Judge Chen gives a shout-out to patent prosecutors

December 4th, 2020

At the conclusion of the oral argument in IN RE GOOGLE TECHNOLOGY HOLDINGS LLC, No. 2019-1828 (Fed. Cir. Nov. 13, 2020), Judge Chen made a comment that will please patent prosecutors — noting the disparity between patent prosecution budgets and patent litigation budgets:

I have added this sound bite to the audio key for Judge Chen.

Before Arthrex

December 1st, 2020

Patently-O has the initial briefs for the U.S. v. Arthrex appeal at the Supreme Court [Link]. As I was reading the government’s brief and its assertions of how the Director of the Patent Office can purportedly control PTAB judges [Link], I was reminded of the DOJ/PTO’s brief before the Federal Circuit back in July of 2017 in Knowles Electronics LLC v. Iancu, 886 F.3d 1369 (Fed. Cir. 2018)(then-captioned Knowles Electronics LLC v. Matal). In that disinterested brief before the court, the government explained how the Director is the representative of the agency, i.e., the USPTO; but, the PTAB is the USPTO’s adjudicator. The Director can ask the PTAB to reconsider a decision. But, when the PTAB makes a decision, it is in reality an order of the agency itself. If the Director disagrees with a PTAB decision, he/she is free to challenge that decision at the Federal Circuit.

Indeed, Ingalls directly addresses the Director’s position in these appeals, not as a representative of the Board but as a representative of the agency as a whole. When the Board—the USPTO’s adjudicator—makes a decision, the “order of the agency’s designated adjudicator is in reality an order of the agency itself.” 519 U.S. at 268. The agency “may then be free to designate its enforcer/litigator as its voice before the courts of appeals.” Id. The agency’s litigator—in this case the USPTO Solicitor—while appearing on the side of the appellee, “is free to argue on behalf of the petitioner and to challenge the decision of the Board.” Id. at 270. Thus, if the Director (or Solicitor) disagrees with the Board’s decision, he need not argue in support of affirmance. This prevents “a ‘lopsided’ scheme whereby the Director can appear only in defense of the [Board’s] decisions.” Id. (citations omitted).3 

Footnote 3. Practically speaking, the Solicitor would not often argue in support of reversal of a Board decision because the agency would likely handle those cases administratively. For example, the Director can ask the Board to reconsider a decision. If the decision has already been appealed and the Director then determines that it is somehow defective, the Solicitor can seek a remand for the Board to reconsider.See, e.g.In re Bursey, No. 2016-2675 (Fed. Cir. Apr. 28, 2017) (nonprecedential) (remanding appeal upon Solicitor’s request to allow Board to reconsider); In re DiStefano, 562 Fed. App’x 984 (Fed. Cir. June 4, 2014); In re Shield, No. 2013-1562 (Fed. Cir. Apr. 16, 2014); In re Motorola Mobility LLC, No. 2012-1470 (Fed. Cir. Mar. 5, 2013).

DOJ/USPTO’s Supplemental Brief filed July 31, 2017 in Knowles Electronics LLC v. Iancu, 886 F.3d 1369 (Fed. Cir. 2018)(then-captioned Knowles Electronics LLC v. Matal).

This quote and the accompanying footnote 3 seem to suggest that it is really the Federal Circuit that controls the PTAB.

The Unified Theory of Patent Law

November 7th, 2020

Not always correct

November 5th, 2020

The oral argument of DANA-FARBER CANCER INSTITUTE v. ONO PHARMACEUTICAL, 964 F.3d 1365 (Fed. Cir. 2020) is probably an instructive case for those arguing cases before the Federal Circuit. When a judge — even a highly experienced judge — asserts how the mechanics of patent prosecution work, they just might be flat out wrong. That was the situation in the Dana-Farber oral argument, where Judge Lourie suggested that the inventors listed for a divisonal application must be the same as the inventors listed in the parent of that divisional application. Listen:

Oral argument of the day: Bikram’s Yoga College of India v. Evolation Yoga

October 26th, 2020

It is interesting that the 1952 Patent Act sets forth what is patent eligible in 35 U.S.C. §101 but does not expressly recite any exceptions. In contrast, the 1976 Copyright Act sets forth what is copyrightable in 17 U.S.C. §102(a) and Congress did expressly recite exceptions in 17 U.S.C. §102(b).

Today’s oral argument is a few years old. It is the Ninth Circuit oral argument of Bikram’s Yoga College of India v. Evolation Yoga, 803 F.3d 1032 (9th Cir. 2015). The case addressed whether a sequence of twenty-six yoga poses and two breathing exercises is entitled to copyright protection. Because the case was argued at the Ninth Circuit, there is video of the argument.

