Archive for January, 2021

Danger Will Robinson! — should “set” in patent law include “the empty set”

Wednesday, January 27th, 2021

There’s an interesting line in today’s opinion in Keynetik v. Samsung.

The word “set” can mean “[a]n assemblage of distinct entities, either individually specified or which satisfy certain specified conditions.” SetOxford English Dictionary, (last visited Jan. 26, 2021). A “set” need not consist of multiple things and may consist of nothing, i.e., an “empty set.” Id.3

Keynetik, Inc. v. Samsung Electronics Co., Ltd., 2020-1271, (Fed. Cir. Jan. 27, 2021) (slip. op. at pages 8-9.

Think of the implications of the word “set” including the “empty set” for purposes of claim construction in patent law. How many issued claims does that line of thinking broaden by reducing claim elements within those issued claims to include a nullity? How many claims does it invalidate for 112 or 102/103 purposes? I fear Judge Dyk has relapsed to a Texas Digital perspective on this one and is relying too heavily on dictionary definitions, again.

Reply briefs filed in Arthrex

Tuesday, January 26th, 2021

The DOJ as well as Smith and Nephew have filed their reply briefs at the Supreme Court in the pending Supreme Court appeal of United States v. Arthrex. Oral argument is scheduled for March 1, 2021.

You can review the reply briefs here:

DOJ Reply Brief: [Link].

Smith and Nephew Reply Brief: [Link].

Useless trivia of the day

Friday, January 22nd, 2021

Name the state that permits administrative law judges to conduct marriage ceremonies.



Wednesday, January 20th, 2021

Assuming the hypothetical situation that PTAB judges are not principal officers and they are not currently being overseen by a principal officer — because Director Iancu has resigned his post — should forthcoming PTAB decisions be considered valid, until a new Director/principal officer is confirmed by the Senate? After all, some argue that PTAB judges are inferior officers because a Director purportedly supervises them and a Director is a principal officer. What about when there is no Director/principal officer to supervise the PTAB judges? You might recall that there was an extended vacancy in the USPTO Director position between the terms of David Kappos and Michele Lee.

Oral argument of the day: In re Sorensen

Saturday, January 16th, 2021

The oral argument of the day comes from the recent appeal to the Federal Circuit in In re Sorensen. This was an appeal of a §101 rejection in ex parte prosecution.

The claim at issue is pretty long. Claim 1 recites:

1.  A system for analyzing shopper behavior within a store, the system comprising:

a sensor system configured to:

            for each of a plurality of a first group of shopper trips in the store,

                        detect a wireless signal for a shopper proxy device adjacent an entrance to the store;

                        detect a wireless signal for the shopper proxy device adjacent an exit of the store;

a data analyzer computing device configured to:

            determine a trip length for each shopper based on a time between the detected presence of the detected wireless signal at the entrance and the detected presence of the detected wireless signal at the exit of the store;

            determine a total number of shopper trips by multiplying a number of the detected wireless signals by a calibration factor, the calibration factor determined based on image data of the entrance and exit captured by one or more cameras, and the calibration factor relating a number of actual shoppers observed in the image data during a calibration period;

            calculate a first relationship that is a distribution of the determined trip lengths over the number of shopper trips and trip length; 

            determine an average trip length based on the distribution of the first relationship;

            for each of a plurality of a second group of shopper trips in the store,

                        receive transaction data for a plurality of purchase transactions at the store, and transaction data for a plurality of items, the transaction data for the plurality of purchase transactions including a number of items purchased for each purchase transaction;

                        calculate a second relationship that is a distribution of items purchased in the purchase transactions over the shopper trips;

