In the common law tradition, virtually every written opinion from the Federal Circuit cites to prior precedent. I looked at the past few years of Federal Circuit decision to discover the most cited patent cases.
The following list is ranked based on citations found in Federal Circuit patent decisions that were decided January 1, 2007 – May 26, 2010. The ranking is a combined score of both (1) the number of times a case was cited and (2) the depth-of-analysis associated with the citation. I excluded non-patent cases from the list.
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed.Cir. 2005).
- Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed.Cir. 1998).
- KSR Intern. Co. v. Teleflex Inc., 127 S.Ct. 1727 (2007).
- Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed.Cir. 1995).
- Graham v. John Deere Co. of Kansas City, 86 S.Ct. 684 (1966).
- Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed.Cir. 1996).
- In re Calmar, Inc., 854 F.2d 461 (Fed.Cir. 1988).
- Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 117 S.Ct. 1040 (1997).
- MedImmune, Inc. v. Genentech, Inc., 127 S.Ct. 764 (2007).
- Christianson v. Colt Industries Operating Corp., 108 S.Ct. 2166 (1988).
- Kingsdown Medical Consultants, Ltd. v. Hollister Inc., 863 F.2d 867 (Fed.Cir. 1988).
- Rite-Hite Corp. v. Kelley Co., Inc., 56 F.3d 1538 (Fed.Cir. 1995).
- In re Seagate Technology, LLC, 497 F.3d 1360 (Fed.Cir. 2007).
I’m sure you are right Mum, but what you write just begs the question doesn’t it? How does one decide what is “obvious”?
You can do it with “predicted” ie prior publications and good old TSM (EPO-style). Or you can do it with “predictable” ie KSR and witness evidence. It is my impression that the former approach quickly delivers results that are predictable and fair, the latter not.
But I’m open to be persuaded otherwise.
“At least in Europe, getting something through to issue is straightforward whenever there is non-obvious subject matter in the app as filed, and you confine your claims to that. That’s as it should be.”
Lol. EPO is just as bad as the USPTO these days.
Mark Said: Where is Festo? “One would think that prosecution history estoppels would be a more frequent issue.”
DDC Reply: Read this article: The (Unnoticed) Demise of the Doctrine of Equivalents at link to papers.ssrn.com
It’s curious that Festo didn’t make the list at all, while Warner-Jenkinson, the other doctrine of equivalents case, did. One would think that prosecution history estoppels would be a more frequent issue.
Beats me how any intelligent, educated and informed judge can suppose that validity is better tested before an Ivory Tower Examiner than in inter partes proceedings,
Are you taking issue with the presumption of validity, or the clear and convincing standard of proof?
The clear and convincing standard was established in the finest of common law traditions. It was applied in one case in a narrow and appropriate context, and then mercilessly ripped from that context when subsequent litigators on one side of a patent realized the principle suited them. Now it’s the way things have always been done, so the courts can’t change it. Congress will never change it either, because every American fancies himself the next big genius inventor, and he “knows his rights”.
For as long as the courts, post-issue, defer to what the PTO let through to issue, prosecutors will continue to regard PTO Examiners as obstacles fit for nothing other than to be bulldozed out of the way. Beats me how any intelligent, educated and informed judge can suppose that validity is better tested before an Ivory Tower Examiner than in inter partes proceedings, in which the facts relevant to validity are established by live cross-examination six feet in front of the eyes and ears (and quivering nose) of the judge.
The examiners that are responsive to valid arguments are too few to count these days. The rest seem to simply ignore valid arguments and cut and paste the vaguely worded remarks from their previous action – regardless of the merits of the applicant’s arguments.
I bet they say the same thing about you. That’s why they’re no more convinced by your arguments than you are by theirs.
Bad communication is a problem that needs to be fixed on both ends.
Most competent practitioners would probably agree with me about what is going on these days.
Sure, as long as you define “competent practitioners” to mean “people who agree with me”.
Most examiners probably disagree with you. But they can’t possibly be right, because they disagree with you.
I would say that most competent practitioners would be able to get a case allowed without wasting the client’s time and money on an appeal, since that’s what we’re paid for. I guess we’ll have to agree to disagree on that point.
