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In the Supreme Court’s opinion in Brenner v. Manson, there is an interesting footnote, footnote 6, that makes a comment about whether the then-Commissioner of the USPTO was bound by determinations of the Board of Patent Appeals and Interferences.  The footnote reads:

[6] We find no warrant for this curious limitation either in the statutory language or in the legislative history of § 1256. Nor do we find persuasive the circumstance that the Commissioner may not appeal adverse decisions of the Board of Appeals. 35 U. S. C. §§ 141, 142, and 145 (1964 ed.). As a member of the Board and the official responsible for selecting the membership of its panels, 35 U. S. C. § 7 (1964 ed.), the Commissioner may be appropriately considered as bound by Board determinations. No such consideration operates to prevent his seeking review of adverse decisions rendered by the CCPA.

That remark is informed by the oral argument from Brenner v. Manson.  First, Justice Byron White had this exchange with Paul Bender, arguing on behalf of the USPTO:

Byron R. White:  Mr. Bender, is the Board of Appeals in the Patent Office, under the control of the Commissioner or not?

Paul Bender:  I don’t know what control means —

Byron R. White:  Well I mean that —

Paul Bender:  — the statute says the Commissioner is in charge of the whole Patent Office.

Byron R. White:  Yes.

Paul Bender:  The Board of Appeals is part of the Patent Office.

Byron R. White:  He can’t go up from there, can he?

Paul Bender:  No, he is part of the Board of Appeals.

Byron R. White:  Yes.

Paul Bender:  It would be wholly anomalous after they —

Byron R. White:  That’s what I wanted to know.

Paul Bender:  Yes, there’s no question that he cannot go.

The statute provides —

Byron R. White:  But he’s part of the Board.

Paul Bender:  Yes, he’s a member of the Board.

And I take it the reason is that he’s not only a member of the Board but the Board is under his jurisdiction, he is the head of the Patent Office, it wouldn’t make any sense.

The only reason to which they give is indeed what Mr. Justice White just mentioned.

Namely, that the Commissioner is the — cannot go to the Court of Customs and Patent Appeals, and so they say therefore the Commissioner shouldn’t be able to go to the Supreme Court.

Well, the reason the Commissioner can’t go to the Court of Customs and Patent Appeals is what we’ve just said.

It’s his own decision.

He couldn’t challenge the decision he had just rendered, but the Court of Customs and Patent Appeals can as it has here decide against him.

And in view of that, I see no reason why he shouldn’t then be able to invoke the jurisdiction of this Court.

Later in the oral argument, Dean Laurence, arguing on behalf of the patent applicant, responded with these remarks:

Dean Laurence:  A primary examiner.

And at this point, let me very quickly describe, because I think Mr. Justice White asked a question whether the Board of Appeals was under control of the Commissioner.

Let’s look at the Patent Office for a moment.

We have — when an application is filed, a group of people called examiners and there is of course in the hierarchy a primary examiner.

Now, the primary examiner and all of his helpers are arms of the Commissioner.

The Commissioner is charged with examining the patent.

So as far as we are concerned here, a primary examiner is the Commissioner.

Now, if the examiner by the Commissioner says, “I won’t allow that patent for any reason at all because it’s not in compliance with the Section 112 which says you must fully describe how to make and how to use the claimed invention.”

Or any other reason, then the applicant has recourse to a Board of Appeals.

Now the Board of Appeals is not under the control of the Commissioner.

The Board of Appeals is a separate body.

The members of the board are nominated by the President, confirmed with the advice and consent of the Senate, and they sit as a board.

The Commissioner of Patents is a member of the Board of Appeals but he does not control the Board of Appeals and cannot reverse a decision of the Board of Appeals.

Insofar as I’m aware, it’s never been done.

I do not believe it can be done.

If you were looking for a copy of Berkheimer’s brief in response to HP’s petition for en banc review in the case of Berkheimer v. HP, the brief is available here: [Berkheimerbrief].