                        determine an average number of items purchased based on the distribution of the second relationship;

wherein the sensor system is further configured to:

            detect current wireless signals in the store; and

wherein the data analyzer computing device is further configured to:

            determine a current total number of shoppers in the store by multiplying the detected current wireless signals by the calibration factor;

            determine a number of items to be purchased by the current number of shoppers by multiplying the average number of items purchased by the current total number of shoppers;

wherein the system further comprises an alert device to signal for deploying an in-store service, the alert device being configured to signal that the in-store service be deployed in response to one or both of:

            the data analyzer computing device determining that the total number of shoppers exceeds a first predetermined threshold, in which case the alert device is configured to signal for deploying the in-store service after a predetermined period of time following detection that the current number of shoppers exceeds the first predetermined threshold, the predetermined period of time being equal in duration to the average trip length, and

            the data analyzer computing device estimating that the number of items to be purchased by the current total number of shoppers exceeds a second predetermined threshold, in which case the alert device is configured to signal for deploying the in-store service after the predetermined period of time following detection that the number of items to be purchased by the current total number of shoppers exceeds the second predetermined threshold.

The claim is also reproduced in the opinion by the PTAB here:

If you were curious how this claim compares to the claim in Electric Power Group, the claim in Electric Power Group had 395 words while the claim above has 535 words.

As you’ll see from the PTAB decision, the only issue on appeal was 35 U.S.C. §101. Apparently, a §103 rejection had been made during prosecution and was later withdrawn by the examiner.

The Federal Circuit panel was comprised of Judges Newman, O’Malley, and Taranto.

Judge O’Malley first asked if the Office’s position was that any application directed to organizing human activity would be unpatentable:

Judge Newman had a couple of interesting sound bites during the oral argument. My sense from her comments is that she would like to see the Office provide more citations of references when making §101 rejections.

You can listen to the entire oral argument here:

Useless Federal Circuit Trivia of the Day

Tuesday, January 12th, 2021

In today’s opinion in Mortgage Application Technologies, LLC v. MeridianLink, Inc., the Federal Circuit used the word “forwent” in the opinion.

Query: How many times has the word “forwent” been used in prior Federal Circuit or CCPA opinions? Answer below the break.


Supreme Court Grants Cert. in Minerva Surgical, Inc. v. Hologic, Inc.

Saturday, January 9th, 2021

On Friday, the Supreme Court granted a petition for certiorari in Minerva Surgical, Inc. v. Hologic, Inc. The case concerns assignor estoppel.

You can listen to the oral argument from the Federal Circuit case here:

You can read the Federal Circuit opinion here: [Link].

You can read the briefs to the Supreme Court here: [Link].

Supreme Court sets Arthrex oral argument for March 1st

Tuesday, January 5th, 2021

Mark your calendars. The Supreme Court has set the oral argument in United States v. Arthrex, Inc. for March 1, 2021.

Article Suggestion: Psychological studies of hindsight bias

Tuesday, January 5th, 2021

If anyone is looking for an article to write, I think a very good topic would be a survey of the psychological research (psychology research??) on hindsight bias. Moreover, a discussion of how the psychological research on hindsight has been applied in other legal settings would be useful. I suspect the bulk of the research focuses on how witnesses to accidents remember or misremember the details of an accident. But, it would still be interesting to see what that research teaches us. Hindsight is bandied about quite often when arguing about obviousness; but, isn’t it time to update our understanding of the principles of hindsight so that we can try to eliminate hindsight bias in the minds of those examining applications . . . as well as those adjudicating patents? I don’t ever remember reading a Federal Circuit or CCPA decision that cites a scientific journal on the factors that identify or suggest a hindsight bias.


Update 1/9/21:

Many thanks to Professor Karshtedt of GW Law for pointing me in the direction of some great resources on this topic. First, in In re Cyclobenzaprine Hydrochloride, 676 F.3d 1063 (Fed. Cir. 2012), the Federal Circuit points to some journal articles on hindsight bias, including a recent law review article by Professor Gregory Mandel [Link]:

