Archive for December, 2017

Brott v. US

Saturday, December 30th, 2017

There is an interesting new petition for writ of certiorari pending before the Supreme Court of the United States.  The question presented is:

Can the federal government take private property and deny the owner the ability to vindicate his constitutional right to be justly compensated in an Article III Court with trial by jury?

Sound familiar?

The case is Brott v. United States.  You can read the petition for writ of certiorari [here].  You can review the amicus briefs [here].  A related case has been stayed at the Federal Circuit.



Quote of the day

Saturday, December 30th, 2017

“A patent is property carried to the highest degree of abstraction — a right in rem to exclude, without a physical object or content.”

Oliver Wendell Holmes, Jr. in his letter to Frederick Pollock dated June 26, 1894.

A blast from the past

Thursday, December 28th, 2017

I found myself feeling a bit nostalgic for the articulate and insightful questioning during oral arguments of retired Chief Judges Michel and Rader.  If you are like me, and appreciated their knowledge of patent law, I thought you might enjoy listening to an oral argument recording from the past that features them both, along with Judge Linn — a formidable trio.

Here is the oral argument from 2007 in Ortho-McNeil v. Mylan Labs:



Trademarks for Aroma Marketing

Wednesday, December 20th, 2017

I happened to see a report on TV the other day about aroma marketing.  For example, Westin Hotels uses aroma marketing by circulating a White Tea aroma at the entrances to their hotels. [Link].  It would be interesting to see an article that updates how many trademark/service mark applications have been allowed for aromas/scents.  Here’s a link for more on aroma marketing: [Link].

Who let the dogs out?

Sunday, December 17th, 2017

While takings of patent rights is an unusual cause of action faced by the Federal Circuit, the court recently encountered an even more unusual takings case — one related to sleep deprivation caused by barking dogs. Barth v. U.S.  Of course, this case “begs” the question:  “Who let the dogs out?”

Article suggestion

Friday, December 8th, 2017

If somebody is looking for an article to write, let me suggest one.  I think it would be helpful to have a scholarly article published somewhere that discusses the role, responsibilities, and decision making processes of the Solicitor’s Office (SO) of the USPTO.  Particularly, it would be interesting to know the decision process the SO goes through in deciding which IPR decisions of the PTAB to defend and which not to weigh in on at the Federal Circuit.  Also, it would be interesting to know the decision making process the SO goes through in deciding whether to defend a PTAB decision or admit that the PTAB was simply wrong.  And, it would be helpful to understand if/when the SO can simply send a decision back to the PTAB for reconsideration.  Moreover, it would be interesting to know how such authority is vested in the SO.

One of these instances popped up today at the Federal Circuit and made me wonder about this topic.  The SO of the USPTO effectively vetoed a portion of a PTAB decision by conceding to the Federal Circuit that the PTAB erred.  Because the PTAB erred — i.e., the Federal Circuit ruled that way today — the decision by the SO in retrospect seems like it was the right thing to do.  It was an expeditious way of proceeding; it prevented the SO from wasting the court’s time; and, it prevented officers of the court from making frivolous arguments to the court.  However, what about closer calls.  The authority of the SO to concede that the PTAB erred effectively gives the Director power to reverse a decision of the PTAB that the Director does not like.

The case that I am referring to was decided today, In re Mouttet [Link].  The pertinent portion of the Federal Circuit opinion is quoted below:

On appeal, the PTO’s Director concedes that the Board erred in rejecting claims 35–40 as indefinite and is not defending that rejection. Appellee’s Br. 1. The Direc- tor agrees with Mr. Mouttet “that claims 35–40 do not improperly merge statutory classes,” but are method claims, “drawn only to practicing the claimed method in a processor possessing the requisite structure.” Id. at 1, 5. We agree. Claim 35 recites “[a] method of performing a division process using the processor of claim 1 comprising” steps of “programming,” “setting a bit number,” “calculat- ing,” “comparing,” another “comparing,” and “ending the division process.” J.A. 15. Claims 36–40 further specify process steps. J.A. 15–16. We therefore reverse the Board’s rejection of claims 35–40.


