Archive for January, 2018

Going Rogue

Sunday, January 28th, 2018

In this earlier post [link], I noted that a reader had pointed me in the direction of the pending Knowles v. Matal case at the Federal Circuit.  In the briefing of that case, the DOJ and USPTO have indicated that in rare circumstances the USPTO might choose to take a position opposite to that rendered by the PTAB, when the PTAB’s decision is appealed to the Federal Circuit.  I thought it might be of interest to post the pertinent portion of the brief below (with footnotes moved to the end and emphasis added in bolded underlines):


C. The USPTO’s statutory authority allows it to choose whether to intervene and, if so, what position to take

Because Article III of the Constitution “poses no bar” to the USPTO’s participation in an appeal from a USPTO decision, see Ingalls, 519 U.S. at 264, we next address the USPTO’s statutory authority to intervene and the extent of that authority. By statute, the Director of the USPTO has a right to intervene in every inter partes case arising from the USPTO. And the Director has statutory authority to take any position in those cases.

Before Congress passed the America Invents Act (AIA) in 2011, the Patent Act stated, “In an ex parte case or any reexamination case, the Director shall submit to the court in writing the grounds for the decision of the Patent and Trademark Office, addressing all the issues involved in the appeal.” 35 U.S.C. § 143 (2002) (emphasis added). Thus, before the AIA, the USPTO was, by statute, a party to every appeal from an inter partes reexamination. The AIA amended that sentence, removing “any reexamination case” from the category of appeals in which the agency was obligated to appear. 35 U.S.C. § 143 (2012).


Instead, Congress added a sentence addressing the agency’s authority to intervene, at its discretion, in appeals from inter partes cases, including inter partes reexaminations. The new sentence states, “The Director shall have the right to intervene in an appeal from a decision entered by the Patent Trial and Appeal Board . . . in an inter partes or post-grant review under chapter 31 or 32.” 35 U.S.C. § 143 (2012). Although that sentence does not specifically mention inter partes reexaminations, which were being phased out by the AIA, Congress explained elsewhere in the Act that “the Director’s right under the fourth sentence of section 143”—the sentence just quoted—“to intervene in an appeal from a decision entered by the Patent Trial and Appeal Board shall be deemed to extend to inter partes reexaminations.” AIA, Pub. L. No. 112-29 § 7(e)(4), 125 Stat. 284, 315 (2011); see also 157 Cong. Rec. S1377 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (“In the effective-date provision at the end of section [7], various existing [appeal] authorities are extended so that they may continue to apply to inter partes reexaminations commenced under the old system.”); see also Joseph Matal, Legislative History of the America Invents Act: Part II of II, 21 FED. CIR. B.J. 539, 542 n.25 (2012).

Furthermore, the Director’s right to intervene in inter partes reexaminations extends to those reexaminations “that are requested . . . before the effective date” of the AIA. Pub. L. No. 112-29 § 7(e)(4), 125 Stat. 284, 315. In other words, the change in the law was made applicable to all inter partes reexaminations that were requested before the AIA came into effect. Thus, the USPTO’s participation in appeals from inter partes reexaminations went from an obligation to a right, even for inter partes reexaminations that were already pending.

The statute thus spells out the situations in which the Director has the right to intervene, which include inter partes reexaminations, inter partes reviews, and other inter partes cases in the USPTO. This Court therefore routinely asks the USPTO if it plans to intervene in inter partes cases, particularly in cases like this one where the Court would otherwise lose the benefit of the adversarial process. The statute also clearly specifies the cases in which the Director is automatically a party—ex parte cases. 35 U.S.C. § 143 (2012).

The statute does not discuss or limit the positions the Director may take in any type of case. In ex parte cases, the statute merely specifies that the Director must “address[ ] all of the issues raised in the appeal,” 35 U.S.C. § 143 (2012); in inter partes cases, even that requirement does not exist. Although the Director typically intervenes on the side of the appellee, even in that posture, the Director may take any substantive position he likes.2


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

In practice, the USPTO Director typically intervenes in appeals from inter partes cases in only two particular types of situations. Recognizing that the two parties can adequately represent the adverse sides of the dispute if both are present but not when the appellee has dropped out of the case, the Director will often intervene when the appellee has dropped out to preserve the adversarial presentation of the issues and to support the agency’s decision. Other than that, the Director often intervenes when the dispute on appeal implicates broader USPTO or government interests. Those interests may involve the validity or interpretation of federal statutes, of the USPTO’s procedures, or of USPTO regulations. So, for example, if an appellant argues that a regulation that the Board followed is contrary to the Patent Act, the Director may intervene to support the regulation. Although the Director could choose to intervene, under the statute, in every inter partes case, he instead selects cases in which his participation would be most important to the agency and helpful to the Court.