“I haven’t even posted on this thread”
Sure, sure.
It’s your full time job INSANE/Willton/Mooney the grimacing clown, besides replenishing the French dressing on the salad bar that is.
How many banannas do they pay you?
I haven’t even posted in this thread and Caveman keeps talking to me, or about me.
Odd.
The examiners that are responsive to valid arguments are too few to count these days. The rest seem to simply ignore valid arguments and cut and paste the vaguely worded remarks from their previous action – regardless of the merits of the applicant’s arguments.
My personal favorite is the final rejection with the boilerplate: “Applicants remarks are moot in view of the new grounds of rejection” The “new grounds” is a 103 rejection on a new claim, and all the remaining rejections are identical to the previous one. No response to applicant’s previous remarks or other clarifications. Most good examiners won’t do this. But recently, the new examiners dont know any better and the caliber of the SPEs has been steadily dropping.
I am proud to say that I have never met any agents who practice the kind of chicanery you describe. They wouldn’t last a day in the kind of shop I’m in. I’m sorry that in your crazy world you see so many of them. Sounds like you are hanging around the wrong people Mooney. But then that’s no newsflash to anyone who has been paying attention.
Most competent practitioners would probably agree with me about what is going on these days. At least in mainstream art groups – not like the steamgrate arts where you live/work.
ping writes about the post-issue opposition process at the EPO:
“I cannot think of one single reason (not even the more abundant funds of a business protagonist) that would at its face value accept a government agency whose single job is to examine patent applications from being the very best at that job. Our system may be busted, but it is our system and it still provides the world’s envy of intellectual property protection, not some watered down ROW pseudo-registration gar-bage.”
I would reply, but I do not understand. Can anybody throw any light?
Meanwhile, I assume that ping’s offering us his considered opinion, that at the USPTO post-issue opposition, EPO-style, won’t work. Ping, rest assured, I agree with you completely.
In INSANE’s sick world, like that of Mooney, everyone has some kind of ulterior motive.
Riiight. In everyone else’s normal world, examiners are driven only by the ulterior motive of getting counts for specious rejections. In my crazy world, patent agents get counts for specious responses. In everyone else’s normal world, examiners don’t bother reading art or arguments, and can’t articulate a rejection. In my crazy world, it’s the agent’s responsibility to advance his client’s interests no matter who the examiner is, and if he can’t handle that responsibility he’s in the wrong line of work.
You can tell which world is the crazy one, because sane people know everything is the examiner’s fault.
Newsflash. There are actually attorneys out there who just do their job to get a case allowed as quickly and efficiently as possible.
Of course there are. Too few of them in my estimation, but they do exist. Only, they’re not the guys who complain on every blog that will listen about how intransigent and incompetent examiners are, how examiners never listen to their highly-valid arguments, and how they’re forced to go on appeal all the time to get any cases allowed.
I suppose you didn’t even notice that the part of my post you quoted wasn’t talking about the profession in general. It was talking about one person in particular. If you want to defend his honor, go right ahead.
“He’s not progressing by wearing down the examiner. Or by doing anything involving the examiner. He files arguments that seem pretty clever to him in response to examiner arguments that are presumptively poorly articulated, and they keep going back and forth, both sides furiously racking up counts, until he finally decides it’s time to phone up the examiner to say that his client has agreed to pay for an appeal brief.”
In INSANE’s sick world, like that of Mooney, everyone has some kind of ulterior motive.
Newsflash. There are actually attorneys out there who just do their job to get a case allowed as quickly and efficiently as possible.
“Doesn’t it usually? Pretty much every time I get an action, all the claims are accounted for as either rejected, objected to, or allowed. The rejections tend to mention art.”
LOL, like Mooney, everytime you post something you pretty much are telling most of us how little you know about real practice. The kind where you get poor quality rejections that are repeated over and over again. The attitude at the Office is, “well, I’m pretty sure this is obvious, but since I haven’t gotten around to finding any good art yet, I’ll just keep recycling this bad 103 rejection until I am forced to actually read it and realize how bad it is, or do a new search, or grit my teeth and allow the case and have to deal with my boss”
Don’t worry MNBSOB, there are those of us who completely understand and agree with what you’re saying. And then there are horse’s azzes with more opinions than real knowledge.
