Archive for April, 2020

Oral argument of the day

Wednesday, April 29th, 2020

The oral argument of the day is from GALDERMA LABS., LP v. AMNEAL PHARMS. LLC, No. 2019-1021 (Fed. Cir. Mar. 25, 2020). I thought this argument was interesting for its discussion of prosecution disclaimer.

I thought it was particularly interesting for the discussion of American Piledriving Equipment v. Geoquip, Inc., 637 F.3d 1324 (Fed. Cir. 2011). For some reason, I seem to have heard American Piledriving mentioned in multiple oral arguments recently. That’s always interesting when multiple panels start talking about an old case — it tends to pique one’s interest.

A third point of interest was Judge Stoll’s questioning about how does a patent owner make clear to the public via the IPR file history a retraction of a limiting position that the patent owner took during the IPR, when the PTAB rules in favor of the patent owner without adopting the limiting position that the patent owner asserted for purposes of claim construction. The PTAB has the authority to refuse to enter a paper, unlike ex parte prosecution.

On a totally unrelated note, my great-grandfather had a patent on a pile driver. It’s fun to look back at old patents for the artistry of the drawings and the approach to the written description and claims: [Link].

You can listen to the oral argument of GALDERMA LABS., LP v. AMNEAL PHARMS. LLC here:

You can read the court’s decision here: [Link].

You can listen to the oral argument of American Piledriving — from 2010 (Judges Linn, Gajarsa, and Bryson) — here:

You can read the court’s decision in American Piledriving here: [Link].

Judge Newman calls a six reference obviousness combination “striking”

Thursday, April 23rd, 2020

I think most patent prosecutors would be surprised to discover that Judge Newman authored the court’s opinion in In re Gorman, 933 F.2d 982, 18 U.S.P.Q.2d 1885 (Fed. Cir. 1991) which approved of a rejection of a design patent claim by combining 13 references.

Rather, I think most patent prosecutors would expect to hear her say what she said during the oral argument of CPI CARD GROUP-MINNESOTA, INC. v. MULTI PPACKAGING SOLUTIONS, INC., No. 2019-1616 (Fed. Cir. Mar. 16, 2020):

I have updated an earlier post where I am collecting comments by the Federal Circuit judges about rejections/arguments that rely on a large number of references for obviousness. Use this link to access that post: [Too Many References?].

Alice Step 1 — an issue of law based on underlying facts

Monday, April 20th, 2020

            The decision the other day in Cardionet, LLC et al. v. Infobionic, Inc. is significant.  The decision solidifies that the Alice Step 1 inquiry is an issue of law based on underlying facts. Just as the Berkheimer case did a few years ago — stating that Alice Step 2 is an issue of law based on underlying facts — the Cardionet decision should breathe a little bit of sanity into future patent eligibility decisions by the Federal Circuit, district courts, and the Patent Office.

            The appeal in Cardionet stems from a ruling by a district court judge on a 12(b)(6) motion. Apparently, the district court judge ruled that the claims were abstract ideas and granted the motion.  The majority in Cardionet looked to the intrinsic evidence of the written description of the patent-at-issue to determine if there were any asserted advantages provided by the claimed invention.  In doing so, the panel found several advantages recited in that patent’s written description.  Normally, one would consider a patent’s written description to be intrinsic evidence in a case.  The Cardionet majority also cited Visual Memory v. Nvidia for drawing factual inferences from a patent’s written description (specification): “Weighing ‘all factual inferences drawn from the specification . . . in favor of Visual Memory, the non-moving party,’ we reversed the district court’s decision that the claims were ineligible.” Slip Opinion at 15.

            The panel performed a similar comparison with respect to the McRo v. Bandai case.  Importantly, the panel stated: “In fact, the evidence in the record showed that the traditional process and claimed method produced realistic animations of facial movements in fundamentally different ways.”  Slip Opinion at 16.

            However, the panel did not limit itself to an assessment of the written description; it went even further by looking for other factual evidence in the record that the claimed diagnostic process had long been used.  The majority stated:

Indeed, as discussed above, nothing in the record supports the district court’s fact finding (and InfoBionic’s assertion) that doctors long used the claimed diagnostic processes.

Slip Opinion at 17.

            And, the panel looked to see if there was any record evidence to undermine the advantages presented in the written description.  The panel concluded:

On a motion to dismiss under Rule 12(b)(6), however, the district court must construe all facts and draw all reasonable inferences in favor of CardioNet, the non-moving party. See Athena, 915 F.3d at 749. Here, there is no record evidence undermining the statements in the written description concerning the benefits of the claimed device.

Slip Opinion at 17.

