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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:

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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]. 

The US government’s office of personnel management keeps a list of how many administrative law judges are employed by each administrative agency.  The OPM does not include the USPTO’s administrative patent judges on the list.

The top five agencies and their corresponding number of ALJ’s are:

Social Security Administration:  1655 ALJ’s

Department of Health and Human Services/Office of Medicare Hearings and Appeals: 101 ALJ’s

Department of Labor: 41 ALJ’s

National Labor Relations Board:  34 ALJ’s

Federal Mine Safety and Health Review Commission:  15 ALJ’s.

Source:  https://www.opm.gov/services-for-agencies/administrative-law-judges/#url=ALJs-by-Agency

Just a reminder that the comment period for the USPTO’s subject matter eligibility guidance is still open.  If you want to submit comments on how you think the subject matter eligibility guidance should be revised — particularly in response to the recent Berkheimer v. HP precedential opinion — you can still do so.  The USPTO explains the process on its web site, part of which is reproduced below:

How to comment

We are interested in receiving public feedback on this guidance.  The comment period is open-ended, and comments will be accepted on an ongoing basis.

Anyone may submit written comments to 2014_interim_guidance@uspto.gov(link sends e-mail). Email comments submitted in plain text are preferred, but also may be submitted in ADOBE® portable document format or MICROSOFT WORD® format. Because comments will be available to the public, information that is not desired to be made public, such as an address or a phone number, should not be included in the comments.

Comments are available for public viewing here:

• Comments received in response to the 2014 interim guidance on patent subject matter eligibility

• Comments received in response to the July 2015 update: subject matter eligibility 

• Comments received in response to the May 2016 subject matter eligibility update

The Utah IP Summit is next Friday.

More info available [here].

Software can make non-abstract improvements to computer technology just as hardware improvements can, and sometimes the improvements can be accomplished through either route. We thus see no reason to conclude that all claims directed to improvements in computer-related technology, including those directed to software, are abstract and necessarily analyzed at the second step of Alice, nor do we believe that Alice so directs.

ENFISH, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)(Judge Chen writing for the court).

Our cases confirm that software-based innovations can make “non-abstract improvements to computer technology” and be deemed patent-eligible subject matter at step 1.

FINJAN, INC. v. BLUE COAT SYSTEMS, INC., No. 2016-2520 (Fed. Cir. Jan. 10, 2018)(slip opinion at page 7)(Judge Dyk writing for the court).

Somebody commented on the Patently-O blog the other day that a claim that is patent eligible under §101 can become patent ineligible simply by narrowing the claim to recite a specific function that is a purported abstract idea.  Judge Linn made a similar comment back in 2016 in the oral argument of IPLearn-Focus v. Microsoft. You can listen to that sound bite here:

You can view the previous post about the IPLearn-Focus v. Microsoft case [here].

In this earlier post [link], I noted that a reader had pointed me in the direction of the pending Knowles v. Matal case at the Federal Circuit.  In the briefing of that case, the DOJ and USPTO have indicated that in rare circumstances the USPTO might choose to take a position opposite to that rendered by the PTAB, when the PTAB’s decision is appealed to the Federal Circuit.  I thought it might be of interest to post the pertinent portion of the brief below (with footnotes moved to the end and emphasis added in bolded underlines):

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Instead, Congress added a sentence addressing the agency’s authority to intervene, at its discretion, in appeals from inter partes cases, including inter partes reexaminations. The new sentence states, “The Director shall have the right to intervene in an appeal from a decision entered by the Patent Trial and Appeal Board . . . in an inter partes or post-grant review under chapter 31 or 32.” 35 U.S.C. § 143 (2012). Although that sentence does not specifically mention inter partes reexaminations, which were being phased out by the AIA, Congress explained elsewhere in the Act that “the Director’s right under the fourth sentence of section 143”—the sentence just quoted—“to intervene in an appeal from a decision entered by the Patent Trial and Appeal Board shall be deemed to extend to inter partes reexaminations.” AIA, Pub. L. No. 112-29 § 7(e)(4), 125 Stat. 284, 315 (2011); see also 157 Cong. Rec. S1377 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (“In the effective-date provision at the end of section [7], various existing [appeal] authorities are extended so that they may continue to apply to inter partes reexaminations commenced under the old system.”); see also Joseph Matal, Legislative History of the America Invents Act: Part II of II, 21 FED. CIR. B.J. 539, 542 n.25 (2012).