It looks like it will be a little less than two weeks before the Supreme Court issues any new opinions.  So, with Oil States on the verge of being decided, I thought it might be of interest to re-post the Oil States oral argument.  It is available below:

The transcript is available here: [TRANSCRIPT].

The oral argument of the day is from In re Burgos.  This oral argument was particularly interesting for its discussion of the Supreme Court’s Funk Bros. decision.  Also, there was some discussion of the USPTO’s subject matter eligibility examples.  This is a good oral argument to listen to closely.  See if you think the argument presented by the Office is based entirely on the findings and reasoning of the PTAB — or are views of the “Office” or “Solicitor’s Office” interjected to supplement the argument.  Shouldn’t the CAFC be basing its review only on the reasoning and facts relied upon by the PTAB.

You can listen to the oral argument here:

You can review the Rule 36 Judgment [here].

The invention sounds interesting.  I downloaded the original application from Public Pair.  It is available [here].

Update March 31, 2018

I am having a bit of “poster’s remorse” after publishing the above post and listening to the oral argument again.  I think the Associate Solicitor actually did a nice job of repeatedly trying to bring the panel back to the reasoning and factual findings of the PTAB.  The Federal Circuit panel on the other hand framed a lot of their questions in terms of “What is the Office’s position . . .” with respect to hypotheticals and the Office’s subject matter eligibility examples.  That’s all well and good; but, at the end of the day review of agency determinations are supposed to be based on the reasoning and factual findings of the agency tribunal, namely the PTAB.

If you are interested in today’s Federal Circuit decision on copyright fair use in Oracle v. Google, the oral argument is available here:

The Federal Circuit decision is available [here].

Director Andrei Iancu has posted his greetings to the IP world on the USPTO Director’s Blog.  You can see his message [here]. He says in part:

We will continue working with inventors, innovators, and entrepreneurs to ensure that when they disclose their inventions, we properly scope and protect their best ideas by granting strong and predictable IP rights. We will also cement our IP system as balanced, efficient, and industry neutral. Whether we’re working with a small inventor with a big idea, or a big company with a small improvement, or everyone else who comes before us, each customer who comes through our doors can be assured that they will receive the highest quality service.

35 U.S.C. §293 is a long-arm statute that applies to non-resident owners of patents.  Historically, it allowed non-resident patent owners to be sued in D.C. District Court; however, that was revised to the Eastern District of Virginia with the passage of the AIA.  The statute reads:

Every patentee not residing in the United States may file in the Patent and Trademark Office a written designation stating the name and address of a person residing within the United States on whom may be served process or notice of proceedings affecting the patent or rights thereunder. If the person designated cannot be found at the address given in the last designation, or if no person has been designated, the United States District Court for the Eastern District of Virginia shall have jurisdiction and summons shall be served by publication or otherwise as the court directs. The court shall have the same jurisdiction to take any action respecting the patent or rights thereunder that it would have if the patentee were personally within the jurisdiction of the court.

See https://www.bitlaw.com/source/35usc/293.html .

It might be of interest to foreign patent owners if someone were to write an article outlining the best jurisdictions where service of process should be designated.  Foreign patent owners might prefer the Eastern District of Texas, for example, rather than defaulting to the E.D of Virginia.

The Supreme Court of the United States heard oral argument this week in Upper Skagit Tribe v. Lundgren.  The issue presented is:

Whether a court’s exercise of in rem jurisdiction overcomes the jurisdictional bar of tribal sovereign immunity when the tribe has not waived immunity and Congress has not unequivocally abrogated it.

You can listen to the oral argument here:

The Federal Circuit has now posted the second en banc oral argument that it heard on March 8, 2018, Federal Education Association v. Defense.  While this is not a patent case, en banc arguments can often be interesting regardless of the subject matter.

