Archive for March, 2018

Oral Argument of the day: In re Burgos

Friday, March 30th, 2018

The oral argument of the day is from In re Burgos.  This oral argument was particularly interesting for its discussion of the Supreme Court’s Funk Bros. decision.  Also, there was some discussion of the USPTO’s subject matter eligibility examples.  This is a good oral argument to listen to closely.  See if you think the argument presented by the Office is based entirely on the findings and reasoning of the PTAB — or are views of the “Office” or “Solicitor’s Office” interjected to supplement the argument.  Shouldn’t the CAFC be basing its review only on the reasoning and facts relied upon by the PTAB.

You can listen to the oral argument here:


You can review the Rule 36 Judgment [here].

The invention sounds interesting.  I downloaded the original application from Public Pair.  It is available [here].

Update March 31, 2018

I am having a bit of “poster’s remorse” after publishing the above post and listening to the oral argument again.  I think the Associate Solicitor actually did a nice job of repeatedly trying to bring the panel back to the reasoning and factual findings of the PTAB.  The Federal Circuit panel on the other hand framed a lot of their questions in terms of “What is the Office’s position . . .” with respect to hypotheticals and the Office’s subject matter eligibility examples.  That’s all well and good; but, at the end of the day review of agency determinations are supposed to be based on the reasoning and factual findings of the agency tribunal, namely the PTAB.



Ora(c)l(e) Argument of Oracle v. Google (Copyright Fair Use)

Tuesday, March 27th, 2018

If you are interested in today’s Federal Circuit decision on copyright fair use in Oracle v. Google, the oral argument is available here:

The Federal Circuit decision is available [here].




Monday, March 26th, 2018

Director Andrei Iancu has posted his greetings to the IP world on the USPTO Director’s Blog.  You can see his message [here]. He says in part:

We will continue working with inventors, innovators, and entrepreneurs to ensure that when they disclose their inventions, we properly scope and protect their best ideas by granting strong and predictable IP rights. We will also cement our IP system as balanced, efficient, and industry neutral. Whether we’re working with a small inventor with a big idea, or a big company with a small improvement, or everyone else who comes before us, each customer who comes through our doors can be assured that they will receive the highest quality service.

Article Suggestion: Long-arm jurisdiction for foreign patent owners

Friday, March 23rd, 2018

35 U.S.C. §293 is a long-arm statute that applies to non-resident owners of patents.  Historically, it allowed non-resident patent owners to be sued in D.C. District Court; however, that was revised to the Eastern District of Virginia with the passage of the AIA.  The statute reads:


Every patentee not residing in the United States may file in the Patent and Trademark Office a written designation stating the name and address of a person residing within the United States on whom may be served process or notice of proceedings affecting the patent or rights thereunder. If the person designated cannot be found at the address given in the last designation, or if no person has been designated, the United States District Court for the Eastern District of Virginia shall have jurisdiction and summons shall be served by publication or otherwise as the court directs. The court shall have the same jurisdiction to take any action respecting the patent or rights thereunder that it would have if the patentee were personally within the jurisdiction of the court.

(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949; amended Sept. 16, 2011, Public Law 112-29, sec. 9, 125 Stat. 284.)

See .

It might be of interest to foreign patent owners if someone were to write an article outlining the best jurisdictions where service of process should be designated.  Foreign patent owners might prefer the Eastern District of Texas, for example, rather than defaulting to the E.D of Virginia.

Supreme Court Oral Argument of Upper Skagit Tribe v. Lundgren

Friday, March 23rd, 2018

The Supreme Court of the United States heard oral argument this week in Upper Skagit Tribe v. Lundgren.  The issue presented is:

Whether a court’s exercise of in rem jurisdiction overcomes the jurisdictional bar of tribal sovereign immunity when the tribe has not waived immunity and Congress has not unequivocally abrogated it.

You can listen to the oral argument here:




En banc oral argument of Federal Education Association v. Defense

Friday, March 23rd, 2018

The Federal Circuit has now posted the second en banc oral argument that it heard on March 8, 2018, Federal Education Association v. Defense.  While this is not a patent case, en banc arguments can often be interesting regardless of the subject matter.

You can listen to the oral argument here:

Article suggestion: The Equal Access to Justice Act and the USPTO

Tuesday, March 20th, 2018

During the recent en banc oral argument of NantKwest v. Iancu, Judge O’Malley brought up the subject of the constitutional overlay of the right of access to the courts.  Somehow my mind transmogrified that comment into a reference to the Equal Access to Justice Act. [Link]. In all candor, I know very little about the Equal Access to Justice Act.  So, the following suggestion might be dead in the water.  Nevertheless,  it might make for an interesting article for someone to take a look at the various USPTO proceedings in view of the Equal Access to Justice Act to see if there are any situations where an applicant or patent owner can recoup fees/expenses under the Equal Access to Justice Act when prevailing.  One might want to take a look at how the PTO’s assertion that the Director is free to disregard the Board’s opinions on appeal (see the briefing of Knowles v. Matal) as well as stack panels to see how those behaviors impact the application of the Act.  Moreover, in the appeal of an IPR decision, the PTO will sometimes step into the shoes of an IPR Requestor — when the Requestor declines to participate in the appeal — that might be a relevant situation to consider, as well.