The Director’s presence is not required, however, for the appeal to proceed. As discussed above, the appellant has a justiciable controversy because it stands to lose its patent. The lack of USPTO participation does not moot the appellant’s case any more than does the reexamination requester’s declining to participate, discussed above.

In the unlikely event that the government were to decline to defend the Board’s decision in a case in which no other party was defending it, the Court could simply decide to hear the patentee’s appeal without the benefit of an adverse party. Alternatively, the Court could appoint or invite an amicus to defend the Board’s decision. The Supreme Court, for example, often chooses that route when the government confesses error and declines to defend a favorable decision from a lower tribunal. See, e.g., Becker v. Montgomery, 532 U.S. 757, 762 n.1 (2001) (“Without any party to defend the Sixth Circuit’s position, we invited [attorney] Stewart A. Baker to brief and argue this case, as amicus curiae, in support of the judgment below. His able representation . . . permit[s] us to decide this case[,] satisfied that the relevant issues have been fully aired.” (citations omitted)). Or, if the government confesses error and the Court concludes that, in consequence, there is nothing substantial remaining to be decided, the Court may simply vacate and remand. See Lawrence on Behalf of Lawrence v. Chater, 516 U.S. 163, 169-73 (1996); Florida Power & Light Co. v. Lorion, 470 U.S. 729, 744 (1985) (“If the record before the agency does not support the agency action, if the agency has not considered all relevant factors, or if the reviewing court simply cannot evaluate the challenged agency action on the basis of the record before it, the proper course, except in rare circumstances, is to remand to the agency for additional investigation or explanation.”).

Regardless, because the USPTO typically intervenes to defend the Board’s decision and tries to avoid situations in which a Board decision that it disagrees with is heard on appeal, the situation rarely arises. Far more common, and preferable, is a situation like this, in which the USPTO Director chooses to intervene to support the Board’s decision.


2 Because the USPTO does not have independent litigating authority, the Director seeks and obtains authorization from the Solicitor General before intervening in this Court. See generally 28 U.S.C. § 516; 28 C.F.R. § 0.20(c)

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).


The entire brief is available here: [Link].

Where’s the beef!

Friday, January 19th, 2018

The Patently-O blog recently reported on the new petition for writ of certiorari in R&L Carriers, Inc. v. Intermec Technologies Corp. [Cert. petition]. The question presented asks:

Do Fed. R. Civ. P. 56(c), Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986) and Celotex Corp. v. Catrett, 477 U.S. 317 (1986) prohibit a court from entering a summary judgment nding that an invention is ineligible for patent protection when the record contains uncontroverted, relevant evidence establishing that there is at least a genuine issue of material fact as to whether the claim is “directed to” an abstract idea?

Stated differently, where’s the factual inquiry?

I couldn’t help but be reminded of the classic Wendy’s commercial:



While the Federal Circuit has recently been fond of saying that §101 is a question of law, the court in the past has repeatedly said that factual issues can underlie the §101 analysis:

Whether a claim is directed to statutory subject matter is a question of law. Although determination of this question may require findings of underlying facts specific to the particular subject matter and its mode of claiming . . . .

Arrhythmia Research Technology v. Corazonix Corp., 958 F.2d 1053 (Fed. Cir. 1992).

It is well-established that “whether the asserted claims … are invalid for failure to claim statutory subject matter under 35 U.S.C. § 101, is a question of law which we review without deference.” AT & T Corp. v. Excel Commc’ns, Inc.,172 F.3d 1352, 1355 (Fed.Cir.1999). As a question of law, lack of statutory subject matter is a “ground [for affirmance] within the power of the appellate court to formulate.” Chenery, 318 U.S. at 88, 63 S.Ct. 454. While there may be cases in which the legal question as to patentable subject matter may turn on subsidiary factual issues, Comiskey has not identified any relevant fact issues that must be resolved in order to address the patentability of the subject matter of Comiskey’s application. Moreover, since we would review a Board decision on the issue of patentability without deference, see AT & T, 172 F.3d at 1355, the legal issue concerning patentability is not “a determination of policy or judgment which the agency alone is authorized to make.” Chenery, 318 U.S. at 88, 63 S.Ct. 454.

In re Comiskey, 554 F.3d 967 (Fed. Cir. 2009)(Judge Dyk writing for the court).

Moreover, in McRo v. Bandai, the Federal Circuit pointed to a lack of evidence in an abstract idea challenge:

2. Claims Directed To

Claim 1 of the ’576 patent is focused on a specific asserted improvement in computer animation, i.e., the automatic use of rules of a particular type. We disagree with Defendants’ arguments that the claims simply use a computer as a tool to automate conventional activity. While the rules are embodied in computer software that is processed by general-purpose computers, Defendants provided no evidence that the process previously used by animators is the same as the process required by the claims.