Furthermore, the Director’s right to intervene in inter partes reexaminations extends to those reexaminations “that are requested . . . before the effective date” of the AIA. Pub. L. No. 112-29 § 7(e)(4), 125 Stat. 284, 315. In other words, the change in the law was made applicable to all inter partes reexaminations that were requested before the AIA came into effect. Thus, the USPTO’s participation in appeals from inter partes reexaminations went from an obligation to a right, even for inter partes reexaminations that were already pending.

The statute thus spells out the situations in which the Director has the right to intervene, which include inter partes reexaminations, inter partes reviews, and other inter partes cases in the USPTO. This Court therefore routinely asks the USPTO if it plans to intervene in inter partes cases, particularly in cases like this one where the Court would otherwise lose the benefit of the adversarial process. The statute also clearly specifies the cases in which the Director is automatically a party—ex parte cases. 35 U.S.C. § 143 (2012).

The statute does not discuss or limit the positions the Director may take in any type of case. In ex parte cases, the statute merely specifies that the Director must “address[ ] all of the issues raised in the appeal,” 35 U.S.C. § 143 (2012); in inter partes cases, even that requirement does not exist. Although the Director typically intervenes on the side of the appellee, even in that posture, the Director may take any substantive position he likes.2

 

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

In practice, the USPTO Director typically intervenes in appeals from inter partes cases in only two particular types of situations. Recognizing that the two parties can adequately represent the adverse sides of the dispute if both are present but not when the appellee has dropped out of the case, the Director will often intervene when the appellee has dropped out to preserve the adversarial presentation of the issues and to support the agency’s decision. Other than that, the Director often intervenes when the dispute on appeal implicates broader USPTO or government interests. Those interests may involve the validity or interpretation of federal statutes, of the USPTO’s procedures, or of USPTO regulations. So, for example, if an appellant argues that a regulation that the Board followed is contrary to the Patent Act, the Director may intervene to support the regulation. Although the Director could choose to intervene, under the statute, in every inter partes case, he instead selects cases in which his participation would be most important to the agency and helpful to the Court.

The Director’s presence is not required, however, for the appeal to proceed. As discussed above, the appellant has a justiciable controversy because it stands to lose its patent. The lack of USPTO participation does not moot the appellant’s case any more than does the reexamination requester’s declining to participate, discussed above.

In the unlikely event that the government were to decline to defend the Board’s decision in a case in which no other party was defending it, the Court could simply decide to hear the patentee’s appeal without the benefit of an adverse party. Alternatively, the Court could appoint or invite an amicus to defend the Board’s decision. The Supreme Court, for example, often chooses that route when the government confesses error and declines to defend a favorable decision from a lower tribunal. See, e.g., Becker v. Montgomery, 532 U.S. 757, 762 n.1 (2001) (“Without any party to defend the Sixth Circuit’s position, we invited [attorney] Stewart A. Baker to brief and argue this case, as amicus curiae, in support of the judgment below. His able representation . . . permit[s] us to decide this case[,] satisfied that the relevant issues have been fully aired.” (citations omitted)). Or, if the government confesses error and the Court concludes that, in consequence, there is nothing substantial remaining to be decided, the Court may simply vacate and remand. See Lawrence on Behalf of Lawrence v. Chater, 516 U.S. 163, 169-73 (1996); Florida Power & Light Co. v. Lorion, 470 U.S. 729, 744 (1985) (“If the record before the agency does not support the agency action, if the agency has not considered all relevant factors, or if the reviewing court simply cannot evaluate the challenged agency action on the basis of the record before it, the proper course, except in rare circumstances, is to remand to the agency for additional investigation or explanation.”).

Regardless, because the USPTO typically intervenes to defend the Board’s decision and tries to avoid situations in which a Board decision that it disagrees with is heard on appeal, the situation rarely arises. Far more common, and preferable, is a situation like this, in which the USPTO Director chooses to intervene to support the Board’s decision.