            Finally, having limited its analysis to Alice Step 1, the majority concluded:

Because we conclude under Alice step one that the as- serted claims of the ’207 patent are not directed to an abstract idea, we do not reach Alice step two. See Data Engine, 906 F.3d at 1011; Visual Memory, 867 F.3d at 1262. The claims are patent eligible under § 101.

Slip opinion at 18.

            Responding to criticism from the dissent, the majority noted that it would be proper for a district court to assess extrinsic evidence for the Alice Step 1 analysis:

Contrary to the dissent’s suggestions, we do not hold today that it is impermissible for courts to “look[] outside the intrinsic evidence” as part of their Alice step one in- quiry, Dissent Op. 9, or that all evidence presented by the parties that doctors have long used the claimed techniques would be irrelevant to the inquiry in this case. It is within the trial court’s discretion whether to take judicial notice of a longstanding practice where there is no evidence of such practice in the intrinsic record. But there is no basis for requiring, as a matter of law, consideration of the prior art in the step one analysis in every case. If the extrinsic evidence is overwhelming to the point of being indisputable, then a court could take notice of that and find the claims directed to the abstract idea of automating a fundamental practice, see Bilski, 561 U.S. at 611—but the court is not required to engage in such an inquiry in every case. 

Slip Opinion at 22.

            Judge Dyk concurred in the reversal of the district court; but, his dissent favored remanding the issue back to the district court judge for consideration of other evidence before deciding the 12(b)(6) issue — which sounds a lot like making an even more in-depth factual determination before deciding the 12(b)(6) issue.

            The decision should prove beneficial to patent owners in the future in their ability to defeat 12(b)(6) motions as well as summary judgment motions. Moreover, it should benefit patent owners at the appellate level, as well, in the same way it benefited the patent owner in this case. However, most importantly, it should help patent applicants during examination.  Hopefully, the Director will now issue a memo to the examining corps that Alice Step 1 is an issue of law, but it is based on underlying issues of fact. Just like the Berkheimer memo. And, the PTO has to support its factual assertions with evidence.

There were several interesting sound bites during the oral argument. Judge Stoll commented:

Judge Dyk commented:

Judge Plager also added these comments:

Back in 2014, I submitted comments on the interim patent eligibility guidance.  This is what I wrote back then:


Dear Commissioner, 

I am writing to suggest an addition to the 2014 Interim Guidance on Patent Subject Matter Eligibility. The views expressed below are my personal opinions and not necessarily those of any current, past, or future clients or colleagues. I am not submitting these views on behalf of anyone other than myself. 


The guidance currently does not instruct the examining corps that the assertion of an abstract idea must be supported by concrete evidence. This should be corrected. The Federal Circuit has noted that patent subject matter eligibility is a question of law informed by underlying facts. Moreover, in order for the Federal Circuit to review a determination of patent ineligibility, there must be substantial evidence supporting the administrative agency’s determination. 

First, the Federal Circuit noted as early as 1992 that: 

“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). 

This standard is similar to other standards of patent examination. For example, with respect to utility under 35 U.S.C. §101, the MPEP states in section 2107: 


To properly reject a claimed invention under 35 U.S.C. 101, the Office must (A) make a prima facie showing that the claimed invention lacks utility, and (B) provide a sufficient evidentiary basis for factual assumptions relied upon in establishing the prima facie showing. In re Gaubert, 524 F.2d 1222, 1224, 187 USPQ 664, 666 (CCPA 1975) “Accordingly, the PTO must do more than merely question operability – it must set forth factual reasons which would lead one skilled in the art to question the objective truth of the statement of operability.” If the Office cannot develop a proper prima facie case and provide evidentiary support for a rejection under 35 U.S.C. 101, a rejection on this ground should not be imposed. See, e.g., In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992) 

Similarly, with respect to obviousness under 35 U.S.C. §103 — which is also a question of law supported by underlying questions of fact — the MPEP states: 

2142 Legal Concept of Prima Facie Obviousness [R-11.2013] 

The legal concept of prima facie obviousness is a procedural tool of examination which applies broadly to all arts. It allocates who has the burden of going forward with production of evidence in each step of the examination process. See In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Saunders, 444 F.2d 599, 170 USPQ 213 (CCPA 1971); In re Tiffin, 443 F.2d 394, 170 USPQ 88 (CCPA 1971), amended, 448 F.2d 791, 171 USPQ 294 (CCPA 1971); In re Warner, 379 F.2d 1011, 154 USPQ 173 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968). The examiner bears the initial burden of factually supporting any prima facie conclusion of obviousness. If the examiner does not produce a prima facie case, the applicant is under no obligation to submit secondary evidence to show nonobviousness. 

