Toro to merely demonstrate that elements of the claimed invention were independently known in the prior art. Often, every element of a claimed invention can be found in the prior art. In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000). Moreover, Toro merely identifies a problem that Henriksson sought to solve. However, “knowledge of a problem and motivation to solve it are entirely different from motivation to combine particular references.” Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1373 (Fed. Cir. 2008).
We agree with the district court that Toro provides no explanation or reasoning for concluding that one of skill in the art would have combined these particular references to produce the claimed invention. Without any explanation as to how or why the references would be combined to arrive at the claimed invention, we are left with only hindsight bias that KSR warns against. See KSR, 550 U.S. at 421, 127 S.Ct. 1727. And while we understand that “[t]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation,” we also recognize that we cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention. See KSR, 550 U.S. at 419, 421, 127 S.Ct. 1727. For these reasons, we conclude that the district court did not abuse its discretion in rejecting Toro’s obviousness defense and determining that Toro did not raise a substantial question of validity.
Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017).
We agree with the district court that the obviousness testimony by Verizon’s expert was conclusory and factually unsupported. Although Verizon’s expert testified that “[t]hese are all components that are modular, and when I add one, it doesn’t change the way the other one works,” J.A. 4709, he never provided any factual basis for his assertions. The expert failed to explain how specific references could be combined, which combination(s) of elements in specific references would yield a predictable result, or how any specific combination would operate or read on the asserted claims. Rather, the expert’s testimony on obviousness was essentially a conclusory statement that a person of ordinary skill in the art would have known, based on the “modular” nature of the claimed components, how to combine any of a number of references to achieve the claimed inventions. This is not sufficient and is fraught with hindsight bias. See KSR, 550 U.S. at 418, 127 S.Ct. 1727 (“A patent composed of several elements is not proved obvious by merely demonstrating that each of its elements was, independently, known in the prior art.”); Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1373-74 (Fed.Cir. 2008) (“Such vague testimony would not have been helpful to a lay jury in avoiding the pitfalls of hindsight that belie a determination of obviousness.”).
1328*1328 The opinion by Verizon’s expert regarding the motivation to combine references was likewise insufficient. Verizon’s expert testified that:
The motivation to combine would be because you wanted to build something better. You wanted a system that was more efficient, cheaper, or you wanted a system that had more features, makes it more attractive to your customers, because by combining these two things you could do something new that hadn’t been able to do before.
J.A. 4709-10. This testimony is generic and bears no relation to any specific combination of prior art elements. It also fails to explain why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does. See KSR, 550 U.S. at 418, 127 S.Ct. 1727 (“[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does … because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.”); Innogenetics, 512 F.3d at 1373 (Fed.Cir.2008) (“[K]nowledge of a problem and motivation to solve it are entirely different from motivation to combine particular references….”). Because the record evidence was insufficient for a reasonable jury to support a determination of obviousness, the district court’s grant of ActiveVideo’s JMOL on obviousness was not erroneous.
Dr. Patterson merely lists a number of prior art references and then concludes with the stock phrase “to one skilled in the art it would have been obvious to perform the genotyping method in [claims 1-9 & 12-13] of the ‘704 patent.”[2] “[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed.Cir.2006); see also KSR Int’l Co. v. Teleflex Inc., ___ U.S. ___, 127 S.Ct. 1727, 1741, 167 L.Ed.2d 705 (2007) (“To facilitate review, this analysis should be made explicit.”) (citing Kahn, 441 F.3d at 988). Nowhere does Dr. Patterson state how or why a person ordinarily skilled in the art would have found the claims of the ‘704 patent obvious in light of some combination of those particular references. As the district court found: “It is not credible to think that a lay jury could examine the Cha application, the Resnick ‘718 patent that defendant cited as prior art or any of the other references and determine on its own whether there were differences among them and the ‘704 patent.” Innogenetics, N.V. v. Abbott Labs., No. 05-0575-C, slip op. at 14 (W.D.Wis. Jan. 3, 2007). Such vague testimony would not have been helpful to a lay jury in avoiding the pitfalls of hindsight that belie a determination of obviousness. See Graham v. John Deere Co., 383 U.S. 1, 36, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966) (discussing the “importance of guarding against hindsight… and resisting] the temptation to read into the prior art the teachings of the invention in issue” when considering the obviousness of a patent).
On appeal, Abbott argues in a single sentence, without any explanation, that the district court erred in concluding that Dr. Patterson did not offer any evidence of a “motivation to combine” the various prior art references that he opined rendered the claims of the ‘704 patent obvious. To be sure, Dr. Patterson suggested that one of skill in the art was motivated to find a method capable of genotyping because at least one prior art reference had disclosed that “different genotypes of HCV respond differently to interferon therapy.” The district court was nevertheless correct that knowledge of a problem and motivation to solve it are entirely different from motivation to combine particular references to reach the particular claimed method. Innogenetics, slip op. at 14 (“A generalized motivation to develop a method is not the kind of motivation required by the patent laws.”). We cannot conclude that the district 1374*1374 court abused its discretion when it precluded Dr. Patterson’s vague and conclusory obviousness testimony which did not offer any motivation for one skilled in the art to combine the particular references he cites in order to practice the claimed method.[3]
Abbott also argues that there is no requirement that an expert opine on motivation to combine references, and that motivation can be established by other witnesses or the prior art. Abbott is correct that an expert is not the only source for evidence that it would be obvious for one skilled in the art to combine references to reach the claimed method. But, as the district court held, “some kind of motivation must be shown from some source, so that the jury can understand why a person of ordinary skill would have thought of either combining two or more references or modifying one to achieve the patented method.” Id. at 13.
