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If you’re a patent prosecutor trying to refresh your memory on how to do an Express Mail filing this day before Christmas, you might be looking for some background noise.  The Morsa v. FACEBOOK oral argument would be a great choice as it contains an interesting discussion of 101 issues.  I’ll post some more comments about the oral argument later; but, here is the link for today: [Link].  The outcome of the case was a Rule 36 Judgment.

Given the perceived increase in Rule 36 judgments issued by the Federal Circuit, the large number of pending appeals at the PTAB, and the increasing importance of intellectual property to the US economy, I wonder if the Federal Circuit has taken any steps to request an additional judgeship?

January 7, 2016 Update:

The following list from the uscourts.gov site shows how the various circuits have expanded over the years:

District of Columbia

• 1893 : Three judgeships created. – 52 Cong. Ch. 74, February 9, 1893.
• 1930 : Two additional judgeships created. – 71 Cong. Ch. 538, June 19, 1930.
• 1938 : One additional judgeship created. – 75 Cong. Ch. 290, May 31, 1938.
• 1949 : Three additional judgeships created. – 81 Cong. Ch. 387, August 3, 1949.
• 1978 : Two additional judgeships created. – Pub. L. No. 95-486, October 20, 1978.
• 1984 : One additional judgeship created. – Pub. L. No. 98-353, July 10, 1984.
• 2008 : One judgeship was transferred to the Ninth Circuit – Pub. L. No. 110-177, January 7, 2008.

Total Judgeships – 11

First Circuit

• 1801 : Three circuit judgeships created. – 6 Cong. Ch. 4, February 13, 1801.
• 1802 : Act of February 13, 1801 repealed. Circuit judgeships abolished. – 7 Cong. Ch. 31, April 29, 1802.
• 1869 : One circuit judgeship created. – 41 Cong. Ch. 22, April 10, 1869.
• 1891 : Circuit Court of Appeals established. One additional judgeship created. – 51 Cong. Ch. 517, March 3, 1891.
• 1905 : One additional judgeship created. – 58 Cong. Ch. 51, January 21, 1905.
• 1978 : One additional judgeship created. – Pub. L. No. 95-486, October 20, 1978.
• 1984 : Two additional judgeships created. – Pub. L. No. 98-353, July 10, 1984.

Total Judgeships – 6

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I know there is a lot of interest among the patent bar with respect to the  joinder issue in IPR’s.

The Federal Circuit heard oral argument today in Yissum Research Development Co. v. Sony Corporation.  You can listen to the oral argument: [here].

During the oral argument, Judge Taranto asked about what he labeled as “panel stacking.” [Listen]  I assume he is referring to matters such as Target Corp. v. Destination Maternity Corp. [Read] and Zhongshan et al. v. Nidec [Read], where the PTAB reheard and reversed three judge panels with an expanded seven judge panel and a five judge panel, respectively, despite vigorous dissents.

Judge Moore had harsh words for an advocate recently during an oral argument.  It probably serves as a lesson to all advocates, even Supreme Court advocates, not to adopt too dismissive of a tone with respect to an opposing side’s position during oral argument.

The exchange between Judge Moore and the advocate went as follows:

Judge Moore:  I don’t understand your point.  You’re going too fast and you need to . . .

Advocate:  I . . . I apologize your Honor.

Judge Moore:  Stop.  Don’t interrupt me.  You’re going too fast and you need to divorce from this argument any more characterizations which are not welcome about like his new favorite figure, his new this.  Don’t do that, Mr. **********.  You’re better than that.  Don’t do it.  Go ahead, keep going.

If I were to rank the top three judges of the Federal Circuit least likely to endure arguments that they perceive to be rude, it would be:
1)  Judge Plager

2)  Judge Wallach

3)  Judge Moore.

The USPTO revised the Manual of Patent Examination Procedure in November 2015.  You can access the revised version here: [Link].  This is the second revision to the ninth edition of the MPEP.

The summary of changes is available here: [Link].

The IPO submitted comments on the USPTO’s July 2015 Patent Eligibility Guidance.  The IPO missed the submission deadline; but, to the PTO’s credit, the PTO posted the comments anyway.  I thought the IPO’s comments were particularly good — especially the call for the citation of evidence with respect to showing that a proposed abstract idea is indeed an abstract idea.

Also of note were the statistics in the IPO’s comments.  You can view the entire set of statistics in the IPO’s comments [here].  However, the chart below was particularly noteworthy:

Click on the chart for a better view.

My favorite part of the chart is that plant patent allowances increased 31% after Alice!  Go figure.