And, with respect to ornamentality, the MPEP section 1504.01(c) (II) states: 


To properly reject a claimed design under 35 U.S.C. 171 on the basis of a lack of ornamentality, an examiner must make a prima facie showing that the claimed design lacks ornamentality and provide a sufficient evidentiary basis for factual assumptions relied upon in such showing. The court in In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992), stated that “the examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.” 

These portions of the MPEP emphasize that factual issues should be supported by evidence. Thus, the assertion that a claim includes an abstract idea should similarly be supported by supplying evidence of the abstract idea. 

Second, for a USPTO decision to withstand appellate review, there must be substantial evidence in the record. The Federal Circuit observed this with respect to reviewing an obviousness determination in In re Zurko, 258 F.3d 1379, 1385 (Fed. Cir. 2001):

We cannot accept these findings by the Board. This assessment of basic knowledge and common sense was not based on any evidence in the record and, therefore, lacks substantial evidence support. As an administrative tribunal, the Board clearly has expertise in the subject matter over which it exercises jurisdiction. This expertise may provide sufficient support for conclusions as to peripheral issues. With respect to core factual findings in a determination of patentability, however, the Board cannot simply reach conclusions based on its own understanding or experience — or on its assessment of what would be basic knowledge or common sense. Rather, the Board must point to some concrete evidence in the record in support of these findings.[2] To hold otherwise would render the process of appellate review for substantial evidence on the record a meaningless exercise. Baltimore & Ohio R.R. Co. v. Aderdeen & Rockfish R.R. Co., 393 U.S. 87, 91-92, 89 S.Ct. 280, 21 L.Ed.2d 219 (1968) (rejecting a determination of the Interstate Commerce Commission with no support in the record, noting that if the Court were to conclude otherwise “[t]he requirement for administrative decisions based on substantial evidence and reasoned findings — which alone make effective judicial review possible — would become lost in the haze of so-called expertise”). Accordingly, we cannot accept the Board’s unsupported assessment of the prior art. 

This holding was repeated by the Federal Circuit less than a year ago in K/S HIMPP v. Hear-Wear Technologies, LLC, 751 F.3d 1362 (Fed. Cir. 2014): 

We agree with Hear-Wear that the Board was correct to require record evidence to support an assertion that the structural features of claims 3 and 9 of the ‘512 patent were known prior art elements. The patentability of claims 3 and 9 with the limitation “a plurality of prongs that provide a detachable mechanical and electrical connection” presents more than a peripheral issue. See In re Zurko, 258 F.3d 1379, 1386 (Fed.Cir.2001) (“[Board] expertise may provide sufficient support for conclusions as to peripheral issues.”). The determination of patentability of claims with this limitation therefore requires a core factual finding, and as such, requires more than a conclusory statement from either HIMPP or the Board. See id. (“With respect to core factual findings in a determination of patentability, however, the Board cannot simply reach conclusions based on its own understanding or experience….”). HIMPP must instead “point to some concrete evidence in the record in support of these findings.” Id. 

Clearly, for a factual determination by the Office to withstand appellate review, the Office must establish concrete evidence in the record. Therefore, the assertion by the Office that a claim recites an abstract idea — which is clearly a core factual finding — must be supported by concrete evidence in the record. 

I hope you will tailor the interim guidance to reflect that an Examiner must support any assertion of an abstract idea by supplying factual evidence, just as you have previously required the examining corps to do in MPEP sections 2107, 2142, and 1504.01(c) (II). 

Finally, I think it is wise to take to heart the remarks of Judge Lourie from the oral argument of K/S HIMPP v. Hear-Wear Technologies, LLC

“We have an examination system based on citation of references. I may have used the word ’slippery slope’ already. But, I worry about that — where an examiner who is of some skill and training in a particular art could simply say ‘Aha, I think, I think, and it is my common knowledge . . . .’ And, they start rejecting claims based on what they ‘think.’ Isn’t that a serious departure from our system of citation of references to reject claims?” 

William F. Vobach 


I look forward to seeing what the USPTO does with the Cardionet decision. Hopefully, they will instruct examiners to consult their inner-Joe-Friday:

You can read the Cardionet decision here: [Link].

You can listen to the recording of the Cardionet oral argument here:

Update: August 25, 2021

In AMERICAN AXLE & MANUFACTURING v. NEAPCO HOLDINGS, 966 F.3d 1347 (Fed. Cir. 2020), Judge Dyk wrote a concurring opinion in the denial of rehearing en banc. He notes that with respect to step one in the Alice inquiry there can be a factual issue.

“The step-one “directed to” inquiry in this case, as in O’Reilly, is what the claim says. As to that question, the panel does not suggest that there can never be a factual issue, but there is no such factual issue here.”