The USPTO and access to experts

Wednesday, March 14th, 2018

I thought it was interesting that during the recent en banc oral argument of NantKwest v. Iancu that the PTO acknowledged that it has access to experts for purposes of a §145 action in US district court.  That raises the question of whether an examiner at the USPTO similarly has access to experts for purposes of determining whether a prior art reference that the examiner is relying upon is enabling.

In In re Antor Media Corp., 689 F.3d 1282 (Fed. Cir. 2012) the Federal Circuit said that the burden is shifted to the Applicant to show that a reference is not enabling because an examiner does not have access to experts (or laboratories):

In discussing the theory of the rejection, the prior art basis for the rejection, and where each limitation of the rejected claims is shown in the prior art reference, an examiner has met his initial burden. Id. at 1363 (“[A]ll that is required of the office to meet its prima facie burden of production is to set forth the statutory basis of the rejection and the reference or references relied upon in a sufficiently articulate and informative manner as to meet the notice requirement of § 132.”). Indeed, as indicated with regard to unclaimed patent prior art, an examiner, who has no access to experts or laboratories, is not in a position to test each piece of prior art for enablement in citing it, and requiring him to do so would be onerous, if not impossible. An examiner, therefore, is not required to anticipate every possible response to a rejection, including showing that a cited reference is enabling.

Consistent with the statutory framework and our precedent, we therefore hold that, during patent prosecution, an examiner is entitled to reject claims as anticipated by a prior art publication or patent without conducting an inquiry into whether or not that prior art reference is enabling. As long as an examiner makes a proper prima facie case of anticipation by giving adequate notice under § 132, the burden shifts to the applicant to submit rebuttal evidence of nonenablement.


In re Antor Media Corp., 689 F.3d 1282, 1289 (Fed. Cir. 2012)(Judge Lourie writing for the court).

En Banc Oral Argument: NantKwest v. Iancu

Thursday, March 8th, 2018

The Federal Circuit sat en banc today and heard the oral argument in NantKwest v. Iancu.  The case concerns the issue of whether the USPTO can chill efforts by an applicant to seek review by a district court of a USPTO rejection, by requiring the applicant to pay the USPTO’s attorneys’ fees for the judicial review, regardless of whether the applicant prevails at the district court.

You can listen to the oral argument here:

Oral Argument of the Day: In re Nordt Development Co., LLC

Wednesday, March 7th, 2018

The oral argument of the day is from IN RE NORDT DEVELOPMENT CO., LLC, No. 2017-1445 (Fed. Cir. Feb. 8, 2018).

The argument focuses on whether the term “injection molded” should have been treated as a structural limitation by the USPTO during prosecution.

In part, the Federal Circuit opinion states:

Moreover, as we have explained, “words of limitation that can connote with equal force a structural characteristic of the product or a process of manufacture are commonly and by default interpreted in their structural sense, unless the patentee has demonstrated otherwise.” 3M Innovative Props. Co. v. Avery Dennison Corp.,350 F.3d 1365, 1371-72 (Fed. Cir. 2003). Indeed, since Garnero, we have in numerous instances held such limitations to convey structure even when they also describe a process of manufacture. See, e.g., Hazani v. U.S. Int’l Trade Comm’n,126 F.3d 1473, 1479 (Fed. Cir. 1997) (concluding that “chemically engraved” was not a process term); Vanguard Prods. Corp. v. Parker Hannifin Corp., 234 F.3d 1370, 1372 (Fed. Cir. 2000) (holding that the claim term “integral” describes a structural requirement, not the particular manufacturing process discussed in the specification); 3M Innovative Props. Co., 350 F.3d at 1371 (finding “superimposed” to describe a structural relationship and not a process); SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1322 (Fed. Cir. 2006) (Newman, J., dissenting)(listing “a molded plastic” as an example of a process limitation that connotes structure). Here, not only does the specification itself convey a structural meaning to “injection molded,” Nordt has repeatedly represented that it does.

The court’s opinion is available [here].

The oral argument is available here:


Portrait of Judge Evan Wallach

Friday, March 2nd, 2018

The Court of International Trade commissioned a portrait of Judge Wallach a few years ago.  Judge Wallach served on the Court of International Trade for sixteen years before being appointed to the Federal Circuit.

From the portrait, it appears that Judge Wallach is quite a dog lover.*  You can see the portrait [here].


*I’m not entirely certain what breed of dog the dogs in the portrait are.  My best guess is English Springer Spaniel.  The American Kennel Club describes the personality of the English Springer Spaniel as “Friendly, playful, obedient at home; hardworking and steady in the field.”  And, the AKC describes the barking level as “Barks when necessary.”