The Federal Circuit is fond of saying: “We review judgments — not opinions.”  I was recently reviewing the In re Sang-Su Lee opinion and the court’s statement would seem to be less applicable to agency decisions in view of what Judges Dyk, Newman, and Clevenger articulated for the court in that case:

Alternative Grounds

At oral argument the PTO Solicitor proposed alternative grounds on which this court might affirm the Board’s decision. However, as stated in Burlington Truck Lines, Inc. v. United States, 371 U.S. 156, 168, 83 S.Ct. 239, 9 L.Ed.2d 207 (1962), “courts may not accept appellate counsel’s post hoc rationalization for agency action.” Consideration by the appellate tribunal of new agency justifications deprives the aggrieved party of a fair opportunity to support its position; thus review of an administrative decision must be made on the grounds relied on by the agency. “If those grounds are inadequate or improper, the court is powerless to affirm the administrative action by substituting what it considers 1346*1346 to be a more adequate or proper basis.” Securities & Exchange Comm’n v. Chenery Corp., 332 U.S. 194, 196, 67 S.Ct. 1575, 91 L.Ed. 1995 (1947). As reiterated in FederalElection Comm’n v. Akins, 524 U.S. 11, 25, 118 S.Ct. 1777, 141 L.Ed.2d 10 (1998),“If a reviewing court agrees that the agency misinterpreted the law, it will set aside the agency’s action and remand the case — even though the agency (like a new jury after a mistrial) might later, in the exercise of its lawful discretion, reach the same result for a different reason.” Thus we decline to consider alternative grounds that might support the Board’s decision.

In re Sang-Su Lee, 277 F.3d 1338, 1345-46 (Fed. Cir. 2002). (Link)

Those who were curious about Judge Stoll’s perspective on patent law might want to take note of the decision in ADVANCED STEEL RECOVERY, LLC v. X-BODY EQUIPMENT, INC. I believe it is the first patent opinion that she has authored for the court.

Last week, the USPTO updated its Appendix 3 of the Subject Matter Eligibility Court Decisions:

• July 2015 Update Appendix 3:  Subject Matter Eligibility Court DecisionsNEW [updated Nov. 4, 2015].

It surprises me that the USPTO still includes some Rule 36 judgments as part of its chart (see the asterisked entries in the chart).  A Rule 36 affirmance by the Federal Circuit is merely a statement that a lower tribunal reached the correct result — but, it is not an endorsement of any reasoning of the lower tribunal, e.g., whether a proposed abstract idea is indeed an abstract idea.  In an opinion that he authored for the court, Judge Linn put it this way:

Similarly, our Rule 36 judgments only affirm the judgment of the lower tribunal. “[A] Rule 36 judgment simply confirms that the trial court entered the correct judgment. It does not endorse or reject any specific part of the trial court’s reasoning.” Rates Tech., Inc. v. Mediatrix Telecom, Inc., 688 F.3d 742, 750 (Fed.Cir. 2012).

TecSec v. International Business Machines Corp., 731 F.3d 1336, 1343 (Fed. Cir. 2013).

A quick search of the MPEP did not reveal any places where the USPTO relies on Rule 36 judgments.

When the Federal Circuit sits outside of Washington, D.C. at various law schools, Judge Lourie always does a nice job of explaining the types of cases the court handles.  Here he is before an oral argument at Northeastern last month: [Listen].

Chief Judge Leonard Stark of the District of Delaware appears to be sitting by designation with the Federal Circuit today.

The Federal Circuit has a practice of assigning judges to panels by random selection.  Visiting judges, however, frequently sit with the Chief Judge of the Federal Circuit on their first panel.  That is the case today.

The other day I posted the links to comments that have been submitted in regard to the USPTO’s July §101 Guidance.  I have enjoyed reading through those comments as time permits.  One submission that caught my eye was FICPI’s focus on the PTAB’s Ex Parte Poisson case.  Those comments by FICPI are shown below:

FICPI is concerned that these broad generalizations encourage examiners to reject claims as being directed to an abstract idea without a thorough analysis of the claims or a proper characterization of what “those in the art would recognize, as elements that are well-understood, routine and conventional.” The Update provides scant direction as to what, more than the mere opinion of the examiner, is required to present a prima facie case of ineligibility. As one example, the Update provides no direction to examiners regarding determining a level of skill for “those in the art” who might be capable of performing a claimed method in one’s own mind or by “using a pen and paper.”