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

Quotes of the day

October 23rd, 2020

As the nation’s lone patent court, we are at a loss as to how to uniformly apply § 101. All twelve active judges of this court urged the Supreme Court to grant certiorari in Athena to provide us with guidance regarding whether diagnostic claims are eligible for patent protection. There is very little about which all twelve of us are unanimous, especially when it comes to § 101. We were unanimous in our unprecedented plea for guidance. 

AMERICAN AXLE & MANUFACTURING, INC. v. NEAPCO HOLDINGS LLC, NEAPCO DRIVELINES LLC, 2018-1763, Order (Fed. Cir. October 23, 2020)(Judge Moore concurrence at page 2).

Section 101 is clear: “[w]hoever invents or discovers any new and useful process,” like the claims here, “may obtain a patent.” Yet, we have struggled to consistently apply the judicially created exceptions to this broad statutory grant of eligibility, slowly creating a panel-dependent body of law and destroying the ability of American businesses to invest with predictability. 

AMERICAN AXLE & MANUFACTURING, INC. v. NEAPCO HOLDINGS LLC, NEAPCO DRIVELINES LLC, 2018-1763, Order (Fed. Cir. October 23, 2020)(Judge Moore concurrence at page 2).

The majority concluded as a matter of law that claims to a manufacturing process are not eligible for patent protection because they are directed to a law of nature even though no law of nature appears in the claims, the patent, or the prosecution history. Under the majority’s new “Nothing More” test, claims are ineligible when they merely make use of a natural law. 

AMERICAN AXLE & MANUFACTURING, INC. v. NEAPCO HOLDINGS LLC, NEAPCO DRIVELINES LLC, 2018-1763, Order (Fed. Cir. October 23, 2020)(Judge Moore concurrence at page 3).

Instead, our decision in American Axle is a patent killing judicial exception of our own creation. The claims here are directed to a process for manufacturing car parts—the type of process which has been eligible since the invention of the car itself. They do not preempt the use of a natural law, a building block of science, which should be freely available to all. To nonetheless hold these claims ineligible, the majority broadens the judicial exceptions in a way that threatens to swallow the whole of the statute. Such a rejection of the plain language of the patent statute in favor of a vast and amorphous judicial exception in which we Federal Circuit judges get to decide de novo not just the legal principles, but the application of the science itself, cannot stand.

AMERICAN AXLE & MANUFACTURING, INC. v. NEAPCO HOLDINGS LLC, NEAPCO DRIVELINES LLC, 2018-1763, Order (Fed. Cir. October 23, 2020)(Judge Moore concurrence at page 4).

Once upon a midnight dreary, while I pondered, weak and weary,
Over many a quaint and curious volume of forgotten lore—
    While I nodded, nearly napping, suddenly there came a tapping,
As of some one gently rapping, rapping at my chamber door.
“’Tis some visitor,” I muttered, “tapping at my chamber door—
            Only this and nothing more.”

“The Raven” by Edgar Allan Poe, first stanza.

You can read the entire concurring opinion here: [Link].

You can read “The Raven” by Edgar Allan Poe here: [Link].

Supreme Court sets briefing schedule in Arthrex

October 22nd, 2020

The Supreme Court has set the briefing schedule for the Arthrex case. The docket from yesterday shows this entry:

Petitioners in Nos. 19-1434 and 19-1452 shall each file an opening brief, limited to 13,000 words, on or before Wednesday, November 25, 2020. Amicus curiae briefs in support of petitioners in Nos. 19-1434 or 19-1452, or in support of no party, shall be filed on or before Wednesday, December 2, 2020, and the briefs shall bear a light green cover. Petitioner in No. 19-1458 shall file a consolidated opening and response brief, limited to 17,000 words, on or before Wednesday, December 23, 2020. Amicus curiae briefs in support of petitioner in No. 19-1458 shall be filed on or before Wednesday, December 30, 2020, and the briefs shall bear a dark green cover. Petitioners in Nos. 19-1434 and 19-1452 shall each file a consolidated response and reply brief, limited to 14,500 words, on or before Friday, January 22, 2021. Petitioner in No. 19-1458 shall file a reply brief, limited to 6,000 words, pursuant to Rule 25.3 of the Rules of this Court. VIDED.

Here are some of my earlier posts covering the Arthrex and Polaris cases:

Pending case of note: Polaris v. Kingston

Kingston files brief in Polaris v. Kingston and addresses the role of PTAB judges

Reply brief filed in Polaris v. Kingston — are APJ’s unconstitutionally appointed principal officers?