You can listen to the oral argument here:

During the recent en banc oral argument of NantKwest v. Iancu, Judge O’Malley brought up the subject of the constitutional overlay of the right of access to the courts.  Somehow my mind transmogrified that comment into a reference to the Equal Access to Justice Act. [Link]. In all candor, I know very little about the Equal Access to Justice Act.  So, the following suggestion might be dead in the water.  Nevertheless,  it might make for an interesting article for someone to take a look at the various USPTO proceedings in view of the Equal Access to Justice Act to see if there are any situations where an applicant or patent owner can recoup fees/expenses under the Equal Access to Justice Act when prevailing.  One might want to take a look at how the PTO’s assertion that the Director is free to disregard the Board’s opinions on appeal (see the briefing of Knowles v. Matal) as well as stack panels to see how those behaviors impact the application of the Act.  Moreover, in the appeal of an IPR decision, the PTO will sometimes step into the shoes of an IPR Requestor — when the Requestor declines to participate in the appeal — that might be a relevant situation to consider, as well.

I thought it was interesting that during the recent en banc oral argument of NantKwest v. Iancu that the PTO acknowledged that it has access to experts for purposes of a §145 action in US district court.  That raises the question of whether an examiner at the USPTO similarly has access to experts for purposes of determining whether a prior art reference that the examiner is relying upon is enabling.

In In re Antor Media Corp., 689 F.3d 1282 (Fed. Cir. 2012) the Federal Circuit said that the burden is shifted to the Applicant to show that a reference is not enabling because an examiner does not have access to experts (or laboratories):

In discussing the theory of the rejection, the prior art basis for the rejection, and where each limitation of the rejected claims is shown in the prior art reference, an examiner has met his initial burden. Id. at 1363 (“[A]ll that is required of the office to meet its prima facie burden of production is to set forth the statutory basis of the rejection and the reference or references relied upon in a sufficiently articulate and informative manner as to meet the notice requirement of § 132.”). Indeed, as indicated with regard to unclaimed patent prior art, an examiner, who has no access to experts or laboratories, is not in a position to test each piece of prior art for enablement in citing it, and requiring him to do so would be onerous, if not impossible. An examiner, therefore, is not required to anticipate every possible response to a rejection, including showing that a cited reference is enabling.

Consistent with the statutory framework and our precedent, we therefore hold that, during patent prosecution, an examiner is entitled to reject claims as anticipated by a prior art publication or patent without conducting an inquiry into whether or not that prior art reference is enabling. As long as an examiner makes a proper prima facie case of anticipation by giving adequate notice under § 132, the burden shifts to the applicant to submit rebuttal evidence of nonenablement.

 

In re Antor Media Corp., 689 F.3d 1282, 1289 (Fed. Cir. 2012)(Judge Lourie writing for the court).

The oral argument of the day is from IN RE NORDT DEVELOPMENT CO., LLC, No. 2017-1445 (Fed. Cir. Feb. 8, 2018).

The argument focuses on whether the term “injection molded” should have been treated as a structural limitation by the USPTO during prosecution.

In part, the Federal Circuit opinion states:

Moreover, as we have explained, “words of limitation that can connote with equal force a structural characteristic of the product or a process of manufacture are commonly and by default interpreted in their structural sense, unless the patentee has demonstrated otherwise.” 3M Innovative Props. Co. v. Avery Dennison Corp.,350 F.3d 1365, 1371-72 (Fed. Cir. 2003). Indeed, since Garnero, we have in numerous instances held such limitations to convey structure even when they also describe a process of manufacture. See, e.g., Hazani v. U.S. Int’l Trade Comm’n,126 F.3d 1473, 1479 (Fed. Cir. 1997) (concluding that “chemically engraved” was not a process term); Vanguard Prods. Corp. v. Parker Hannifin Corp., 234 F.3d 1370, 1372 (Fed. Cir. 2000) (holding that the claim term “integral” describes a structural requirement, not the particular manufacturing process discussed in the specification); 3M Innovative Props. Co., 350 F.3d at 1371 (finding “superimposed” to describe a structural relationship and not a process); SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1322 (Fed. Cir. 2006) (Newman, J., dissenting)(listing “a molded plastic” as an example of a process limitation that connotes structure). Here, not only does the specification itself convey a structural meaning to “injection molded,” Nordt has repeatedly represented that it does.

