Substantial Evidence Rule Kills PTAB Appeals

by Dennis Crouch

In re Haase (Fed. Cir. 2013)

In a nonprecedential decision, the Federal Circuit has affirmed a PTO rejection of Richard Haase's pending water purification patent application No. 10/413,849. Although representing himself pro se in this case, Haase is no amateur patent sleuth. Rather, Hass has filed more than fifty patents applications related to water purification. See, for example, Patent Nos. 8,268,269, 8,161,748, and 8,123,944. Mr. Haase is also a graduate of the University of Missouri (ChemE + Mathematics + Economics). His company, ClearValue has filed several infringement lawsuits – most recently winning a multi-million dollar jury verdict that was then overturned on appeal. Haase also has a malpractice action pending against his former attorneys. Haase v. Abraham, Watkins, Nichols, Sorrels, Agosto & Friend, LLP, 404 S.W.3d 75 (Tex. App. 2013).

The patent here is directed toward a method of clarifying waste water, using chemical coagulants to remove solid contaminants.

In the end, this case follows the typical path of appeals from the PTAB to the Federal Circuit. Under the rules of administrative law, factual determinations by the PTAB are affirmed when supported by 'substantial evidence.' Under that rule, the PTAB factual determination will be affirmed so long as supported by "more than a mere scintilla" of evidence. In general, this is an easy threshold for the USPTO to meet. So, to be clear, the appellate court will affirm a factual determination even when that determination is likely wrong so long as some amount of evidence support the determination. We've all heard the adage that 'reasonable minds can differ.' I think of the substantial evidence rule as a relaxed version that 'somewhat reasonable minds can differ.' Or, in other words, the PTO's factual determinations will be affirmed if somewhat reasonable.

What is a factual determination: It is important to pause for a moment to recognize that a factual determination is quite different from mere evidence. Rather, a factual determination is generally an abstraction based upon the evidence presented.

Here, the PTAB read the evidence (a prior art reference) and made a factual determination that the evidence disclosed the elements of Haase's claims. On appeal, the Federal Circuit looked at that factual determination and found it at least somewhat reasonable (i.e. supported by substantial evidence).

Affirmed.

83 thoughts on “Substantial Evidence Rule Kills PTAB Appeals

  1. This is Richard Haase. I thank you for the complements; however, I am not so sure about the sleuth part. I never planned to practice patent law or any law for that matter. I am a ChE with an MBA and had a significant growing business with many employees prior to patent infringement and trade secret theft BY MY OWN SUPPLIER, both of which caused a nightmare. However, when one is dealt lemons, one either makes lemon-aid or goes home. So, I now practice patent law until I can get the ClearValue Companies back on their financial feet.In short and in the instant appeal, the reference cited by both the USPTO and the CAFC does not, that is does not, teach all of the instant claim limitations; while, the cited reference has no utility. As we all know, a reference that does not have utility or does not enable cannot defeat an application that does; while further, a significant claim limitation is NOT taught in the prior art references. That limitation is “an effective amount of the [higher molecular weight polymer]. With my teachings, one combines ratios of the high molecular weight polymer with the aluminum polymer until an effective amount of the high molecular weight polymer is identified for a given water. THIS IS SIGNIFICANT. However the prior art does not teach this importance; therefore, all prior art references DO not obtain their intended result, do not demonstrate utility; this is true in all examples provided by the prior art. Why that neither the USPTO nor the CAFC will review the data that so demonstrates is beyond me. A jury saw in trial for USP 6,120,690. .However, this all really concerns me, much beyond my issues. If a patent that DOES NOT WORK is allowed to invalidate one that does, especially when a significant claim limitation in the one that does is not taught by the one that does not, there is a violation of the Patent Clause in the US Constitution. This is because, such by the USPTO and the CAFC now encourage the filing of useless patents or patents that do not work in anticipation of someone later filing one that does. Such encourages “Defensive” patent applications which do not advance the arts.Further, the many rulings of late by the CAFC against small inventors and entrepreneurs has an effect to halt or slow job growth. Let me explain, as I am a business man and a college professor (have to so as to pay the bills during this mess). Capital will only flow into small or entrepreneurial firms if there is some form of sustainable competitive advantage; as if not, the entrepreneurial firm gets literally killed by the larger, as was performed by SNF against ClearValue. Therefore, without a patent, e.g. sustainable competitive advantage, there is simply too much investment risk to place the capital. As we all know that it is the entrepreneurs that create jobs, the now lack of capital flowing into entrepreneurial firms is stalling economic growth and job creation. Therefore and until the patents owned by smaller firms are enforceable, there is going to be a jobs issue (except for McDonalds) I propose that the “New” CAFC is a significant aspect of our current jobs, economic and competitive situation.Regardless, I will be filing a petition for rehearing and reheating en banc. The above issues will be central to that petition. Regardless, of me and those I work with that have been catapulted into a state of misery by all of this theft by SNF, we must protect the US Right of Patent. We must protect the Right of Patent against “Defensive” applications that do not further the arts. We must stand up for our Rights pursuant to the Patent Clause. If not, I fear that the US will lose competitiveness and become an also ran in the history of humanity, as is demonstrated in this anemic economic recovery, a time just after the New CAFC, a time wherein there is little to no capital to creates new wealth and jobs. (By the by, there are many decs in the prosecution file that support the above and other arguments.)