The Judicial Oath’s Impact on Determining Who is a Principal Officer

Federal Circuit Entertains Arguments on Whether PTAB Judges Were Constitutionally Appointed

What will the fallout be from Arthrex v. Smith and Nephew?

Supplemental Briefs filed in PTAB Judges Appointments Clause case — Arthrex v. Smith & Nephew

Oral Argument of the Day: Polaris v. Kingston

Peeking behind the curtain

Who is left from the In re Alappat panel?

En banc review requested in Polaris v. Kingston, on Arthrex issues

Will Bullock v. BLM have any impact on Arthrex/Polaris?

En banc oral argument of NOVA v. Secretary of Veteran Affairs

October 20th, 2020

The Federal Circuit sat en banc on October 8, 2020 to hear an oral argument in a non-patent case. I think en banc oral arguments are interesting regardless of whether they are patent cases. For one, the judges tend to be on their best behavior when in front of all their peers. For another, the judges seem to approach the questioning with a little bit more advocacy toward their positions than they seem to do in a three-judge oral argument.

I have not had a chance to listen to the entirety of this oral argument yet, as it is a doozy — it lasted well over two hours. I’m pretty sure that is the longest oral argument at the Federal Circuit that I have downloaded since mid-2006.

One interesting thing I noticed was that Chief Judge Prost organized the oral argument to allow questioning to take place by seniority level.

You can listen to the oral argument here: [Link].

The questions presented are:

1. Are the allegations of the Petition sufficient to establish standing, even without any evidence from NOVA, given that the Secretary does not challenge standing, or must NOVA submit evidence to establish Article III standing, see Phigenix, Inc. v. Immunogen, Inc., 845 F.3d 1168, 1171-73 (Fed. Cir. 2017)Shrimpers & Fishermen of RGV v. Texas Commission on Environmental Quality, 968 F.3d 419, 423-24 (5th Cir. 2020) (citing cases from six other circuits)?

2. Is there evidence that, at the time of the Petition, NOVA had members with standing to challenge the provisions at issue?

3. Does NOVA have standing on any basis apart from having had members who would have had standing to challenge the provisions at issue?

4. Whether this court has jurisdiction under 38 U.S.C. § 502 to review provisions of the Department of Veterans Affairs’ Adjudication Procedures Manual M21-1 that are binding on the agency’s initial adjudicators but not on the Board of Veterans’ Appeals, and whether this court should overrule Disabled American Veterans v. Secretary of Veterans Affairs, 859 F.3d 1072 (Fed. Cir. 2017).

5. Whether the time for filing a direct action for judicial review under 38 U.S.C. § 502 is governed by the 60-day deadline specified by Federal Circuit Rule 47.12(a) or only by the six-year statute of limitations in 28 U.S.C. § 2401(a).

Judge Moore recused herself from this appeal.

Update 10/22/20:

One interesting sound bite from the en banc oral argument was when Judge Chen inquired about other agency manuals and whether they would also be required to be published in the Federal Register.

As an aside, you might recall that then-Judge Gorsuch of the Tenth Circuit Court of Appeals did not appear to be a big fan of the Trademark Trial and Appeal Board Manual of Procedure (TBMP) [Link].

In other news, the USPTO published in the Federal Register a “Request for Comments on Discretion To Institute Trials Before the Patent Trial and Appeal Board.” The USPTO is considering the codification of its current policies and practices, or the modification thereof, through rulemaking and wishes to gather public comments on the Office’s current approach and on various other approaches suggested to the Office by stakeholders. To assist in gathering public input, the USPTO is publishing questions, and seeks focused public comments, on appropriate considerations for instituting AIA trials.

Article suggestion: (1) What manuals of the USPTO have been published in the Federal Register (and when); and, (2) do any of the manuals that were not published in the Federal Register have provisions that are generally applicable interpretive rules promulgated by the USPTO through those manuals?

For followers of the Arthrex case, Judge Chen also asked if members of the Board of Veterans’ Appeals (BVA) are employees or officers:

The Federal Circuit Blog has a nice recap of this oral argument: [Link].

Will Bullock v. BLM have any impact on Arthrex/Polaris?

October 11th, 2020

I was watching the debate between two of Colorado’s candidates for Senate last week and the case of Bullock v. United States Bureau of Land Management, No. 4: 20-cv-00062-BMM (D. Mont. Sept. 25, 2020) came up as one of the questions. In that case the person acting as the Head of the Bureau of Land Management, an agency within the Department of Interior, was removed by a US District Judge in Montana for violation of the Appointments Clause of the US Constitution — namely acting as an officer of the United States without the consent of the Senate. Moreover, all of his functions and duties during the time of his improper tenure were declared invalid.

