During the recent oral argument of In re Gross, Chief Judge Prost asked the associate solicitor about the Solicitor’s Office relatively new practice of adding a discussion of Alice v. CLS to appeals in which §101 was not addressed below by the PTAB. The associate solicitor noted that the discussion of Alice in this appeal was just being made to let the court know that the “[PTO] was familiar with the Alice issue”….? In addition to flagging the issue at the start of the PTO’s oral argument, Chief Judge Prost noted that the new practice was “a little troubling.” [Listen].
From what I could tell, Chief Judge Prost finds the practice a little troubling at least because the appellant only has an opportunity to respond to the §101 issue for the first time in the appellant’s reply brief.
I suppose there are other issues to consider as well. As a general rule, new issues are not supposed to be raised on appeal. Typically, it is the appellant that has a tendency to raise new issues. In this instance, it was the PTO in the role of appellee that raised a new issue not addressed below. There might be an exception for this case, however, because the Supreme Court decided Alice after the PTAB rendered its decision.
In addition, the Federal Circuit has noted that while 35 U.S.C. §101 is an issue of law, it can be informed by underlying or subsidiary factual issues. See Arrhythmia Research Technology v. Corazonix Corp., 958 F.2d 1053 (Fed. Cir. 1992) and In re Comiskey, 499 F.3d 1365, 1373 (Fed. Cir. 2007). So, raising the issue on appeal does not give the applicant any opportunity to present factual evidence with respect to those underlying or subsidiary factual issues.
The practice might be a little troubling to the PTAB and public, as well. The determination of patent eligibility by the PTO is really the province of the PTAB judges — more specifically it is the province of a majority of judges on at least a three judge panel. Each judge is required to meet specific qualifications (both legal and technical) and be sworn into office before making adjudications. When the Solicitor’s Office, i.e., the advocacy branch as opposed to the judicial branch of the PTO, asserts on behalf of the PTO for the first time that “Gross’ Claimed Invention Is Ineligible For Patent Protection Under The Supreme Court’s Recent Decision In Alice Corp. v. CLS Bank” — see page twenty-five of the USPTO brief — it appears to be invading the province of the PTAB.
You can’t fault the Solicitor’s Office for being zealous advocates. But, perhaps the CAFC will have more to say about this new practice in the future.
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As an aside, it is interesting to compare the Federal Circuit’s In re Comiskey opinion — in which the Federal Circuit sua sponte raised a §101 theory — with the Supreme Court’s opinions in Singleton v. Wulff, 428 U.S. 106, 120 (1976) and Hormel v. Helvering, 312 U.S. 552, 556-57 (1941):
It is the general rule, of course, that a federal appellate court does not consider an issue not passed upon below. In Hormel v. Helvering, 312 U. S. 552, 556 (1941),the Court explained that this is “essential in order that parties may have the opportunity to offer all the evidence they believe relevant to the issues . . . [and] in order that litigants may not be surprised on appeal by final decision there of issues upon which they have had no opportunity to introduce evidence.” We have no idea what evidence, if any, petitioner would, or could, offer in defense of this statute, but this is only because petitioner has had no opportunity to proffer such evidence. Moreover, even assuming that there is no such evidence, petitioner should have the opportunity to present whatever legal arguments he may have in defense of the statute. We think he was justified in not presenting those arguments to the Court of Appeals, and in assuming, rather, that he would at least be allowed to answer the complaint, should the Court of Appeals reinstate it.
Singleton v. Wulff, 428 U.S. 106, 120 (1976);
Ordinarily an appellate court does not give consideration to issues not raised below. For our procedural scheme contemplates that parties shall come to issue in the trial forum vested with authority to determine questions of fact. This is essential in order that parties may have the opportunity to offer all the evidence they believe relevant to the issues which the trial tribunal is alone competent to decide; it is equally essential in order that litigants may not be surprised on appeal by final decision there of issues upon which they have had no opportunity to introduce evidence. And the basic reasons which support this general principle applicable to trial courts make it equally desirable that parties should have an opportunity to offer evidence on the general issues involved in the less formal proceedings before administrative agencies entrusted with the responsibility of fact finding. Recognition of this general principle has caused this Court to say on a number of occasions that the reviewing court should pass by, without decision, questions which were not urged before the Board of Tax Appeals. But those cases do not announce an inflexible practice as indeed they could not without 557*557 doing violence to the statutes which give to Circuit Courts of Appeals reviewing decisions of the Board of Tax Appeals the power to modify, reverse or remand decisions not in accordance with law “as justice may require.” There may always be exceptional cases or particular circumstances which will prompt a reviewing or appellate court, where injustice might otherwise result, to consider questions of law which were neither pressed nor passed upon by the court or administrative agency below. See Blair v. Oesterlein Machine Co., 275 U.S. 220, 225.
Hormel v. Helvering, 312 U.S. 552, 556-57 (1941).