“The rejections tend to mention art.”
Not a ringing endorsement of the quality of the action, nor the pertinence of the art. But hey, we all know that the examiner is never to blame…
If the Examiner thinks that “convincing the Examiner a claim ought to be allowed” is the standard of patentability,
It’s not the standard of patentability. It’s the standard of advocacy.
The very first action should indicate allowable subject matter if the Examiner can’t find prior art to reject the claim.
Doesn’t it usually? Pretty much every time I get an action, all the claims are accounted for as either rejected, objected to, or allowed. The rejections tend to mention art.
The Examiner’s job is to find prior art or indicate allowable subject matter, not on the fifth action, not on the third rce, but on the first action. The very first action should indicate allowable subject matter if the Examiner can’t find prior art to reject the claim. This first action indication of allowable subject matter is done by the Examiner without waiting for the applicant to “convince the Examiner that the claim ‘ought’ to be allowed.”
IANAE,
The Examiner’s job is to find prior art that makes claim 1 unpatentable, or indicate that claim 1 is allowable over the prior art. If the Examiner thinks that “convincing the Examiner a claim ought to be allowed” is the standard of patentability, then the Examiner is making up his own laws, which is the definition of unprofessional.
“Typically, it is quite easy to get the scope of the issued claims cut back but quite hard to get the patent totally revoked. That’s also as it should be, I think.”
Why the f’n he_ll should the system be as you describe above? I cannot think of one single reason (not even the more abundant funds of a business protagonist) that would at its face value accept a government agency whose single job is to examine patent applications from being the very best at that job. Our system may be busted, but it is our system and it still provides the world’s envy of intellectual property protection, not some watered down ROW pseudo-registration gar-bage.
At least in Europe, getting something through to issue is straightforward whenever there is non-obvious subject matter in the app as filed, and you confine your claims to that. That’s as it should be.
It seems like US agents are actually offended when the examiner suggests that something other than claim 1 would be allowable, they think it’s the examiner’s job to recognize how wonderful and allowable claim 1 is, and they find it unprofessional for an agent to say that it’s the agent’s job to convince the examiner a claim ought to be allowed.
I think you’re expecting a lot of us with this “confine your claims to what is allowable” business. We’re more in the business of winning the conversation with the examiner. Communication is clearly not our thing.
Ah, ping, I was equating the “wearing down” process with that required to get your doctor to take your perceived ailment seriously. I was thinking that it is the filing of the appeal brief that wears down the Examiner,
If I sound like somebody who thinks nothing should be allowed, please forgive because that was not my intention. At least in Europe, getting something through to issue is straightforward whenever there is non-obvious subject matter in the app as filed, and you confine your claims to that. That’s as it should be.
I’m often in the position of Opponent. Typically, it is quite easy to get the scope of the issued claims cut back but quite hard to get the patent totally revoked. That’s also as it should be, I think.
Maxie,
Why do you equate an applicant making progress with an examiner being worn down? Does actually reading and understanding an application count as wearing down?
The simpler and more credible standing is that examiners are lazy (as are most all people) and do the least to get rewarded (or retained). As pointed out, the Office actually came to the realization that the count system needed to be changed in order to stop this type of behavior.
Sounds like you think no patent is actually deserved.
“off the top of my head, here’s what the others are about.” — anonymous | May 31, 2010 at 02:33 PM
Thanks A’mous. Pretty impressive head in spite of the law v. fact slip.
Also, didn’t somebody once say that the RW “wearing down the Examiner” phenomenon was a myth? On the contrary. All of a sudden, it seems like it is the only way a RWA can progress.
He’s not progressing by wearing down the examiner. Or by doing anything involving the examiner. He files arguments that seem pretty clever to him in response to examiner arguments that are presumptively poorly articulated, and they keep going back and forth, both sides furiously racking up counts, until he finally decides it’s time to phone up the examiner to say that his client has agreed to pay for an appeal brief.
It’s rather more like a doctor who doesn’t take you seriously until you find a second doctor (or panel of three doctors), tell them a different story, and get a second opinion that contradicts what the first doctor has been saying.