It brought to mind the Arthrex and Polaris cases and their pending petitions for writs of certiorari at the US Supreme Court.

The judge in Bullock v. United States Bureau of Land Management, No. 4: 20-cv-00062-BMM (D. Mont. Sept. 25, 2020) concluded his decision by stating:

The APA requires courts to “hold unlawful and set aside agency action, findings, and conclusions found to be . . . arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law.” Id. § 706(2)(A). A court cannot “substitute its judgment for that of the agency.” Citizens to Preserve Overton Park, Inc. v. Volpe, 401 U.S. 402, 416 (1971). A court instead must ensure that the agency has “examine[d] the relevant data and articulate[d] a satisfactory explanation for its action.” Motor Vehicle Mfrs. Assn. of United States, Inc. v. State Farm Mut. Automobile Ins. Co., 463 U.S. 29, 43 (1983). The Secretary’s failure to perform the functions and duties of BLM Director as required under the FVRA and instead delegate those decisions to an improperly appointed Acting BLM Director would render any decisions issued by that Acting BLM Director arbitrary and capricious as not issued “in accordance with law.” 5 U.S.C. § 706(2)(A). See also SW General, Inc. v. N.L.R.B., 796 F.3d 67, 79 (D.C. Cir. 2015), aff’d on other grounds,___ U.S. at ____, 137 S. Ct. at 938 n.2 (“The Board did not seek certiorari on this issue, so we do not consider it.”).

The Court recognizes that any “function or duty” of the BLM Director that has been performed by Pendley would have no force and effect and must be set aside as arbitrary and capricious. See 5 U.S.C. §§ 3348(d), 706(2)(A). These acts appear to include, but not be limited to, the Missoula RMP and the Lewistown RMP. The Court will direct the parties to provide further briefing on these actions and any other BLM Director exclusive functions or duties that Pendley may have performed.

You can read the entire opinion here:

STEVE BULLOCK, in his official capacity as Governor of Montana; MONTANA DEPARTMENT OF NATURAL RESOURCES AND CONSERVATION, Plaintiffs,
UNITED STATES BUREAU OF LAND MANAGEMENT, an agency within the United States Department of the Interior; WILLIAM PERRY PENDLEY, in his official capacity as the person exercising authority of the Director of the Bureau of Land Management; UNITED STATES DEPARTMENT OF THE INTERIOR; DAVID BERNHARDT, in his official capacity as Secretary of the United States Department of the Interior, Defendants.

No. 4:20-cv-00062-BMM.

United States District Court, D. Montana, Great Falls Division.September 25, 2020.


BRIAN MORRIS, Chief District Judge.


The Governor of Montana and the Montana Department of Natural Resources and Conservation (“Plaintiffs”) bring this action against the U.S. Bureau of Land Management (“BLM”), William Perry Pendley in his official capacity, and various government agencies and agents in their official capacities (together, “Federal Defendants”). Plaintiffs allege that Pendley unlawfully served as Acting BLM Director in violation of the Appointments Clause of the U.S. Constitution, the Federal Vacancies Reform Act of 1998 (“FVRA”), and the Administrative Procedure Act (“APA”). (Doc. 1).

Plaintiffs seek declaratory and injunctive relief. (Doc. 1 at 29). Specifically, Plaintiffs seek an order and judgment declaring Pendley’s service as Acting Director of BLM unlawful; enjoining Pendley from exercising the authority of the Director; enjoining Department of the Interior (“Interior”) Secretary David Bernhardt from directing Pendley to exercise the authority of the Director; and granting any other relief deemed appropriate. Id. Plaintiffs filed what they fashioned as an Expedited Motion for Summary Judgment on August 20, 2020. (Doc. 10). Federal Defendants argue that Plaintiffs lack standing to bring their claims. (Doc. 17 at 1-2). Federal Defendants argue, in the alternative, that Pendley exercises the authority of BLM Director through lawful delegation. Id. at 2-3.


Factual Background

BLM manages the use and maintenance of 245 million acres of federal public lands (around 12 percent of the nation’s landmass) and 700 million acres of subsurface acreage (around 30 percent of the nation’s minerals). The Federal Land Management and Policy Act (“FLPMA”) charges BLM with administering those lands and subsurface acres. FLPMA requires that “the public lands be managed in a manner that will protect the quality of scientific, scenic, historical, ecological, environmental, air and atmospheric, water resource, and archeological values.” 43 U.S.C. § 1701(a)(8). Congress established the office of Director to lead BLM. By statute, the Director of the BLM must be filled “by the President, by and with the advice and consent of the Senate.” Id. § 1731(a).