May Oral Arguments

Friday, April 17th, 2020

The Federal Circuit is currently scheduled to conduct some oral arguments in May by telephone and some in court. It appears that many of the cases on the calendar will be decided without oral argument, as well.

As a reminder, here is a link to a page that has one or more sound bites from each judge to help you identify each judge’s voice when you are listening to oral arguments or even conducting one by phone: [Link].

Oral argument of the day

Sunday, April 12th, 2020

The oral argument of the day is from Clarus Therapeutics, Inc. v. Lipocene, Inc. I thought this oral argument was interesting for a few reasons. First, it was the Federal Circuit’s first oral argument by telephone during the April 2020 session. Second, it is the appeal of an interference — an unusual occurrence these days. Third, it relates to the issue of negative limitations. Fourth, it was refreshing to hear people argue the court’s C.C.P.A. lines of precedent for a change — which, after all, were adopted by the Federal Circuit sitting en banc and thus have en banc authority. And, fifth, it was well-argued.

The briefs are provided below:

You can listen to the oral argument here:

The panel disposed of this rare interference case by a Rule 36 Judgment: [Link].

Quotes for the day

Thursday, April 9th, 2020

To draw on hindsight knowledge of the patented invention, when the prior art does not contain or suggest that knowledge, is to use the invention as a template for its own reconstruction — an illogical and inappropriate process by which to determine patentability. W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed.Cir. 1983). The invention must be viewed not after the blueprint has been drawn by the inventor, but as it would have been perceived in the state of the art that existed at the time the invention was made. Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1138, 227 USPQ 543, 547 (Fed.Cir.1985).

Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996).

Because the Board did not explain the specific understanding or principle within the knowledge of a skilled artisan that would motivate one with no knowledge of Rouffet’s invention to make the combination, this court infers that the examiner selected these references with the assistance of hindsight. This court forbids the use of hindsight in the selection of references that comprise the case of obviousness. See In re Gorman, 933 F.2d 982, 986, 18 U.S.P.Q.2d 1885, 1888 (Fed.Cir. 1991). Lacking a motivation to combine references, the Board did not show a proper prima facie case of obviousness.

In re Rouffet, 149 F.3d 1350, 1358 (Fed. Cir. 1998).

Live Streaming of April Oral Arguments

Thursday, April 9th, 2020

Not only is the Federal Circuit conducting all of its oral arguments by telephone this month, it is also live streaming them. Tomorrow — Friday — is the last day of the month to tune-in; so, see this website announcement on the Federal Circuit Announcement page for more information on how to live stream:


Public access information for live audio of the court’s April 2020 Court Session will be available at this link by 9:00 a.m. (EDT) each day of argument.  Members of the media and the public can also access this information under the Announcements menu of the court’s website.  After the end of each day’s arguments, audio recordings of each argument will be available on the court’s website (link).

Quote for the day

Tuesday, April 7th, 2020

The quote for the day comes from Cheese Systems, Inc. v. Tetra Pak Cheese and Powder Sys., Inc., 725 F.3d 1341 (Fed. Cir. 2013):

Among the difficult challenges of applying the doctrine of obviousness is avoidance of even a hint of hindsight. Obviousness “cannot be based on the hindsight combination of components selectively culled from the prior art to fit the parameters of the patented invention.” ATD Corp. v. Lydall, Inc., 159 F.3d 534, 546 (Fed.Cir.1998). In this regard, objective evidence operates as a beneficial check on hindsight. As the court recently explained in describing these “essential components” of the obviousness analysis:

Objective evidence of nonobviousness can include copying, long felt but unsolved need, failure of others, commercial success, unexpected results created 1353*1353 by the claimed invention, unexpected properties of the claimed invention, licenses showing industry respect for the invention, and skepticism of skilled artisans before the invention. These objective considerations can protect against the prejudice of hindsight bias, which often overlooks that “[t]he genius of invention is often a combination of known elements which in hindsight seems preordained.” McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1351 (Fed. Cir.2001).

Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 711 F.3d 1348, 1368 (Fed.Cir.2013) (citations omitted).

Oral Argument of the Day: Corning Optical Communications v. Panduit

Tuesday, April 7th, 2020

The oral argument of the day comes from Corning Optical Communications v. Panduit. I enjoyed this oral argument for its discussion of hindsight in the §103 context. The appellant argued that the patent owner’s claim was simply being used as a template to locate art to reconstruct the claimed invention.

If you put your ear to the ground, you can probably hear a mournful wail from the ghosts of patent-prosecutors-past saying “We feel your pain.”

You can listen to the oral argument here:

You can read the Federal Circuit’s Rule 36 Judgment [here].