There is an interesting footnote in the Supreme Court case of Brenner v. Manson.  It reads:

[6] We find no warrant for this curious limitation either in the statutory language or in the legislative history of § 1256. Nor do we find persuasive the circumstance that the Commissioner may not appeal adverse decisions of the Board of Appeals. 35 U. S. C. §§ 141, 142, and 145 (1964 ed.). As a member of the Board and the official responsible for selecting the membership of its panels, 35 U. S. C. § 7 (1964 ed.), the Commissioner may be appropriately considered as bound by Board determinations. No such consideration operates to prevent his seeking review of adverse decisions rendered by the CCPA.

Brenner v. Manson, 383 U.S. 519, 523 (1966)(emphasis added).

Perhaps there has been some intervening legislation since Brenner v. Manson that no longer causes the Commissioner (now Director) to be bound by Board determinations.  But, if that is not the case, then it would be interesting to know whether “being bound by Board determinations” requires the Director to defend all of the Board’s determinations.

At any rate, if you write such an article, I would be pleased to read it.

Update 1/25/18:

A reader was kind enough to point me in the direction of some material that touches on the issues raised above:

1. Professor Dmitry Karshtedt’s recent article: “Acceptance Instead of Denial: Pro-Applicant Positions at the PTO” [Link]; and

2.  The DOJ/USPTO’s brief in Knowles v. Matal (decision pending) [Link].  Interestingly, the DOJ/USPTO assert that the USPTO solicitor’s office can assert any position it chooses — and even argue against the PTAB position–when the appeal is taken to the Federal Circuit.  That might be unsettling to the 300+ PTAB judges at the USPTO.

Query#1:  If PTAB judges are required to meet certain legal and technical qualifications in order to provide the particular expertise of the Patent Office, are similar qualifications required of the SO’s office, i.e., the people asserting the right to take any position they choose on appeal?

Query#2:  The USPTO’s brief relies on the Supreme Court’s Ingalls v. Office of Workers’ Compensation Programs case — is the PTO really structured the same as the Office of Workers’ Compensation Programs?

Query#3:  If the SO’s office were ever to refuse to defend a PTAB decision, could the PTAB represent itself?  See Justice Scalia’s dissenting opinion in Ingalls at 273 (“The second argument offered in support of the view that the Director is a proper respondent when review is sought of an order of the Board is that (1) Rule 15(a) requires the naming of someone representing the agency, and (2) the Director is certainly a more sensible candidate than the Board. Ante, at 267, 268. The second part of this analysis, the faute de mieux point, is questionable: The Board could readily develop a staff to defend its judgments, and it is hard to imagine a worse defender than an entity that is free to disagree (and often does disagree) with the order under review.”).

Update 1/29/18:

Query #4: If PTAB judges are required to submit financial data to ensure impartiality, does the same requirement apply to other members of the Office who take a position opposite to the PTAB position on appeal?

Query #5:  When the USPTO handles an initial PTAB decision “administratively,” how is that memorialized on PAIR?




Oral argument of the day: In re Levenstein

Wednesday, December 6th, 2017

The oral argument of the day is from IN RE LEVENSTEIN, No. 2017-1067 (Fed. Cir. Oct. 10, 2017).

The oral argument focuses on 35 U.S.C. §101.  If you have not heard, section 101 has been in the news in recent years.

You can listen to the oral argument below:

You can review the Federal Circuit judgment [here].

IPR joinder issue returns to the Federal Circuit

Monday, December 4th, 2017

You might recall that in Nidec v. Zhongshan the Federal Circuit frowned upon some of the USPTO’s joinder practices under the AIA.  It was unnecessary for the Federal Circuit to resolve the joinder issue in Nidec, however, because the Federal Circuit was able to affirm the PTAB without having to reach the joined issue.

The Federal Circuit will have another opportunity to address joinder in an upcoming matter.   A petition for a writ of mandamus has been filed in In re Windy City Innovations.  The matter concerns joined IPR’s brought by Facebook against Windy City Innovations.