McRO v. Bandai, 837 F.3d 1299, 1314 (Fed. Cir. 2016)(emphasis added).


In the administrative context, the PTO’s solicitor’s office noted in its briefing of Apple v. Ameranth:

The Board’s § 101 analysis is reviewed for legal error, while its underlying factual findings are reviewed for substantial evidence. See Versata Dev. Group, Inc. v. SAP America, Inc. (“Versata II”), 793 F.3d 1306, 1336 (2015).

USPTO Brief in Apple et al. v. Ameranth at page 13 (Associate Solicitor Joe Matal signing for the Office).


“Finally, with respect to the claims that the Board confirmed, the petitioners failed to meet their burden of showing that these claims recite ineligible subject matter. Although the petitioners showed that the claims are directed to an abstract idea, they failed to present any evidence or analysis that the claims’ recited technologies are routine and conventional.”

USPTO Brief in Apple et al. v. Ameranth at page 20 (Associate Solicitor Joe Matal signing for the Office).


In Versata II, the Federal Circuit stated:

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. See Microsoft Corp. v. Proxyconn, Inc., Nos. 14-1542, -1543, 789 F.3d 1292, 1297, 2015 WL 3747257, at *2 (Fed.Cir. June 16, 2015)(noting that as a general matter, we review the PTAB’s findings of fact for substantial supporting evidence in the record).

Versata Dev. Group, Inc. v. SAP America, Inc. (“Versata II”), 793 F.3d 1306, 1336 (2015).


UPDATE 2/1/2018:

Patent eligibility under § 101 is a question of law and may involve underlying questions of fact. See Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325 (Fed. Cir. 2016).

Move, Inc., et al. v. ReMax, Inc., et al., 2017-1463 (Fed. Cir. Feb. 1, 2018)(slip opinion at 7)(Judge Stoll writing for the court).

UPDATE 2/12/2018:

Patent eligibility under 35 U.S.C. § 101 is ultimately an issue of law we review de novo. Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1338 (Fed. Cir. 2017). The patent eligibility inquiry may contain underlying issues of fact. Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325 (Fed. Cir. 2016).

Berkheimer v. HP INC., No. 2017-1437 (Fed. Cir. Feb. 8, 2018)(slip opinion at 6).


The question of whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field is a question of fact. Any fact, such as this one, that is pertinent to the invalidity conclusion must be proven by clear and convincing evidence. See Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. 91, 95 (2011). Like indefiniteness, enablement, or obviousness, whether a claim recites patent eligible subject matter is a question of law which may contain underlying facts. Akzo Nobel Coatings, Inc. v. Dow Chem. Co., 811 F.3d 1334, 1343 (Fed. Cir. 2016) (“Indefiniteness is a question of law that we review de novo, [] subject to a determination of underlying facts.”); Alcon Research Ltd. v. Barr Labs., Inc., 745 F.3d 1180, 1188 (Fed. Cir. 2014) (“Whether a claim satisfies the enablement requirement of 35 U.S.C. § 112 is a question of law that we review without deference, although the determination may be based on underlying factual findings, which we review for clear error.”); Apple Inc. v. Samsung Elecs. Co., Ltd., 839 F.3d 1034, 1047 (Fed. Cir. 2016) (en banc)(“Obviousness is a question of law based on underlying facts.”). We have previously stated that “[t]he § 101 inquiry `may contain underlying factual issues.'” Mortg. Grader, 811 F.3d at 1325 (emphasis in original) (quoting Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1341 (Fed. Cir. 2013)). And the Supreme Court recognized that in making the § 101 determination, the inquiry “might sometimes overlap” with other fact-intensive inquiries like novelty under § 102. Mayo, 566 U.S. at 90.

Berkheimer v. HP INC., No. 2017-1437 (Fed. Cir. Feb. 8, 2018)(slip opinion at 12).

Whether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination. Whether a particular technology is well-understood, routine, and conventional goes beyond what was simply known in the prior art. The mere fact that something is disclosed in a piece of prior art, for example, does not mean it was well-understood, routine, and conventional.

Berkheimer v. HP INC., No. 2017-1437 (Fed. Cir. Feb. 8, 2018)(slip opinion at 14).

Judge Moore Reflects on In re Comiskey

Saturday, January 13th, 2018

The infamous In re Comiskey decision came up recently in the oral argument of TAKEDA PHARMACEUTICAL COMPANY LIMITED v. ARRAY BIOPHARMA INC., No. 2017-1079 (Fed. Cir. Dec. 26, 2017).

Judge Moore had some frank comments about the In re Comiskey opinion.  She referred to In re Comiskey as an “administrative law nightmare” and “horrifically wrongly decided.”

You can listen to Judge Moore’s comments here:

You can read the Takeda v. Array opinion here: [Link].

You can read the In re Comiskey en banc order here, which includes Judge Moore’s dissent: [Link].