The Patent Trial and Appeal Board (PTAB) has held that examiners must present a prima facie case of patent ineligibility, finding that an examiner’s mere “opinion” that claims are abstract is an “inadequate finding of fact on which to base the Alice analysis.” See Ex parte Poisson, No. 2012-011084 (PTAB Feb. 27, 2015). Rather, the “examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.” See, e.g., In re Oetiker, 977 F.2d 1443, 1444 (Fed. Cir. 1992) (emphasis added); see also MPEP § 2106.III (citing Oetiker).

While the Update notes that examiners have been instructed to make such a prima facie case, and admits that the Supreme Court and the Federal Circuit have used textual evidence (e.g., books) to support that the claims are directed to an abstract idea, the Update stops short of identifying what is required from Examiners to present a prima facie case of ineligibility. FICPI is concerned that this will led to inconsistent and unpredictable results, neither of which is favorable to practitioners or the industry at large.

The Ex Parte Poisson decision is available here: [Link].  Here is one quote that might be of interest:

Thus, in the first step of the Alice analysis, the question is whether claim 1, i.e., as a simulation of a football game using a table and cards, is directed to an abstract idea. That determination has not been made in this case based on evidence. Instead, the Examiner merely expresses an opinion that “a set of rules qualifies as an abstract idea.” Yet, absent supporting evidence in the record — of which there is none, the Examiner’s opinion is an inadequate finding of fact on which to base the Alice analysis.

Ex Parte Poisson, Appeal No. Appeal 2012-011084 (PTAB Feb. 27, 2015)

For the third time in recent months during an oral argument, Judge Lourie has raised the issue of “burying” references during prosecution.  You can listen to him raise the issue in the recent Southwire Company, LLC v. Cerro Wire LLC oral argument that was held at Northeastern University Law School:  [Listen].

It is curious to me why Judge Lourie has raised the issue so many times in recent months during oral argument.  Perhaps there is another case being decided that concerns buried references.  Perhaps there is even a secret en banc case that concerns buried references.  Time will tell.

The USPTO has begun adding to its patent eligibility page comments received with respect to the July 2015 Updated Guidance on Subject Matter Eligibility.

The AIPLA comments have a nice flow chart that explains how evidence should be used to support an assertion of patent ineligibility:

The comments available from the USPTO site at the time of this posting are available here:

A.  Intellectual Property Organizations

• American Bar Association Section of Intellectual Property Law (ABA-IPL) (28Oct2015)
• American Intellectual Property Law Association (AIPLA) (28Oct2015)
• Biotechnology Industry Organization (BIO) (28Oct2015)
• BSA The Software Alliance (28Oct2015)
• Coalition for 21st Century Medicine (28Oct2015)
• Electronic Frontier Foundation (EFF) and Public Knowledge (28Oct2015)
• Fédération Internationale des Conseils en Propriété Industrielle (FICPI) (27Oct2015)
• International Association for the Protection of Intellectual Property of Japan (AIPPI Japan)(28Oct2015)

B.  Government Agencies

C. Academic and Research Institutions

D.  Law Firms

• Borson Law Group, PC (26Oct2015)
• Howard IP Law Group, PC (28Oct2015)

E.  Companies

• GlaxoSmithKline (GSK) (28Oct2015)
• Google (28Oct2015)
• IBM Corporation (27Oct2015)
• Microsoft (28Oct2015)

F.  Individuals

• Citrin, Adam (28Oct2015)
• Fahey, Derek (21Sep2015)
• Hoffman, Louis (28Oct2015)
• Jacobson, Rob (28Oct2015)
• Janke, Garth (14Aug2015)
• Kasha, John (28Oct2015)
• Martillo, Joachim (10Aug2015)
• Penilla, Albert (28Oct2015)
• Sikand, Sanjeev (28Oct2015)
• Smith, Stan (27Oct2015)
• Stein, David (28Oct2015)
• Sundby, Suzannah (24Oct2015)
• Warner, Charles (28Oct2015)
• Wegner, Harold (16Sep2015)
• Winter, Jonathan (27Oct2015)
• Yarus, Sinai (27Oct2015)

The oral argument in KANEKA CORPORATION v. SKC KOLON PI, INC., No. 2015-1223 (Fed. Cir. Sept. 15, 2015) [Listen] will interest those of you who have ever had to address the role of inherency in an obviousness challenge.

My favorite quote about the role of inherency in an obviousness context is illustrated in Irah Donner’s excellent three book treatise, Patent Prosecution Law, Practice, and Procedure, Eighth Edition, Volume II at page 2776:

“That which may be inherent is not necessarily known. Obviousness cannot be predicated on what is unknown.”

In re Spormann, 363 F.2d 444, 150 USPQ 449, 452 (C.C.P.A. 1966).

The rule 36 judgment is available [here].