  2. I always wondered why the PTO didn’t make more findings of the type we find that Reference A discloses Element B.The odd thing is that implicitly all of the PTAB opinions are findings of fact. The Fed. Cir. is really fudging when they pretend they aren’t findings of fact because the PTAB doesn’t explicitly say they are findings of fact.What if the PTAB said: we find that the element of a database based on reference A adds structure to a claim. I think the Fed. Cir. hands’ would be tied.

      1. The problem with being a pro se appellant is not knowing how to properly characterize your arguments (and not knowing a losing argument when you see it).If at all possible, you want to frame the issues as questions of law instead of questions of fact. For example, the finding of fact that “Reference A discloses Element B” could have been argued that Element B was not properly construed (claim construction = question of law) by the PTAB, and given a proper claim construction, Reference A does not disclose Element B.

        1. Most of the time there is no claim construction. The examiner just says Element B is disclosed by this portion of Reference A. But, I suppose you could argue that the examiner is misunderstanding Element B as opposed to saying that the examiner is misunderstanding Reference A. Not sure how that would go.I have a good win rate, and it has been with arguments that say examiner says Reference A discloses X, but actually Reference A actually discloses Y. I have not argued that the examiner’s understanding of Element B is wrong. I have argued, though, that Element B must necessarily have some property that Reference A does not have.

          1. “I have a good win rate, and it has been with arguments that say examiner says Reference A discloses X, but actually Reference A actually discloses Y.”Usually the strongest argument if in fact the reference doesn’t say X. Mostly because the board members are similarly brain dead as to claim construction as most of the examiners from who their number is selected.

          2. ” But, I suppose you could argue that the examiner is misunderstanding Element B as opposed to saying that the examiner is misunderstanding Reference A. Not sure how that would go.”If that is the case, which it is, very often, then this argument (that the examiner is misunderstanding/misconstruing Element B) is a much better argument if you anticipate the slightest chance that you’re going to end up before the CAFC. This is what Patent_Guru said above.Unfortunately, I am afraid that 6 is on target with his comment about the board, at least with respect to several of those who came from the examining corps.

            1. the case linked below demonstrates, however, winning the claim construction argument is not enough if the reference shows the element even given your own constructionReally, you needed a case cite for that? I thought common sense would have been enough.

            2. The case came out today, PG, and I thought it was amusing. Yes, you would think that common sense would have been enough. But tell that to Motorola’s counsel.

            3. Actually, the Federal Circuit found error in only one of the two claim constructions identified by Motorola. I presume Motorola’s arguments as to the prior art were based upon prevailing upon both claim construction issues.As such, Motorola’s arguments aren’t as bad as you make them out to be.

            4. Motorola only needed to win on either the “host” element or the “summary store” element. Reasonable minds can differ on strategy, but arguing that “host” means “host” while simultaneously admitting that the reference apparatus “hosts” email seems odd to me, even if (especially if?) your alternative argument for reversal is much better. That said, I haven’t (and won’t) read the briefs, so I don’t know what really went on and should give the attorneys the benefit of the doubt.

            5. I don’t know what really went on and should give the attorneys the benefit of the doubt.Perhaps the attorneys (or the client’s in-house attorneys who pull the strings) were concerned about a contrary position potentially undermining a position they might need to adopt in another dispute. That’s often the explanation for “strange attorney behavior.”

            6. Yes, you really do need to look out for that. I’m curious though, is the CAFC switching around the claim construction not a new grounds of rejection? I guess maybe if they addressed the alternate construction below then it wouldn’t be.

            7. The CAFC said that “host” simply means “host,” which is what Motorola argued. The PTO, in addition to defending the examiner’s nonsense, also argued that the reference disclosed a “host” under the plain meaning of the term. If Motorola thought that was a new grounds of rejection then the time to complain was in the proceedings before the PTAB.

            8. is the CAFC switching around the claim construction not a new grounds of rejection?Perhaps. However, it doesn’t appear that Motorola argued the issue.

        2. For example, the finding of fact that “Reference A discloses Element B” could have been argued that Element B was not properly construed (claim construction = question of law) by the PTAB, and given a proper claim construction, Reference A does not disclose Element B.Except that would be a lie.

          1. Indeed, some folks just don’t get that you can’t just “argue” something anyway you please and have your argument be correct as to the facts of the case before you.

            1. I’m not implicating anyone in particular except the person in this thread asserting that you can just willy nilly argue that the PO made the wrong claim construction regardless of whether or not they blatantly made the correct claim construction explicit.

          2. It’s not a lie. If you claim a widget and the broadest reasonable interpretation of that is any device or mechanism that performs function X, but the examiner gives it the old BUI and says it’s any device or mechanism that performs function X, Y and/or Z, and then cites Reference A that discloses a gadet that performs function Y, your argument is one of claim construction (i.e. a question of law), not an argument about a question of fact. What are you going to argue? That Reference A doesn’t disclose a gadget that performs function Y? It does. So why argue about that? Your argument is that the examiner is incorrect on a question of law. So you argue that.

            1. He’s talking about in the instant case under discussion. Not some hypothetical you made up in your mind brain.No. I was talking about the hypothetical raised by NWPA.

            2. He’s talking about in the instant case under discussion. Not some hypothetical you made up in your mind brain.Yup.

            3. If Malcolm is going to talk about the instant case instead of the hypothetical, then he should post directly to the board instead of posting in response to the person making the hypothetical and he should quote the instant case instead of quoting the hypothetical.As it is, his posts just looks like the usual dissembling CRP.

            4. In other words, since several posters are not of the mental caliber necessary to follow the conversation MM should dumb down his posts for the lowest common denominator. /eyeroll

            5. Not at all 6.In fact, the opposite.He should “smart up” his posts and make the proper references.You are too busy /eyerolling when you need to be thinking.

            6. Wait wait wait, the people here that did correctly surmise what he was talking about are the ones that aren’t thinking? Ch rist sakes, do you even hear yourself?

            7. “Correctly surmise” would be a mistake 6.As I said, (quite clearly) if Malcolm wanted to give the impression that he was actually talking about the real case, he used the wrong mechanisms.Funny how he makes jokes about “English as a first language” and when he uses that tool incorrectly, the same little circle of people all band together.

            8. Ahhh, so I’m making a mistake that I correctly surmised what he was saying. I see. /eyeroll.

            9. It was convenient for him to post facto say that he was talking about the actual case.Objectively looking at what he said, what he actually quoted, who he replied to, YES – you made a mistake.

            10. “It was convenient for him to post facto say that he was talking about the actual case.”Ahhh, it’s all a big conspiracy to make you look bad! Wow the drama deepens! You’re not really less than capable at reading, the evil people simply framed you as being such! I swear anon, can you not just say “my bad, I misunderstood MM”? You have a pathological, as in literally, not figuratively, need to be right. About even minor things.

            11. A conspiracy for one person to circle back and prevaricate about what he was posting?It’s not like Malcolm hasn’t dissembled (repeatedly) in his posts, and it certainly has nothing with any attempt to make me look bad.Quite the opposite, really, for the reasons I pointed out (you know, how Malcolm is always going off about proper English, and yet he does not use a quote from the actual case, nor does he simply post, but rather he posts in reply to someone and quotes the hypothetical that that person uses, and only AFTER someone else makes a comment about it, THEN he chimes into your suggestion with a “yup.” You might ask Yup – what exactly?

            12. “Quite the opposite, really, for the reasons I pointed out”Yeah I know lol, it’s totally a conspiracy in your tinfoil covered mind brain. “You might ask Yup – what exactly?”I don’t need to ask, I already knew from the beginning. A fact that seems to miraculously escape your grasp because doing so allows you to avoid even a minor humble act of stating you didn’t understand something you read on the interbuts on the first take, where someone you think is inferior to you did.

            13. LOL – again you retread ‘conspiracy’ as if you made a point the first time you used the word (you did not).I love how your facts are so often simple mistakes. You close your eyes so well and march in step with the lemmings.Happy landings!

      2. Obviously. Some people just can’t tell the two apart. Which is yet another reason why NWPA has problems in his overall position.

      1. He’ll need substantial evidence to back it up. And since the actual evidence available indicates otherwise I think he’ll have more trouble than he thinks re 101 trying that approach. Though I encourage him to try, because just the same as he seeks to bind the hands of the CAFC, so do I by the same means.

      2. I wonder what the affect would be on the Fed. Cir. if we put into evidence in a declaration during prosecution that various elements of the claims added structure.

        1. I would suppose that they would be subject to a weighing of the evidence. And since you’re making this matter material to patentability you have a duty to disclose the reference I shared with you the other day. You’ll also want to watch out, there are laws against perjury. Especially when it comes to proceedings before the federal government. If your case makes headlines, I assure you that I will report any instances of perjury to the proper authorities.

          1. “the reference I shared with you’The reference that I have repeatedly made you aware that you were misunderstanding?Despite yourself, you are providing a nice example. The reference that you speak of is universally applied in all art areas in which engineering occurs. Do you think that ALL applicants must disclose that reference for what is commonly understood (and for which you still do not appear to understand)?

            1. Whatever you say homeboy, just make sure it gets cited. Duty to disclose. And no, everyone need not cite every reference for things which are commonly known, but they do have a duty to disclose reference that they know of which a reasonable examiner would consider to be material to patentability of at least one claim in a patent prosecution.

            2. What I say it says is directly quotable so yes, I think it says exactly what I’ve stated on here and quoted.

            3. K I guess you just feel like trolling for a response now so I’m going to just leave you to yourself.

            4. I am not ‘trolling’ for a response.I am asking you to put a little thought into your responses. Clearly the reference you speak of does not mean what you think it means, otherwise the label of ‘abstract’ would vitiate every engineered innovation ever claimed in a patent. I provided two additional sources (upon Leopold’s request) that proved my case.Your position is CRP.I provided counterpoints to show that your position is CRP (i.e. Donner and Slusky references).You refuse to acknowledge the counterpoints or integrate them into the conversation and simply want to post your initial CRP as if that CRP had any meaning.You are not here for a conversation. You are here for a monologue. You are merely soapboxing.

            5. You are here for a monologue.Remember when you spent a couple years here posting insults under different pseudyonyms, sometimes ten or twenty different ones a day? And pretending that you were engaged in a war against a “vocal minority”? And denying that you were doing that? Until you were outed by Dennis? Remember that?I do.

            6. “Remember when you spent a couple years here posting insults under different pseudyonyms, sometimes ten or twenty different ones a day? “I know, and he wonders why we don’t want to converse with him. Meanwhile he’s busy telling us to “put some thought” into what we’re saying, implying we’ve put none. Yet more insults, on a nearly constant basis, so much so that he doesn’t even realize he’s doing it I’m quite sure.

            7. Nice non sequitur. You might try to realize that any of the nom de plumes were each attempting to have conversations – quite the difference between that and monologues.You do know what monologues and soapboxing mean, don’t you?. And since you have so nicely QQ’d incessantly against sockpuppets, and yet use them incessantly at PatentDocs, you (yet again) live down to your reputation.And by the way, take a look at the post count (and vote count) – the vocal minority statement is accurate. And still that same little circle employs the CRP-ignore counterpoint and run away – CRP again post style.Remember what I pointed out was true poor quality attributes?I am sure you do – you use them extensively.

            8. “Clearly the reference you speak of does not mean what you think it means, otherwise the label of ‘abstract’ would vitiate every engineered innovation ever claimed in a patent.”Yes, I hear your argumentum ad absurdem. I’ve put a lot of thought into the present discussion thanks, and so have the supremes. And it just so happens that it doesn’t vitiate every engineered invention ever. I could hold your hand through this in person much better than I can over the interwebs. If you really would like such to be accomplished then you may schedule an appointment in person. “You refuse to acknowledge the counterpoints or integrate them into the conversation”I’m sorry but I still haven’t been able to find your references as they’re hardback books I don’t have access to. If you want to send me a copy then fine. I will be happy to integrate them into the conversation. “You are not here for a conversation. You are here for a monologue. You are merely soapboxing.”Never said that I was here for a conversation, though on some days and with some people I am. Generally I’m not with you. For the simple reason that you’ve trolled me for years and years. To be clear, you’re the one that keeps trying to troll me into responding to your non-conforming to community standards posts so that I will then be stuck in a “conversation” which, to me, is irrelevant. Neither me or you have the power to change USSC precedent no matter how much we discuss it. For you and me, our role is to obey the law, not sit and discuss how much we think the supremes are wrong or how much we don’t respect them. And besides you, likewise, are not here for conversation, you’re here to proselytize for your position that the supreme’s position is the worst thing ever, and even if their position stands that somehow the BRUTE ARS E FACT that computer processes are abstractions doesn’t lead to them being summarily invalidated under 101 where they are the distinguishing feature in nearly, if not all cases. I appreciate your position already, specifically that if we were to call them abstractions then we have to call everything else that was ever engineered an abstraction. This is, regardless of anything else, an reductio ad absurdum line of argument. You’re trying to illustrate how my, and the supreme’s argument leads to an absurd consequence by utilizing a method in logic. I decline to adopt your position and I feel that there is no reason that we must, as a matter of course, designate everything in engineering as abstract. The supremes agree. No amount of citing legal treatises is going to change my position or the supreme’s position no matter how much I integrate them. You may rest your case already. I can “soapbox” and you can proselytize, hopefully you’ll proselytize people other than me. We’ll see who comes out on top probably in less than 5 years. Sound good?

            9. The only absurdity is your lack of understanding and continuing to post as if you know what you are talking about.Again, you seek to apply the concept only to software when the source tells you otherwise. That is a “BRUTE ARS E FACT” that you need to deal with.