You can read the In re Comiskey reissued opinion here: [Link].

You can listen to then Assistant Solicitor Chen respond to questioning from Judge Dyk in the oral argument of In re Comiskey here:


Administrative Agencies and Constitutional Issues

Friday, January 12th, 2018

After posting the previous post about the SEC Supreme Court matter, I got sidetracked into looking at some SEC cases that dealt with the constitutional issue of whether ALJ’s are appointed under the Appointments Clause of the Constitution.  In some previous SEC matters, plaintiffs sought  TRO’s or preliminary injunctions in district court in order to have a district court decide the constitutional issue, rather than the SEC.  See, e.g., Duka v. SEC, 2015 WL 4940057 (S.D.N.Y. Aug. 3, 2015); Hill v. SEC, 2015 WL 4307088 (N.D. Ga. June 8, 2015)

That made me wonder about the current sovereign immunity cases at the PTAB and whether any of the affected parties in those proceedings would opt for pursuing a TRO or preliminary injunction in order to have a district court, rather than the PTO, decide the constitutional* issue of sovereign immunity protection.  Apparently, there is some Supreme Court authority for the proposition that administrative agencies are not well-suited to decide constitutional issues:

3. Plaintiff’s Constitutional Claims Are Outside the Agency’s Expertise.

The SEC claims that Plaintiff’s challenges “fall within the Commission’s expertise,” and the “SEC is in the best position to interpret its own policies and regulations in the first instance.” Dkt. No. [12] at 13. The Court finds that Plaintiff’s Article I, Seventh Amendment, and Article II claims are outside the agency’s expertise.[6]

1310*1310 Plaintiff’s constitutional claims are governed by Supreme Court jurisprudence, and “the statutory questions involved do not require technical considerations of agency policy.” Free Enterprise, 561 U.S. at 491, 130 S.Ct. 3138(alteration and internal quotations omitted) (quoting Johnson v. Robison, 415 U.S. 361, 373, 94 S.Ct. 1160, 39 L.Ed.2d 389 (1974)); see also Thunder Basin, 510 U.S. at 215, 114 S.Ct. 771 (“[A]djudication of the constitutionality of congressional enactments has generally been thought beyond the jurisdiction of administrative agencies.”) (quoting Johnson, 415 U.S. at 368, 94 S.Ct. 1160). These claims are not part and parcel of an ordinary securities fraud case, and there is no evidence that (1) Plaintiff’s constitutional claims are the type the SEC “routinely considers,” or (2) the agency’s expertise can be “brought to bear” on Plaintiff’s claims as they were in Elgin. Elgin, 132 S.Ct. at 2140.

The Court finds that as to this factor, Plaintiff’s constitutional claims are outside the SEC’s expertise, and that this Court has subject matter jurisdiction.

Hill v. SEC, 114 F. Supp. 3d 1297, 1309-10 (N.D. Ga. 2015).

Also, in Public Utilities Comm’n v. United States, 355 U. S. 534, 539 (1958) the Supreme Court said:

But where the only question is whether it is constitutional to fasten the administrative procedure onto the litigant, the administrative agency may be defied and judicial relief sought as the only effective way of protecting the asserted constitutional right.

* Categorizing sovereign immunity as a constitutional issue appears to be strongest in the state-owned patent IPR’s, see, e.g., Pennsylvania v. Union Gas Co., 491 U.S. 1, 7  (1989), as opposed to the tribe-owned patent IPR’s where tribal sovereign immunity might be considered a common law doctrine rather than a constitutional issue.

ALJ’s — Officers of the United States or Employees?

Thursday, January 11th, 2018

The Supreme Court in its conference tomorrow will review the petition for writ of certiorari in Lucia v. SEC.  The question presented is whether administrative law judges of the SEC are considered to be  employees or officers of the United States under the Appointments Clause.

I believe the USPTO encountered a similar issue a few years ago.

You can read the petition here: [Link].

Update 1/12/2018:

The Supreme Court granted the petition for certiorari in this case today.

Article Suggestion: Equitable Power of the Federal Circuit to Supplement the Record

Wednesday, January 10th, 2018

I sometimes wonder when listening to oral arguments whether judges are straying outside the record.  If you are looking for a topic to write about, a helpful article might address the authority or lack of authority for the Federal Circuit to rely on extra-record evidence.  The Sixth Circuit case of Inland Bulk Transfer Co. v. Cummins Engine Co., 332 F. 3d 1007 (6th Cir. 2003) suggests that there is a split among the circuits on whether circuit courts of appeal possess equitable power to permit supplementation of the record.  In my quick search, I did not find any support either way for whether the Federal Circuit has weighed in on this issue.   A sub-topic of the article might be whether such extra-record evidence is permitted at all for review of agency determinations—e.g., TTAB proceedings—as opposed to district court cases.