Finally, not only is Stratoflex the law, it is sound in requiring that a fact finder consider the objective evidence before reaching an obviousness determination. The objective considerations, when considered with the balance of the obviousness evidence in the record, guard as a check against hindsight bias. Graham, 383 U.S. at 36, 86 S.Ct. 684 (quoting Monroe Auto Equip. Co. v. Heckethorn Mfg. & Supply Co., 332 F.2d 406, 412 (6th Cir.1964)). In Graham, the Court recognized the danger of hindsight bias and the ameliorative effect that the objective considerations might offer. In discussing the utility of the objective considerations, the Court cited a law review note published after the nonobviousness requirement was enacted in the 1952 Patent Act. Id. at 18, 86 S.Ct. 684 (citing Richard L. Robbins, Subtests of “Nonobviousness”: A Nontechnical Approach to Patent Validity, 112 U. Pa. L.Rev. 1169 (1964) (“Robbins”)). In that note, the author argued that the instruments of decision-making applied in patent cases at the time were inadequate and allowed judges to rely on “judicial hunches,” thereby deciding cases on extralegal grounds. Robbins, 112 U. Pa. L.Rev. at 1170 & n.11 (citing Joseph C. Hutcheson, Jr., The Judgment Intuitive: The Function of the “Hunch” in Judicial Decisions, 14 Cornell L.Q. 274, 278 (1929)). Such “judicial hunches” are encouraged by hindsight bias. As one commentator recently observed, “decision-makers unconsciously let knowledge of the invention bias their conclusion concerning whether the invention was obvious in the first instance.” Gregory N. Mandel, Patently Non-Obvious: Empirical Demonstration that the Hindsight Bias Renders Patent Decisions Irrational, 67 Ohio St. L.J. 1391, 1393 (2006). In other words, knowing that the inventor succeeded in making the patented invention, a fact finder might develop a hunch that the claimed invention was obvious, and then construct a selective version of the facts that confirms that hunch. This is precisely why the Supreme Court explained that objective considerations might prevent a fact finder from falling into such a trap, observing that objective considerations might serve to “resist the temptation to read into the prior art the teachings of the invention in issue.” 383 U.S. at 36, 86 S.Ct. 684.[6] And, it is precisely why fact finders must withhold judgment on an obviousness challenge until it considers all relevant evidence, including that relating to the objective considerations.

In re Cyclobenzaprine Hydrochloride, 676 F.3d 1063, 1079 (Fed. Cir. 2012)

Second, the Fifth Circuit even more recently noted some research in regard to hindsight in the case of Lisa M. v. LEANDER INDEPENDENT SCHOOL DIST., 924 F.3d 205 (5th Cir. 2019):

While judicial review unavoidably looks backward, our task is to assess eligibility with the information available to the ARD committee at the time of its decision. An erroneous conclusion that a student is ineligible for special education does not somehow become acceptable because a student subsequently succeeds. Nor does a proper finding that a student is ineligible become erroneous because the student later struggles. Subsequent events do not determine ex ante reasonableness in the eligibility context.

We are not alone in this approach. The Ninth Circuit has held that review of a school district’s eligibility determination should be assessed “at the time of the child’s evaluation and not from the perspective of a later time with the benefit of hindsight.” L.J. by & through Hudson v. Pittsburg Unified Sch. Dist., 850 F.3d 996, 1004 (9th Cir. 2017). As L.J. put it, “We judge the eligibility decision on the basis of whether it took the relevant information into account, not on whether or not it worked.” Id.

Our sister circuits are split on whether courts can consider hindsight evidence in a different context—when assessing the appropriateness of an IEP. Compare R.E. v. New York City Dep’t of Educ., 694 F.3d 167, 187 (2d Cir. 2012) (disallowing use of “evidence that [a] child did not make progress under the IEP in order to show that [the IEP] was deficient from the outset”); with M.S. ex rel. Simchick v. Fairfax County Sch. Board, 553 F.3d 315, 327 (4th Cir. 2009) (“[W]e have concluded that, in some situations, evidence of actual progress may be relevant to a determination of whether a challenged IEP was reasonably calculated to confer some educational benefit.”); see also Dennis Fan, No IDEA What the Future Holds: The Retrospective Evidence Dilemma, 114 Colum. L. Rev. 1503 (2014) (describing various circuit positions); Maggie Wittlin, Hindsight Evidence, 116 Colum. L. Rev. 1323, 1386-88 (2016) (same).

Lisa M. v. LEANDER INDEPENDENT SCHOOL DIST., 924 F.3d 205, 214 (5th Cir. 2019).

The link to the article by Professor Maggie Wittlin, including a discussion of debiasing, is available [here].