Illuminating comment from RWA. Reminds me of such RW situations as a family doctor who doesn’t take you seriously till you come back for the third time, still complaining of the same ailment.
Also, didn’t somebody once say that the RW “wearing down the Examiner” phenomenon was a myth? On the contrary. All of a sudden, it seems like it is the only way a RWA can progress.
“BTW, I often find that the Examiner’s Answer is the first time the examiner properly articulates his position in writing.”
Here, here. INSANE, as usual, has no clue.
Attorneys dislike writing appeal briefs as much as anyone. Also, I could not imagine an attorney failing to articulate an argument until the appeal for fear of consequences. Examiners, on the other hand, do it all the time since there really are not consequences. Quite the contrary, there is (or at least WAS) a perverse incentive, vis-a-vis the count system, to withhold meaningful arguments as long as possible. One wonders if the appeal process is the first time the Examiners even read the references.
“those applicants’ half-battle losses that keep getting turned on you when they go over your head must rankle you to no end. ”
Meh, idk about that. I haven’t yet “lost” an appeal, and indeed, will probably win all that are pending. They’re actually fairly solid cases. I have let some applications be allowed after filing of a brief because it seems at the time the best thing to do (hello better explanation), or after having discussed it my spe comes up with some novel reason (not presented in the brieflol) that it should be allowed. Those are the reasons that immediately come to mind.
Those don’t really rankle me and overall, I find appeal briefs woefully lacking.
The cases that do rankle me are ones where, for instance, an appeals guy makes up a non-existant principle and applies it as if it were a principle o lawl. For instance, asserting that it is improper to combine two pieces of prior art admitted in the background. Or, for instance, taking a creative interpretation of something blatantly admitted based on what the applicant thought he should be putting in his AAPA.
One other case rankled me because they had no procedure in place for what happens when you elect by original presentation claims in a previous presentation of claims and withdraw all pending claims. I sent them a 112, they don’t have any claims left. The MPEP didn’t seem to touch on it, nor did my primary know what else to do. Now of course, we all know that the proper thing to do, according to the MPEP, is to send a non-compliant amendment notice. That’s all good and well, but why did it take until like a year ago to get that sorted out in the MPEP?
In fact, it was a very few appeals that have rankled me on anything approaching the merits.
And I sure as f have never had a case that a spe wanted to allow based on some cited caselawl. Either by applicant or himself. The very idea is dam near ludicrous! Most spe’s I know haven’t read half the caselawl I have and are less likely to cite any principle or straight up citation, except the BRI standard (which happens to be right in the name), from caselaw than I am.
Something I feel like too many attorneys are probably unaware of is that at least 20% of your appeal briefs that result in allowance did so by your doing nothing but filing an appeal brief and letting the spe make an argument for you or from the examiner hating dealing with briefs so much he reopens no matter what. And that holds true pretty generally from what I hear. 20% being on the low end.
“Must be why you ha_te the appeals process so much. ”
Hardly. There is plenty to ha te about the appeals process I don’t know why you’d think that would stand out.
“Have you noticed that it’s never the entire examining corps that has the problem”
Fixed.
“Have you noticed that it’s always the entire examining corps that has the problem, and never the one person that all your applications have in common?”
This concept goes above some people’s heads.
“It often does not.”
Because you’re bad at explaining it and/or persuading them.
I recommend for you:
link to amazon.com
If occasionally you lose a battle or two, that is to be expected. Try harder AF.
Wow. Thanks for that insight IANAE. From time to time I had gathered an inkling of it, but your putting it so bluntly is very helpful.
Should I take it that gentle readers might not be familiar with the concept of the prosecutor or litigator who is “desirous of misunderstanding”?
You might take it more broadly that the mind willing to understand is, to the typical American, literally a foreign concept.
BTW, I often find that the Examiner’s Answer is the first time the examiner properly articulates his position in writing.
In that case, I think you could also be handling your interviews better.
Have you noticed that it’s always the entire examining corps that has the problem, and never the one person that all your applications have in common?
IANAE, Readers, I’m terribly sorry. I quoted wrongly the year of the first “Synthetical Propensity” case at the EPO. It is not in ’91 but ’99. The right reference to download the case from the EPO website is T_0190/99.