Read the rest of this entry »

Is the key to a patent eligibility change a transfer of power?

October 2nd, 2020

I am never too sure how much power a Chief Judge of an appellate court actually wields. However, it is interesting to note that Chief Judge Prost turns 70 on May 24, 2021 — just shy of her seventh anniversary as Chief Judge (May 30, 2021). The rules state that a judge shall serve as Chief Judge no longer than seven years nor past the age of 70. Therefore, the next Chief Judge will be Judge Moore. It will be interesting to see if the change in Chief Judge produces a better consensus on the court in the law of patent eligibility. One can hope.

It will also be interesting to see if the Federal Circuit renews its efforts to invite district court judges, retired Supreme Court justices, and retired Federal Circuit judges to sit by designation with the Federal Circuit. Chief Judge Michel seemed to encourage the former; but, I think that effort has waned since his tenure.

Oral argument of the day: Gadelhak v. AT&T Services

September 26th, 2020

I was curious what current Supreme Court nominee Judge Amy Coney Barrett sounded like during oral argument at the Seventh Circuit. She recently authored the opinion in Gadelhak v. AT&T SERVICES, INC., 950 F.3d 458 (7th Cir. 2020). That decision is essentially a grammar case — which is always an interesting subject for patent attorneys.

You can listen to the oral argument here: [Link]. Chief Judge Wood is the first female voice that you hear during the questioning. Judge Barrett is the second female voice that you hear during the questioning.

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

Article suggestion: What grammar texts has the Federal Circuit and the CCPA used over the years and is there an authoritative source? For purposes of claim construction, should grammar be approached from the perspective of a PHOSITA? For purposes of claim construction at the USPTO, if there are competing grammatical rules at play, should the grammatical rule that gives the broadest reasonable interpretation be used?

Can a dependent claim that adds an abstract idea to an otherwise eligible independent claim be patent ineligible?

September 2nd, 2020

I was reading through the PTO’s most recent update to the MPEP on patent eligibility recently and ran across this statement instructing examiners:

And conversely, even if an independent claim is determined to be eligible, a dependent claim may be ineligible because it adds a judicial exception without also adding limitations that integrate the judicial exception or provide significantly more.

MPEP §2106.07 (Revised June 2020).

In a recent webinar, a listener asked the speaker if a dependent claim that adds an abstract idea limitation to an otherwise patent eligible independent claim could make the dependent claim ineligible. On the fly, the speaker astutely pointed to the Diamond v. Diehr decision. In that case, the Supreme Court stated:

Our earlier opinions lend support to our present conclusion that a claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula, computer program, or digital computer.

Diamond v. Diehr, 450 U.S. 175, 187 (1981).

Judge Linn highlighted this issue a few years ago in the oral argument of IP-Learn v. Microsoft [Link]. It’s a great sound bite, if you have not listened to it before.

It is interesting to think about how 35 U.S.C. §112(d) informs the analysis, if at all:

(d)Reference in Dependent Forms.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.

35 U.S.C. §112(d).

Oral argument of the day: FTC v. Qualcomm

August 11th, 2020

The Ninth Circuit recently issued a significant antitrust decision in FTC v. Qualcomm with respect to how Qualcomm licenses some of its patents. The Ninth Circuit decision is available here: [link]. Because the Ninth Circuit records video of its oral arguments, the video of the oral argument is available below.

Chief Judge Michel of the Federal Circuit (retired) filed this amicus brief in the case: [link].

Oral argument of the week: VELOCITY PATENT LLC v. FCA US LLC

August 4th, 2020

The oral argument of the week is from VELOCITY PATENT LLC v. FCA US LLC, No. 2019-1114 (Fed. Cir. Nov. 13, 2019). This was a very well-argued case that addressed a lot of the court’s means plus function jurisprudence. I think you will enjoy it.

The court issued a Rule 36 Judgment. [Link].

Is there a continuation bubble coming?

August 3rd, 2020

I tuned-in to the LexisNexis-IPWatchdog-USPTO seminar last week about application routing and was interested to learn that in the future there is a presumption that all continuation applications will be routed to the examiner of the parent application.

It will be interesting to see if there will be a continuation bubble prior to the new routing rules going into effect, similar to what we saw with new applications prior to GATT and the AIA taking effect.