717 Madison Place

I was down in Argentina earlier this month and had the opportunity to do some fishing for a fish known as the Golden Dorado (a.k.a., ‘El Tigre del Rio’). While I was a patent attorney literally on a fishing expedition, it was not the same type that the Federal Circuit was referring to in Monarch Assur. PLC v. US, 244 F.3d 1356 (Fed. Cir. 2001):

Having said that, we wish to make clear to plaintiffs and their counsel that the trial court is not expected to, nor should it, simply allow plaintiffs to embark on a wide-ranging fishing expedition in hopes that there may be gold out there somewhere, or worse, in hopes that the Government will get tired of litigating and settle an otherwise unprovable case.

Monarch Assur. PLC v. US, 244 F.3d 1356, 1365 (Fed. Cir. 2001).

Judge Wallach took senior status back in 2021. In the final oral argument over which he presided, he thanked the bar for its courtesy and hard work over the years. You can listen to his sign-off here:

There was another interesting sound bite during that oral argument. In an appeal from Judge Albright’s courtroom, Judge Wallach asked whether a person of skill in the art was a district court judge with twenty years of patent litigation experience:

You can listen to that entire oral argument here:

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).

An examiner’s assertion that a particular fact or principle is well-known is not evidentiary support. Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016). 

In re Google, 2022-2012 (Fed. Cir. January 9, 2023)(slip opinion at 10 citing Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016) and DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006). 

Sure sounds like the PTO should be required to provide evidence in a §101 rejection that something is well-understood, routine, and conventional to a skilled artisan at the time of the patent — not mere examiner or APJ opinions — or otherwise the rejection should fail for lack of substantial evidence.

by Bill Vobach

The recent appropriations Act makes provisions for a new satellite patent office in the Southeast Region of the United States. The new office will be located in one of these states within the next three years: Virginia, North Carolina, South Carolina, Georgia, Florida, Tennessee, Alabama, Mississippi, Louisiana, and Arkansas.

So, where will it end up? I suppose the most logical place for the satellite office is the Research Triangle area of North Carolina; but, that’s open to debate. Criteria for assessing where to locate the new office will include:

(A) The number of patent-intensive industries located near the site.

(B) How many research-intensive institutions, including institutions of higher education, are located near the site.

(C) The State and local government legal and business frameworks that support intellectual property-intensive industries located near the site.

At any rate, it will be interesting to see where the ultimate location will be. Personally, I’m pulling for Florida.

Here’s the pertinent text from the Act:

(b) Southeast Regional Office.–

        (1) In general.–Not later than 3 years after the date of 

    enactment of this Act, the Director shall establish a satellite 

    office of the Office in the southeast region of the United States.

        (2) Considerations.–When selecting a site for the office 

    required under paragraph (1), the Director shall consider the 

    following:

            (A) The number of patent-intensive industries located near 

        the site.

            (B) How many research-intensive institutions, including 

        institutions of higher education, are located near the site.

            (C) The State and local government legal and business 

        frameworks that support intellectual property-intensive 

        industries located near the site.

The audio bite of the day comes from Judge Moore during the oral argument of ADASA INC. v. AVERY DENNISON CORPORATION, No. 2022-1092 (Fed. Cir. Dec. 16, 2022).

I think you may be the only person I’ve ever heard . . . say that we have somehow created bright lines in 101. I can’t think of anything that’s further from the truth.

Chief Judge Moore, Oral Argument in ADASA INC. v. AVERY DENNISON CORPORATION, No. 2022-1092 (Fed. Cir. Dec. 16, 2022) at 00:34.