The case set up the EPO rule how to construe documents, namely:
…..by a mind willing to understand
as opposed to
…..a mind desirous of misunderstanding.
IANAE, you write “How un-American”. Should I take it that gentle readers might not be familiar with the concept of the prosecutor or litigator who is “desirous of misunderstanding”?
“7: I win most of my appeals.
Probably because the appeal brief is the first time you actually put any thought into clearly expressing the arguments in support of your claims, and the first time you actually talk to anyone at the PTO.
Thanks for creating all that backlog at the Board, by the way. The rest of us really appreciate the wait.”
Actually, my arguments are so thoroughly worked out by the time we get to an appeal, that I’m pretty much just cutting and pasting the argument from my last response (or from the pre-appeal brief) into the appeal brief.
So, try again. I also always interview a case before filing an appeal.
BTW, I often find that the Examiner’s Answer is the first time the examiner properly articulates his position in writing.
“The silence is becoming deafening.”
Paul,
Ditto on that. Like I said, akin to the “padding” in Nimitz’s message to Halsey during the Battle of Leyte Gulf in 1944: “The [Patent] World Wonders.”
6: I on the other hand have first hand experience and know that examiners are persuaded by no such foolishness. Simply explain your position and if it makes sense then you win.
I can corroborate this based on my experience from the other side of the table. Make your case, make it clearly and convincingly, and don’t worry about anybody else’s case.
The only BPAI decision that will persuade an examiner is the one with your application number on the cover.
7: I win most of my appeals.
Probably because the appeal brief is the first time you actually put any thought into clearly expressing the arguments in support of your claims, and the first time you actually talk to anyone at the PTO.
Thanks for creating all that backlog at the Board, by the way. The rest of us really appreciate the wait.
Max: Documents must be read with a mind willing to understand,
How un-American!
Filter ate my post.
Dennis, you need to feed that thing – it be hungry.
“If you have to appeal to authority you’re already lost half the battle.”
Which battle is that 6? Must be why you ha_te the appeals process so much. All those lawyer tricks of appealing to authority getting you overturned all the time, and all. Clearly, you disdain that which you do not know and just as clearly, those applicants’ half-battle losses that keep getting turned on you when they go over your head must rankle you to no end.
Yeah, I know – thems Appeal Boards don’t know nothin. But if the rubber-stampin Appeals Board don’t even back you, ya gotta start thinkin why…
“I on the other hand have first hand experience and know that examiners are persuaded by no such foolishness. Simply explain your position and if it makes sense then you win. If you have to appeal to authority you’re already lost half the battle. And you probably have no real plan for the other half.”
You think making sense and having a valid arguments makes an examiner back off? Lulz. It often does not.
I win most of my appeals.
I now realise that, when it comes to making sense of contributions to these threads, there is one thing that gives me an advantage over most other contributers. It is the by now instinctive striving for a meaning that makes some sort of sense, which comes from long immersion in a practice world in which:
1 apps are written in EFL or Globish (rather than English as the writer’s first language) and litigation (if and when it happens) will be in a court that is interpreting the English text in translation.
2. the “synthetical propensity” rule of Decision T_0190/91 applies. Documents must be read with a mind willing to understand, a mind intent on building aggregate meaning up rather than breaking it down.
The denizens of this practice world are patent attorneys rather than attorneys at law. And I’m thankful for that.
Thank you anon and 6. I must be getting good at reading garbled and hastily written stuff on blog threads, for I had been giving anon the benefit of the doubt, forcing myself into mental gymnastics already, to read his originally-written sentence thus:
Markman says: i) claim construction by a jury-no and ii) claim construction is a matter of fact – also no.
Still, good to have the correct meaning confirmed.
crap… I meant law. that’s kind of important.
“4. Markman v. Westview Instruments, Inc. — first in the CAFC’s Markman-Cybor-Phillips trilogy of en banc cases addressing claim construction. Markman holds that there is no Seventh Amendment right to have claim construction tried to a jury and that claim construction is a question of fact.”
Wait, it’s a question of fact? Didn’t we just cover that it is a question o lawl? Or was this the first decision and then Cybor came along and blew that perfectly reasonable decision out the water? I’m going to have to read all these, they appear to contain a lot of judicial gymnastics.
“I think examiner’s are more persuaded when citing to a BPAI decision than citing to a Federal Circuit decision ’cause the BPAI is where they can get their lunch (finally) handed to them. Also, can you break the top BPAI decisions into into “reversed” and “affirmed”.”
I on the other hand have first hand experience and know that examiners are persuaded by no such foolishness. Simply explain your position and if it makes sense then you win. If you have to appeal to authority you’re already lost half the battle. And you probably have no real plan for the other half.
anonymous
thanks for brief case summaries
Bilski is one of two cases that was argued in November that the Supreme Court hasn’t gotten around to deciding. I think most everyone who watches the Supreme Court has noticed that it’s not out yet.
Has anyone noticed we do not yet have a decision in Bilski? The silence is becoming deafening.
In other respects, a very useful list. For the avoidance of doubt, lists like that take considerable effort to compile. So thanks and well-done, Dennis!
PharmaPatents, I wasn’t immediately familiar with Calmar, but off the top of my head, here’s what the others are about.
1. Phillips = Federal Circuit’s most recent en banc case addressing claim construction, and as close as it gets to a comprehensive restatement of claim construction principles.
2. Cybor = holds that claim construction is a question of law, and the CAFC’s review of a trial court’s claim construction is de novo.
3. KSR = the Supreme Court’s most recent word on obviousness; held that teaching-suggestion-motivation test should not be applied too rigidly; restated some general principles regarding obviousness, and generally made it a bit easier to show obviousness in a patent case.
4. Markman v. Westview Instruments, Inc. — first in the CAFC’s Markman-Cybor-Phillips trilogy of en banc cases addressing claim construction. Markman holds that there is no Seventh Amendment right to have claim construction tried to a jury and that claim construction is a question of fact.
5. Graham — Supreme Court’s first big obviousness case after obviousness was codified in the 1952 patent act.
6. Vitronics — CAFC claim construction case about extrinsic vs. intrinsic evidence
7. In re Calmar, Inc. – main case on mandamus petitions.
8. Warner-Jenkinson Co. – Supreme Court case addressing the doctrine of equivalents and tying it to the “all elements rule.”
9. MedImmune, Inc. v. Genentech, Inc., 127 S.Ct. 764 (2007) — standing to file a declaratory judgment suit.
10. Christianson v. Colt Industries Operating Corp., 108 S.Ct. 2166 (1988) — Supreme Court opinion explaining the scope of the CAFC’s appellate jurisdiction over patent cases.
11. Kingsdown Medical Consultants, Ltd. v. Hollister Inc., 863 F.2d 867 (Fed.Cir. 1988) — only en banc case directly addressing inequitable conduct
12. Rite-Hite Corp. v. Kelley Co., Inc., 56 F.3d 1538 (Fed.Cir. 1995) — en banc case on damages calculations.
13. In re Seagate — (1) waiver of attorney-client privilege and (2) standard for willful infringement.
Can you give us a “key” for the principle(s) these cases are cited for? I will be the first to admit that I had to look up Calmar. Or maybe this is a “matching” question on a law school exam? Or a puzzle for a holiday weekend?
Thanks, prof. Very helpful. I would enlarge Mr. French’s comment to read: Mandatory reading for every student of US patent law, examiner, and patent practitioner.
Calmar?
Dennis, how about a list ranked based on citations found in BPAI patent decisions that were decided January 1, 2007 – May 26, 2010? I think examiner’s are more persuaded when citing to a BPAI decision than citing to a Federal Circuit decision ’cause the BPAI is where they can get their lunch (finally) handed to them. Also, can you break the top BPAI decisions into into “reversed” and “affirmed”.
Also, how about an all time patent case citation ranked list at each level (all time US, all time Fed Circuit, All time district, and all time BPAI cited to case/matter)?
The above would be a great list of what case to read.
David French writes:
This is an important list. Mandatory reading for any student of US Patent law.
An examiner is first to comment on a holiday weekend! LOL!
KSR beat out Graham lol
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