You can review the briefing here:

Petitioner’s brief: [Link]

Respondent’s brief: [Link]

Petitioner’s reply brief: [Link].

The PTAB’s opinion is available as an Exhibit to the Petitioner’s brief.

In a curious turn of events, two of the three PTAB judges noted in concurring remarks in the PTAB opinion that they did not believe that the statute authorized same-party joinder; however, despite that belief, they ruled in favor of permitting joinder because the Director had noted in a previous case that same-party joinder should be permitted:


My view is that § 315(c), when properly interpreted, does not authorize same-party joinder because a party cannot be joined to a proceeding “as a party” if it already is a party to that proceeding. In this respect, I agree with the reasoning set forth in SkyHawke Technologies, LLC v. L&H Concepts, LLC, Case IPR2014-01485, slip op. 3–4 (Mar. 20, 2015) (Paper 13).

I recognize, however, that the Director has taken the position before the U.S. Court of Appeals for the Federal Circuit that § 315(c) authorizes same-party joinder. See, e.g., Brief for Intervenor – Director of the United States Patent and Trademark Office at 32–39, Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., No. 2016-2321 (Fed. Cir. filed Jan. 12, 2017). Despite my disagreement with that interpretation, because our decision on whether to grant Facebook’s Motion for Joinder is an exercise of the Director’s authority on the Director’s behalf, I concur with the Decision’s application of the Director’s view of § 315(c).


Is “many, many times” equivalent to “rampant” use of stacked panels?

Saturday, December 2nd, 2017

In the oral argument of Oil States, Justice Kennedy asked what would be the situation if the stacking of panels by the Chief Judge of the PTAB were rampant:

11   MR. KISE: Well, Mr. Chief Justice,

12   the panel packing, if you will, mentioned by

13   Petitioner in the briefs, I don’t believe -­

14   and — and I’ll leave it to the government to

15   — to have the exact statistics — precise

16   statistics, but I don’t believe that’s taken

17   place more than one or two times, and I don’t

18   believe it’s taken place with respect -­

19   JUSTICE KENNEDY: Well, suppose it

20   were rampant.

I suppose rampant is a subjective term; but, in the oral argument of Nidec v. Zhongshan, the Solicitor for the USPTO, who once served as the acting Chief Judge of the PTAB, commented that over the years panels of the Board have been expanded “many, many times.”

You can listen to the sound bite from Nidec here: [Listen].  Or, you can find it at the 25 min 40 second mark of the oral argument in Nidec Motor Corp. v. ZHONGSHAN BROAD OCEAN MOTOR, 868 F.3d 1013 (Fed. Cir. 2017), available at: [Link].   Or, you can review the exchange from Nidec below:

Judge Reyna: What kind of uniformity or certainty do we have in that where the PTAB can look at a prior decision and say well we don’t like that, let’s jump back in there and change that?

PTO: Well, ….

Judge Wallach: How does the Director choose which judge to assign to expand the panel?

PTO: Uh, that’s provided, your Honor, by our standard operating procedure. And, the Chief Judge actually makes that decision.And, the judges are selected based on their technical and legal competency. And, over the years, many many panels at the Board have been expanded. In fact if you looked at the thirty . . . .

Judge Reyna: Are they selected on whether they’re going to rule in a certain way?

PTO: Uh, well, people can be placed on the panel . . . for example, the Director can place him or herself on the panel, and certainly the Director knows how they’re going to rule. Nidec has not said and they say at their blue brief at page 43 that they don’t challenge the independence of these judges on this panel. Um, these judges were not selected and told to make a particular decision. If judges could be told to make a particular decision, there would be no need to expand a panel in the first place.


Audio of Supreme Court Oral Argument in Oil States v. Greene’s Energy Group

Friday, December 1st, 2017

The audio recording of the oral argument in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC is now available.  You can listen to it below:

Audio of Supreme Court Oral Argument in SAS v. Matal

Friday, December 1st, 2017

The audio recording of the oral argument in SAS Institute Inc. v. Matal is now available.  You can listen to it below: