Supreme Court: District Courts must Review PTO Factual Findings De Novo in Cases Challenging Board Decisions

By Dennis Crouch

Kappos v. Hyatt (Supreme Court 2012)

This case involves a patentee’s right to a file a civil action in district court challenging the USPTO’s refusal to grant a patent. 35 U.S.C. § 145. In a unanimous decision, the Supreme Court has affirmed the Federal Circuit ruling that the patent applicant’s presentation of new evidence to the district court requires that court to make de novo factual findings that consider both the new evidence and the administrative record. The USPTO had asked that the court to apply a higher standard of deference to agency factual findings.

This ruling has two major caveats:

  • Deference will be given to PTO factual findings if the applicant fails to present any new contradictory evidence at the trial.
  • Although it must undertake a de novo review, a court can give less weight to newly presented evidence based upon its consideration of “the proceedings before and findings of the Patent Office.”

In its brief, the USPTO argued that the standard employed here would “encourage patent applicants to withhold evidence from the PTO intentionally with the goal of presenting that evidence for the first time to a nonexpert judge.” The Supreme Court rightfully rejected that scenario as “unlikely” in most cases. There are two reasons for this: (1) as the Court notes, this strategy would serve to undermine their chances of directly obtaining a patent from the USPTO based upon the speculative strategy of having a court find the invention patentable; and (2) in my estimation, some amount of new evidence (such as expert testimony and test results) can always be obtained after trial. This is especially true because of the limited manner in which testimony can be presented to an examiner or in an ex parte appeal to the Board.

In this particular case, however, Hyatt has some reason to sandbag because his application was filed pre-1995 and covers basic building blocks of the modern computer. The delay in issuance likely means additional revenue sources that may persist for 17 years from the issue date.

This result here is appropriate in our current world where ex parte appeals to the PTO Board have become a standard and regular aspect of patent prosecution. Those appeals have become somewhat commodified and many firms offer a fixed price. This makes business sense under Hyatt because the applicant still has a chance to fully press its case and present additional evidence after losing at the Board.

Justice Thomas penned the majority opinion.

In a concurring opinion, Justice Sotomayor (joined by Justice Breyer) offered some thought as to particular times when a district court may offer less weight to evidence presented only at trial. Justice Sotomayor primarily discussed the 1927 deliberate suppression case of Barrett Co. v. Koppers Co., 22 F. 2d 395, 396 (3rd Cir. 1927). In that case, the patent applicant refused to allow their witnesses to answer questions from the chief examiners. The appellate court in that case ruled that the applicant was estopped from later introducing evidence that it had purposely withheld. Learned Hand wrote in a later case that estoppel should not apply when the suppression was merely negligent. Relying on these cases, Justice Sotomayor wrote her suggestion that

when a patent applicant fails to present evidence to the PTO due to ordinary negligence, a lack of foresight, or simple attorney error, the applicant should not be estopped from presenting the evidence for the first time in a §145 proceedings.

Although not expressly stated, I suspect that the purpose of “keeping costs low” would fall within Justice Sotomayor’s category of permissible suppression. Of course, these suggestions from Sotomayor are not part of the majority opinion, which did not cite Barrett or the Learned Hand decision of Dowling v. Jones, 67 F. 2d 537 (2nd Cir. 1933).

In application of this rule to the facts here, Justice Sotomayor began with the presumption that new evidence should be allowed and found that the USPTO had not (yet) met its burden to show wrongful suppression.

110 thoughts on “Supreme Court: District Courts must Review PTO Factual Findings De Novo in Cases Challenging Board Decisions

  1. If it is even close to being valid, this will minimize the damage as the industry will license the patent and be done with it.

    That particular trap wasn’t fixed until eBay.

  2. Bruce, we all know that applicants whose terms end 17rs from grant have every incentive to delay if the invention disclosed is spreading.  This is why we adopted 20yrs from filing in the first place. 
     
    Any commissioner who does not fully understand the issue can fall into the trap by actually trying to fight.  The beauty is they do not have to fight at all.  Just grant the patent.  If it is even close to being valid, this will minimize the damage as the industry will license the patent and be done with it.  If not, there let the patentee continue the good fight in reexamination or reissue as the case may be.

  3. Outlasting?

    Nice cannard.

    The point of the matter (then as now) is that after filing there can be no new matter. The initial search and examination, if properly done, provides the bulk of the work that the Office needs to ever have been done. After that, it’s a repetition of what’s been done with minor refinements only. “Getting tired” is a crock.

  4. Not sure how you expect the USPTO to pull that off. Haven’t read any of Hyatt’s file wrappers, but did so for some of Lemelson’s for a CLE I did years ago on submarine patents. He would appeal every final rejection, then, sometimes if he lost at the Board, would take it to the Federal Circuit (or, more likely, it predecessor). Then, if he didn’t get it allowed, would amend the claims and start over again. And, when that wouldn’t work, he would file continuations. This went on for decades. The implementation of the 20 year term chopped off the later part of that, and the last Lemelson patents that issued (40 years from priority date) had shortened terms as a result. The other thing though that Lemelson had going for him was that he outlasted the examiners. At some point, they just started giving in, to get rid of the applications.

    Point is that when you have applicants with a lot of determination and far more money than would be needed to keep this up indefinitely (both Lemelson and Hyatt ultimately had hundreds of millions of dollars to work with), it is hard for the USPTO to shut this sort of thing down. Remember, at least up until the AIA, applicants were entitled to patents unless that USPTO could prove that they weren’t. And, proving that they weren’t entitled to a patent takes a lot more than just the Director determining that he is tired of the practice.

  5. So far, I have a 100% allowance rate on everything I’ve appealed to the Board, touch wood. While I most likely can’t keep that winning streak up forever, I doubt clients would be more swayed by the percentage of cases I’ve appealed (whatever it is) than by the percentage of those that result in a patent.

  6. I think you have some “new matter” issues.

    No matter how good the evidence is years later, you are always limited to whatwas inthe as-filed application. It is either in there or it is not in there. Period.

    If it is in there, give the credit. If it is not, then don’t. This razor cuts easily and cleanly.

  7. Imagine how many we’ll have if the PTO lets you basically write your own cause of action, and the suits get brought in districts that don’t rule on summary judgment before the final decision.

    This makes no sense. There would be no difference in what it takes to enforce a patent even if we switched to a registration system.

  8. You would be better off (and so would we) if you spent your time improving your logic abilities, rather than cutting and pasting (which even that appears to be a challenge for you).

  9. And your logic still FAILS.

    (so any conclusory statement by you is at best suspect and at least worthless)

  10. More logic FAIL from the one known as 6.

    My stance on whether or not one should negotiate with “patent troll terrorists” is completely disassociated from your inability to understand and apply logic.

    Maybe if you did not imbibe the anti-patent gospel from techdirt your ability in the logic field might improve. Logic has been shown to be associated with critical thinking, something not too many over at techdirt are capable of.

  11. What would interest me is comment on the last para of Section III D of the Thomas text, about the warning from the Director that parties might “withhold evidence”. Me, I am thinking it isn’t so much withholding evidence that already exists. Rather it is the thought that the amount of evidence can increase with time. Suppose, with time, the value of a pending app goes up. The value rises to a level that can justify hiring experts to opine on one thing (say: the knowledge of the PHOSITA) or another (say: how much of the commercial success is down to the subject mater of the claim). Such opinions presumably count as evidence. Can you really suggest they were ever withheld? As a matter of money, for a betting man (or an investor), is there any limit to the amount of “evidence” that can be generated, years and years after the date of the claim, if that seems useful given the perceived value of the pending patent application? As to the efficiency of the administration of justice, is there any limit to the admissibility of evidence that is freshly created, years after the event.

  12. The jokes on you MM, you just admitted that you are a whiner (being effective at it was the bait).

    T O O L

  13. Nice strawman Sally. Take a single sample and assume that you can multiply this number by every case.

    Bzzzzzzzzzt. No.

  14. such whining cannot change the rules

    Identifying a problem is not the same as “whining.”

    And yes the rules do change when people identify a problem.

    Would you like to hear about a recent example?

    LOLOLOLOLOL

  15. Do you really want to compare the relative values (output per cost)?

    Okay, let’s compare.

    Let’s say a single instance of patent litigation costs $5 million a side, or $10 million in the aggregate. That means a mere hundred suits a year adds up to a billion dollars. We have more than that now. Imagine how many we’ll have if the PTO lets you basically write your own cause of action, and the suits get brought in districts that don’t rule on summary judgment before the final decision.

    And why would you bother innovating if the PTO would let you patent anything you want and sue anybody you want for just less than the cost of litigating?

  16. He means they’re submarines filed right before the 1995 rule change, with the intent to keep them alive indefinitely until such time as they can obtain broad claims tailored to well-established technologies. At least that’s what I assume he means.

  17. Rubber stamping “Allow Allow Allow” is just as bad as rubber stamping “Reject Reject Reject.”

    Do the Fn job. Do it right. Do it now.

  18. With the gap explained, there is no way for the market to evaluate the “tards” when the error is “presumptively” all on the examiner.

    So even if you had the data, the data does not show what you think it does.

  19. Your “presumption” is a FAIL.

    Witness:

    Your statement of “from one or both sides sucking” does NOT reach back to “10%+ of those begin the appeal process ur bad and should find a new job, you’re literally stealing from your clients by being horrible

    Your first statement is definitely faulting a particular single side.

    Your “presumptive” explanation allows a choice of one or both sides.

    Logically, your “presumptive” explanation allows me to choose not only one side, but which side.

    I choose the single side of the examiner sucking.

    With this “presumptively” allowable choice, you can see that there isno logic between your two statements that can bridge that gap.

  20. No, it is not. Otherwise, you would not have drawn

    Quite the reverse Smitty, that is precisely why I drew the comparison. The opposite of contradiction, it is a confirmation.

    Try to keep up, will you son?

  21. Fundy, the only one that might complain are parties to an interference.

    Oh, I can think of a few others that might complain about a free-for-all give-away, such as infrigners, er, um, that is alleged infringers, for starters.

  22. Because anyone who whines about the rules of the game when such whining cannot change the rules should know better.

    Try again.

  23. anti-patent whining

    Because anyone disturbed by patents issuing with 17 year terms 25-100 years after they were originally filed simply doesn’t understand why we have patents in the first place.

    LOL.

  24. Notably the sentence discusses appeals as the plural of individual appeal or the item itself, as opposed to the practice domain within the skill set (which is noted as being de rigour anyway).

    The implication is as anon notes. Mayhap you should read what is there.

    No, it is not. Otherwise, you would not have drawn a comparison between the number of appeals docketed and the number of patents issued. Your own prior posts contradict your position here.

  25. It seems this conversation has been had before.

    The shear miniscule rate of actual litigation would make that “straight to the litigators” middleman route be considered a godsend compared to the several BILLION dollar waste that is the current situation.

    Do you really want to compare the relative values (output per cost)?

  26. I suppose that you think you had some insight to offer, but all that came across was your anti-patent whining.

    Try again.

  27. I suppose only the patent Tbaggers would disagree with the statement that, if one has enough money and if one filed enough applications with enough words in them prior to 1995, absent a change in the law or laches, one could keep manipulating the system and keep at least one of those applications alive pretty much indefinitely. 50-100 years easily.

    I’m sure Hyatt knows this. Might as well just admit it.

  28. Someone above is trying to blame “submarine” [pre 1995]application pendencies on applicants rather than examiners. [Not that some applicants may not be trying.]
    That is overlooking the facts that: (1) the maximum time the law allows any applicant to delay responding to a PTO Office Action is only six months, even if you buy the maximum time extensions. (2)[As noted above] filing a continuation or divisonal automatically limits the resulting patent to a term of 20 years from original filing, no longer getting 17 years from issue, and (3) these pre-1995 applications cannot file RCE’s.
    Fortunately [after Kappos/Stoll old cases action efforts] there are relatively few of these submarines still lurking in the PTO waiting to surprise-surface and start torpedoing real product producers with patents having filing dates so old that they will require prior art searches in historical museums to invalidate. [Even if the late-added claims have 112 spec support issues, as alleged by the PTO in the subject case, that cannot be raised in either new or old reexaminations.]

  29. 6, your're an idealist.  So long as the likes of Hyatt can pursue things in DC, for example, the problem cannot be resolved quickly and cleanly.

    If Kappos were inclined to follow my recommendation, he would have to keep it quite until he acted as the delaying applicants would simply load their patent applications up with a host of new claims that no one would ever have looked at even once.  

    With the prosecution abruptly ended for the reason of long pendency rather than persuading the examiner, I would thing the PO would not have an enhanced presumption of validity over that art.

  30. Let’s reinvest the several BILLION now spent on the likes of the worthless patent office back with the inventors

    Cut out the middleman and send the money straight to their litigators.

  31. Sounds like the way to go: Registration.

    Those that want to duke it out in court, let them.

    Let’s reinvest the several BILLION now spent on the likes of the worthless patent office back with the inventors

  32. I think it would look worse than if this appeared:

    Due to applicant’s delaying this prosecution for a few decades (if that be factually true in the case) the office hereby declares prosecution laches prevents further prosecution.

    And it would be even less “worse” if the district court did whatever the court’s equivalent to pros. laches is.

  33. 6, what if this appeared in ROA?

    "The application has been pending since at least June 7, 1995.   As further delay is not in the public interest, I hereby withdraw all outstanding rejections and objections.  David A. Kappos, Director."

  34. What is going on here looks to the observer as some sort of grudge match between the PTO and Hyatt, where in the end, the public is the loser.

    Anybody have an idea of Hyatt’s current net worth?

    I’m guessing he’s not of these “small business” guys who are responsible for 90% of job creation in this country.

    I don’t see a problem with simply keeping his applications pending forever, as long as the USPTO isn’t losing money pushing his papers around.

  35. link to techdirt.com

    Don’t negotiate with patent terrorists?

    According to the man addressing the most important people in the world, “patent trolls have done more damage to the US economy than any domestic or foreign terrorist in history EVERY YEAR”.

  36. “There should have been a concerted effort in the ’90s to get all those pre-1995 applications finally disposed of in some fashion. ”

    I think that is known in the business as a “rejection”. And I think the PTO did that.

    “where in the end, the public is the loser.”

    The public is the “loser” of the whole of patent lawl Nedo, no surprises there. Whom do you think is subsidizing the costs of patents aka disclosures of ink on paper?

  37. IANAE, that might actually work.

    But realistically, there is a genuine problem with pre-June 1995 applications that mere delay harms the public interest.  The failure to recognize this is a major failing of the PTO.  

  38. What is going on here looks to the observer as some sort of grudge match between the PTO and Hyatt, where in the end, the public is the loser.

    What could the public possibly have against the PTO granting a bunch of patents it doesn’t think are allowable?

    Heck, why stop at 1995? Grant ‘em all and let Rader sort ‘em out.

  39. Well, it seems clear that if a patent application not in an interference has been pending 17 years, that the PTO is not keeping the big picture in mind. There should have been a concerted effort in the ’90s to get all those pre-1995 applications finally disposed of in some fashion. The lesson we learned from Lemelson is that keeping these applications pending, in secret, with significant patent term upon issue, is THE problem.

    The longer patent commissioners allow this problem to fester, the worse it gets. They need to take action, NOW, and stop messing with the likes of Hyatt. What is going on here looks to the observer as some sort of grudge match between the PTO and Hyatt, where in the end, the public is the loser.

  40. Fundy, the only one that might complain are parties to an interference.  If an two applications are pending, grant the patent on the one having a filing date prior to 1995 if possible, but continue the interference nevertheless.  If two patents are involved after the grant of the older one, dissolve the interference with no declaration of priority.  Let the two battle it out in court if they want to.

    Other than that, what is the applicant going to do?  Appeal the grant to the Federal Circuit?  That is nonsense.

  41. Here let me show you an example:

    Primary of junior examiner: This case doesn’t look allowable, do more searching, apply [irrelevant references] etc. etc.

    Junior examiner 1 hr later: man this case looks allowable to me, wonder if my buddy Tom/Jack/Bill would allow it. Hey Bill, this thing is allowable, you down for allowing it?

    Primary Bill in other AU: Yeah looks good.

  42. Kappos has the authority any signatory examiner has: allow any case you dam well please. And regardless of whatever high minded nonsensical hoops you think they jump through, that isn’t how it goes down irl.

  43. Of course that would. Those fin preliminary amendments cause no end of trouble to both sides because they’re in the record and an examiner can confuse them for which claims are current due to edan suxoring.

  44. “how would you feel if examiners posted their appeal “performance?”

    It is a matter of public record so far as I’m aware.

  45. “and I am not sure what you think this would accomplish”

    It would accomplish clients knowing they’re relative chances of having to file an appeal to get their patent, as opposed to simply filing, maybe filing a response and getting it with a different attorney. Eventually the market will decide against the tards with 10%+ appeals rates.

  46. “You (incorrectly) assume that the appeals process is a sign that the applicant has done something wrong.”

    No, I merely correctly presume that the lions share of these “new” appeals stem from one or both sides sucking. Because if either side doesn’t suck then it barely ever happens.

  47. Can you order something to be granted without applying the law? I think that you are constrained to provide an examination and I see nowhere the authority to make it any less of an examination based on age of the application.

  48. Paul, wouldn’t it be a lot better for everyone to simply issue Hyatt his patent, given we have reexaminations to deal claims invalid over the prior art and, since Ariad, a better understanding of the WD requirement?

  49. 6, that’s the law. The claims are part of the application as filed.

    I had a case, though not in the US, where the examiner rejected the original claims, ingoring the new claims. Now that has caused problems ever since.

  50. Mr. Hyatt is no amateur,

    Isn’t Hyatt the guy who sent his bulldog here to whine a few years back when folks here were questioning some of Hyatt’s prosecution shenanigans?

  51. “This result here is appropriate in our current world where ex parte appeals to the PTO Board have become a standard and regular aspect of patent prosecution.”

    Notably the sentence discusses appeals as the plural of individual appeal or the item itself, as opposed to the practice domain within the skill set (which is noted as being de rigour anyway).

    The implication is as anon notes. Mayhap you should read what is there.

  52. “abuser” is in the eye of the beholder.

    Don’t be jealous because he knows how to play the game. He did not write the rules.

  53. By way of background here, Mr. Hyatt is no amateur, he is a master mariner in PTO’s deep and opaque examiner FILO practice sea, having had a number of extremely long pendency applications and lucrative patents issued therefrom over the years, with many claims added many years later to better cover much later products of others. All quite legal, and very effective as long as one can avoid a prosecution laches defense in patent litigation [a equity defense which Judge Newman opposed in the Lemelson decisions and got considerably evicerated in a later panel decision]
    Such very long pendency applications and resultant patents running for generations after they were filed are bad publicity for the PTO, demonstrating PTO inability [until recently, under Kappos] to get some of its examining corps to stop ignoring extremely old applications in favor of easier to handle new ones. Mr. Hyatt, the late Mr. Lemelson, and others with applications long-pending from before the new patent term law could not file continuations to add more evidence without automatically triggering the current patent term law [20 years from first claimed filing date versus 17 years from PTO issuances no matter how slowly the PTO acts on them], since the new patent term automatically applies to anyone filing any continutation or divisional. Thus, filing a 35 U.S.C. § 145 civil action makes sense for such applicants, and, guess what, extends their patent terms several additional years longer.

  54. No, the quote indicates that an appeal is a “standard and regular” part of an individual application’s process.

    Where do you see that stated in DC’s original post? Where do you see that even implied? DC wrote the following:

    “This result here is appropriate in our current world where ex parte appeals to the PTO Board have become a standard and regular aspect of patent prosecution.”

    Do you see the word “individual” anywhere? I sure don’t. I don’t even see the word “application”. I do, however, see the words “patent prosecution”, which implies being part of a larger practice, not regarding each individual application. So how about you stop pretending that DC wrote something that isn’t there?

  55. Yes I am. Please enlighten me, I’d really like to know what the going rate for an appeal brief is, regardless of the subject matter or issues on appeal.

  56. How about a world in which “with deceptive intent” has been perplexedly stripped from the law?

  57. Dennis,

    I find your original statement (and your subsequent defense) to be misleading.

    The quote in the story is not whether or not a practitioner will have cases that go to appeal and should have the appeals process within his staple of practice (of course any decent practitioner will). No, the quote indicates that an appeal is a “standard and regular” part of an individual application’s process.

    It just is not so.

    The question was asked “What is the definition of “standard and regular”?” to which I would add:
    What is your definition of “substantial?”
    as your defense again indicates a “per application” substantiality which is just not there.

  58. 6,

    You (incorrectly) assume that the appeals process is a sign that the applicant has done something wrong.

    And while you clamor for patent attorneys to post their appeal rates – and I am not sure what you think this would accomplish – how would you feel if examiners posted their appeal “performance?” Let’s have a look at the number of times an examiner is completely upheld on appeal and how often the examiner ditches the appeal process (either on his own or is forced to by the pre-appeal conference route).

    Further, let’s take a closer look at those final rejcetions and see just how many end up with patents. How do you think examiners in general will fare?

  59. Probably not incompetent- the guy appears to be an intentional, prolific, and perpetual abuser of the system.

  60. Guys I have a quick WD question. We all know that generally speaking it is impossible for a new claim to have WD issues solely on the basis of having subject matter not having been included in the application as originally filed (as opposed to issues of sufficiency of disclosure about species etc).

    However, when someone files an application with one set of claims, and on the same filing date submits a preliminary amendment that includes all new claims do those now “amended” claims act, for purposes of WD, as original claims since they were filed on the same day as the filing date? Or should I just treat them as a run of the mill amended claim set?

    I tend to think they should be counted as originally filed claims but I just wanted to see if you guys agree.

  61. “who seems to be target of the PTO.”

    Either that or he is an especially incompetent applicant. My money is on the later. And I will lol most heartily when the DC rules against him too.

  62. The best reason for a civil action to obtain a patent is to get the whole matter out of the patent office, particularly if there is evidence of institutional bias against an applicant. That may be the case in with Hyatt, who seems to be target of the PTO.

  63. Paul, regarding interferences, did you pick up on the distinction the court was making between appeals from ex parte prosecution and appeals from interferences?

  64. “Seems they are saying it is OK to play hide-and-seek with evidence and then hope to get a less-than-knowledgeable district court judge to overrule rejections.”

    In a world where inequitable conduct is still a scary issue, I can assure you that most self-respecting patent practitioners would not do this.

  65. If you don’t know the answer to this, it means that you are likely behind the curve when it comes to the brave new world of alternative fee arrangements.

  66. The point 6 is making is that when the number of applications filed goes up, the number of appeals filed will likewise go up. A rising tide floats all boats.

  67. “and if 10% of those begin the appeal process”

    If 10%+ of those begin the appeal process ur bad and should find a new job, you’re literally stealing from your clients by being horrible (this is opposed to people who merely “steal” by pirating moosic). Indeed, patent attorneys should have to post their appeal rates and what they’re charging to give clients a little something that they can judge the attorney by as compared to his bretheren whom have a mere 2-3%- rate.

    “Most patent applications receive a final rejection during prosecution.”

    Most patent applications are doin’ it wrong then.

  68. I suspect that you’re one of those guys that likes to complain about the lack of “substance” – let’s see it.

    Like your math skills, your verbal skills are also deficient.

    What are you actually asking for?

  69. A couple of points:
    (1) Most patent applications receive a final rejection during prosecution. At that point, applicants consider whether or not to file an appeal, and a substantial number do file the appeal.
    (2) Patent prosecutors typically have several hundred cases on file at the PTO and if 10% of those begin the appeal process, then the result is that appeal is a regular staple the prosecutor’s practice.

  70. Really? Applications are not also far more common than they were decades ago? Because last I checked we issued a million patents in just a few years compared to a million patents over the course of a century a few decades back.

  71. It appears that you’re actually complaining about my language skills. And yes, if my clients have to pay me to prepare and file an appeal brief in 10% of their applications, then I would certainly say that ex parte appeals are a standard and regular part of my prosecution practice.

    But are we only quibbling about Dennis’ “standard and regular” line, or are you actually suggesting that the rate of appeals, whether it’s 2%, 5%, or 10%, isn’t terribly high? I suspect that you’re one of those guys that likes to complain about the lack of “substance” – let’s see it.

  72. Actually, yes.

    The overstatement does not limit the world to currently active applications.

    I was being generous at 1%. Even if you do take the world of all items that ever appeared before the appeals board.

    Note too, I was not talking about the numbers kicked back. I was very clear on that point.

  73. At the MOST ambitious, you want 10% to be considered “standard and regular?”

    Are you serious?

  74. The cases are not published (pre-PGPub) so are still secret. These are not like “ordinary” applications is about the most I can say.

  75. According to earlier posts on Patently-O, there are about 1.2 million applications pending, and an appeal backlog at the BPAI of 25,000. That’s over 2%. Probably at least half of the pending applications haven’t had two office actions yet, suggesting a rate in excess of 4%, relative to pending applications that could conceivably have been the subject of an appeal. That’s starting to sound pretty “standard and regular” to me.

    That also fails to count the appeal briefs that result in re-opening of prosecution without the appeal being docketed to the Board. In my experience, that happens about 80% of the time, suggesting that appeals to the Board occur on the order of about once for every ten pending applications, or about one for every five pending applications that has actually been rejected a couple of times. Even if I’m off by a factor of two, that’s not only “standard and regular,” but astoundingly so!

  76. Since this basically puts this law back where it always was before an aberrant CAFC panel decision tried to sua sponte overturn it all, it would be interesting to see statistics as how many such expensive 35 U.S.C. § 145 civil actions are actually taken per year from PTO Board decisions, how long the District Court sits on them, how many of those District Court decisions reverse the Board decision, and how many of those District Court decisions get reversed at the Federal Circuit back into agreement with the Board?
    [The few comparable civil actions taken from interference decisions I have seen seem to have taken forever.]
    P.S. Take into consideration before thinking that a civil action [rather than using a continuation application to add evidence] is a great idea that the PTO Solicitor also gets to do cross-examinations and to take depositions in these civil actions, including those who submitted declarations in the application prosection.

  77. So, does this mean that the applicant/appellant can purposefully hide evidence during prosecution?

    Which one of “ordinary negligence, a lack of foresight, or simple attorney error” qualifies as “purposeful” in your mind?

  78. From my experience and observations, ex parte patent applications are far more common than they were decades ago.

  79. Or lack of time. What if, in “Still not clear on this” hypothetical, the new evidence requires studies which will take longer than the 6 month one gets to write the Brief?

  80. Suppose, as is likely the case, applicant simply decides that it is going to take a shot at an appeal to the Board with the evidence it has put into the record. Applicant has ideas for other evidence, but doesn’t want to incur the cost of developing it if not necessary. Applicant figures that if it loses at the Board, it can put that evidence in later in a 145 action, if the cost justified at that time. Is that deliberate suppression? Or ordinary negligence, a lack of foresight, or simple attorney error?

  81. “ordinary negligence, a lack of foresight, or simple attorney error”
    So, does this mean that the applicant/appellant can purposefully hide evidence during prosecution?
    If so, why bother going thru the examination process?
    Seems they are saying it is OK to play hide-and-seek with evidence and then hope to get a less-than-knowledgeable district court judge to overrule rejections.

  82. All I can say now is that you do not know the full story of these cases. Once some start issuing you may have a different opinion. If you do now know the full history you can not make an informed decision.

  83. From my experience and observations, ex parte appeals are far more common than they were decades ago.

  84. Ugh, what about the point that 146 appeals from interferences might be different based on Morgan? I would have thought that a de novo review would have been more important in such cases.

  85. “appeals have become somewhat commodified and many firms offer a fixed price”

    Really? Anyone have any idea what the going rate for an appeal is? Is the Reply Brief complimentary with the purchase of an Appeal Brief at the regular price?

  86. Most conference requests are coming back reopening prosecution, and most reopened prosecutions result in allowances

    That speaks to a different (albeit related) problem.

    Would be nice though if the Office actually had stats on how often this happens. As it is, the only stats available show, what, like a 1% rate of items that are before the appeals board to number of patents issued?

    Hardly “standard and regular.”

  87. I can’t give overall statistics, but I can say that over my own (too long) experience, I’m filing many more appeals (with conference requests) than I used to. Most conference requests are coming back reopening prosecution, and most reopened prosecutions result in allowances. In my practice, this tells me that the Examiners are simply phoning in their rejections. Also, for those conspiracy theorists, I think the Examiners do that to get money into the PTO for appeals, or RCEs.

  88. In this particular case, however, Hyatt has some reason to sandbag because his application was filed pre-1995 and covers basic building blocks of the modern computer.

    I have a hard time feeling any sympathy for the Office on that fact that pre-1995 applications are still in process.

  89. This result here is appropriate in our current world where ex parte appeals to the PTO Board have become a standard and regular aspect of patent prosecution

    Oh really?

    How many appeals are done?
    How many patents are issued?

    What is the definition of “standard and regular”?

    I think not.

  90. Woo hoo! The CAFC finally gets a hit, albeit a bloop single. I think they are still below the Mendoza line, however, for the past 5-10 seasons.

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