The court’s opinion is available [here].

The oral argument is available here:

The Court of International Trade commissioned a portrait of Judge Wallach a few years ago.  Judge Wallach served on the Court of International Trade for sixteen years before being appointed to the Federal Circuit.

From the portrait, it appears that Judge Wallach is quite a dog lover.*  You can see the portrait [here].

*I’m not entirely certain what breed of dog the dogs in the portrait are.  My best guess is English Springer Spaniel.  The American Kennel Club describes the personality of the English Springer Spaniel as “Friendly, playful, obedient at home; hardworking and steady in the field.”  And, the AKC describes the barking level as “Barks when necessary.”

A couple of the Justices got a little bit exercised during the oral argument of City of Hays, Kansas v. Vogt, at the U.S. Supreme Court today.  Chief Justice Roberts and Justice Breyer had the following exchange in regard to Justice Breyer’s inquiry about extra-record evidence:

____________________________________________________________________

JUSTICE BREYER: And for that reason I’ve looked up whether you objected, because I do not see how the magistrate running the preliminary hearing can know what to do unless somebody tells him that these statements were taken in violation of the Fifth Amendment.

One, I don’t see where you ever did tell the magistrate that.

Two, looking at the transcript of the preliminary hearing, I couldn’t find any instance where any of the compelled statements were introduced into the preliminary hearing.

So what I would like you to do is to tell me what pages to look at in the preliminary transcript, which I have here, which will show that you did object or at least that some of the compelled statements were used?

MS. CORKRAN: So none of this is in the record and the reason it’s not -¬

JUSTICE BREYER: It may not be in the record –

MS. CORKRAN: Yeah. But I -¬

CHIEF JUSTICE ROBERTS: That’s an important point, isn’t it?

MS. CORKRAN: Yes.

JUSTICE BREYER: Of course it’s an important point.

(Laughter.)

MS. CORKRAN: But the -¬

CHIEF JUSTICE ROBERTS: Well, before we start having an extended exchange about material and something that’s not in the record, I — well, I guess I would just like to point out that it’s not in the record. There’s a reason we confine things to what’s in the record, including how do we know what this is if it’s not in the record.

MS. CORKRAN: But the —

CHIEF JUSTICE ROBERTS:  How do we know that it’s been adequately — had a chance for people to object to it and all that?  It’s — it’s not just a passing comment that it’s not in the record.

JUSTICE BREYER: Nor is actually mine a passing comment because Article III of the Constitution says we are to take real cases and controversies. And to decide a major matter where, in fact, going from what is in the record to an earlier stage of this and discovering if it’s true, that there was no instance about which you are complaining, in my mind raises the question as to whether this is, in fact, an appropriate case or controversy for the Court to take.

CHIEF JUSTICE ROBERTS: And we’re supposed to decide whether the cases are controversies according to law. And as far as I’m concerned coming in and saying I want to know about this thing that’s not in the record is no different from somebody else coming off the street and saying: Hey, wait a minute, I know what happened in this case.

So, go ahead and answer it.

MS. CORKRAN: Yeah.

CHIEF JUSTICE ROBERTS: It’s a question that you’ve been presented with. Go ahead and answer it.

JUSTICE BREYER: You don’t have to answer it.

MS. CORKRAN: No, I -¬

CHIEF JUSTICE ROBERTS: No, no, feel free. I’m just saying I will discount the answers because it’s not something that’s in the record.

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You can listen to the audio here:

See this earlier post about whether the Federal Circuit has equitable power to consult extra-record evidence: [Link].