Just for my own benefit for future reference, here is a related quote from Personal Web Technologies v. Apple:
The Board’s reasoning is also deficient in its finding that a relevant skilled artisan would have had a motivation to combine Woodhill and Stefik in the way claimed in the ‘310 patent claims at issue and would have had a reasonable expectation of success in doing so. The Board’s most substantial discussion of this issue merely agrees with Apple’s contention that “a person of ordinary skill in the art reading Woodhill and Stefik would have understood that the combination of Woodhill and Stefik would have allowed for the selective access features of Stefik to be used with Woodhill’s content-dependent identifiers feature.” Id. at *8 (emphasis added). But that reasoning seems to say no more than that a skilled artisan, once presented with the two references, would have understood that they could be combined. And that is not enough: it does not imply a motivation 994*994 to pick out those two references and combine them to arrive at the claimed invention. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”); InTouch Techs., Inc. v. VGO Communications, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014).
If the Board’s statement were read more broadly, it would not be adequately explained and grounded in evidence. Indeed, the Board nowhere clearly explained, or cited evidence showing, how the combination of the two references was supposed to work. At least in this case, such a clear, evidence-supported account of the contemplated workings of the combination is a prerequisite to adequately explaining and supporting a conclusion that a relevant skilled artisan would have been motivated to make the combination and reasonably expect success in doing so.
Personal Web Technologies, LLC v. Apple, Inc., 848 F.3d 987, 993-94 (Fed. Cir. 2017).
If the first wearable pair of eyeglasses — i.e., the handheld type that one holds on the bridge of the nose — were invented in the 13th century in Italy, when do you think “legs” were invented? Legs are the portion that fit over the wearer’s ears.
The Federal Circuit got a little taste of patent prosecution in deciding the recent case of In re Power Integrations. The patent at issue had undergone ex parte reexamination, been appealed to the Board, and then appealed to the Federal Circuit. In parallel litigation, the patent had also undergone claim construction by a district court judge. The claim construction conducted by the Board under BRI differed from that of the district court judge who construed the claim under the Phillips standard used for patent litigation.
In the Federal Circuit’s first appeal decision, the Federal Circuit remanded the case back to the Board so that the Board could take into consideration the analysis performed by the district court judge. The court said, in part:
We do not hold that the board must in all cases assess a previous judicial interpretation of a disputed claim term. Nor do we express any view on the merits of Power Integrations’ proposed construction of the term “coupled to.” We hold only that the board on remand should carefully and fully assess whether the disputed claims of the ‘876 patent are anticipated by the prior art, setting out its reasoning in sufficient detail to permit meaningful appellate review. See Lee, 277 F.3d at 1346 (emphasizing that remand is required where a board decision “is potentially lawful but insufficiently or inappropriately explained” (citations and internal quotation marks omitted)); see also Nazomi Commc’ns, Inc. v. Arm Holdings, PLC, 403 F.3d 1364, 1371 (Fed.Cir.2005) (vacating and remanding a district court’s claim construction determination because the court did “not supply the basis for its reasoning sufficient for a meaningful review”).
Power Integrations, Inc. v. Lee, 797 F.3d 1318, 1327 (Fed. Cir. 2015).
The Board, however, declined to take into consideration the district court’s claim construction. The Board wrote in its second opinion:
When the second Board opinion was appealed to the Federal Circuit, the court did not seem too pleased with the “unwarranted” language. Judge Moore, for example, commented:
It is interesting that the Solicitor’s Office did not address Judge Moore’s question of whether there is someone who reviews Board opinions after they are drafted by the Board panel members. It has been a mystery to the patent bar how the Board operates internally. Shrouded silence only fosters rumor and speculation. It would be useful if the Federal Circuit panels would press the Solicitor’s Office for more detail during oral argument about how the Board operates internally. Presumably, every Federal Circuit panel wants to make sure it has jurisdiction before deciding a case. And, the Federal Circuit does not have jurisdiction to decide a case that has been decided not in accordance with the statutes and regulations governing the operation of the Board, i.e., illegally.
I am thinking of writing an article or blog post about “use” infringement. So, I thought I would post some materials here — mainly for my own use; but, perhaps others would be interested, as well.
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.
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.
BLACKBIRD TECH LLC, DBA BLACKBIRD TECHNOLOGIES v. ELB ELECTRONICS, INC., ETI SOLID STATE LIGHTING INC., FEIT ELECTRIC COMPANY INC., __ F.3d __ (Fed. Cir. 2018)(slip opinion at pp. 4-5 of the dissent).
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.
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).
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.
“THE RULE 36 STATUE”
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”:
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].