            10. See this is where you go off into the weeds anon, I’m not seeking to apply any “concepts” at all. None. No concept application going on here. I’m finding facts. Specifically I’m finding one fact in particular. I find facts just like this one on a day to day basis, I’m really not too shabby at it. Here the finding of this fact is quite simple. As it happens the fact was stated without disclaimer by a reckognized name in the field in a very concise statement in a relevant reference. Now, if we were in a hypothetical proceeding in the office, and you or NWPA or someone wishes to provide me with some evidence as to your position (you can do it in a declaration, subject to penalty for any perjuring of yourself you may commit, if you like) then I will “integrate” that evidence into the evidence before me before I make my factual finding. I will weigh the evidence and ultimately make a factual finding. Again, this is something I do quite regularaly and I’m not too shabby at it. Of course, after I’ve made a simple factual finding, I might then go on to apply a “concept” aka “the law”. That could happen in a hypothetical proceeding. And of course I might very well find out to whom I should report any perjury that occured.

            11. I’ll tell you what anon, you seem to be convinced that a. my “interpretation” of the reference is wrong (never mind that I’m not interpreting it at all and am instead quoting verbatim) and b. how I’m attempting to use it is “mistaken”, So hows about you telling me your interpretation of what the reference says? We’ll get to b later.

            12. The power to correct this situation lies fully with 6 – he needs to understand that how he is attempting to use the reference is badly mistaken.You, or course, should remember the reference, right? I mean it was your smarmy reply that I answered with the two references (chapter and verse). By the way, where are my answers? You abruptly left the conversation without providing them.

            13. Anon, brother, seriously, before I even try to “attempt to use the reference” all I want to do is find a fact. Am I allowed to “attempt to use a reference” to simply find a fact? Is that “permitted” by you, o king of kings, lord of lords? If I am not so permitted then by what means would I be permitted to attempt to find a fact?

            14. You mistake my calling you out on your error as needing my permission to correct your error.Come 6, you can do better than that.

            15. you calling me out on an “error”? Lol, what error? I’m not mistaking your calling me out on an error for needing your permission. I’m asking you, with a flourish added, “according to you, anon, can we use references in the finding of facts”? Likewise: “And if we are not permitted to use references in the finding of facts then how do we find facts?” Further, how do you propose that I go about making this particular factual finding anon? Do you have any suggestions?

            16. “Lol, what error?”The use of the word “abstract” is not what you think it means.Or do you simply choose to ignore the reality of the ‘ladders of abstraction’ concept?I think you just took the title back from Malcolm.

            17. “The use of the word “abstract” is not what you think it means.”Ok, you assert that the use of the word “abstract” (I assume you mean in the reference) is not what I think it means. I hear you bro, and I’m willing to consider your proposition. Would you mind telling us what that word does mean? And slightly more generally would you tell us what the reference in that particular passage as a whole means? “Or do you simply choose to ignore the reality of the ‘ladders of abstraction’ concept?”I’m not going to ignore anything tonight, I’m willing to consider everything you tell me. If we could start with specifically what you think the reference does in fact mean in the passage I’d appreciate it. I’ve asked about 5 times now and you always seem to continue to assert that my “interpretation” of the reference is wrong, and never give me what you consider the correct “interpretation” is. Also, I’m afraid this will probably be the last time I’m going to ask you tonight as I’m getting tired.

            18. “‘ve asked about 5 times now”And I have answered you many times now too.Get your B-hind in gear and learn this yourself already (stop making excuses about not having the references – get them. Somebody in an office near you has them – or should.

            19. What in the heck are you talking about? Your references do not tell me anything about what the reference that I supplied is talking about. They may have something to say about what they want to talk about, but they’re not talking about my reference.

            20. The reference doesn’t even mention your so called ladders of abstraction. How do you surmise that is what they’re “really” talking about? Also, I’m just a little bit curious, do you not recognize just how insane you sound when you’re asserting that a reference says something about x when it doesn’t even have the barest mention of x? Because that is what is colloquially known as “clear error” when it comes to making factual findings.

            21. You still do not know what the term means, for if you did, you would recognize the reference is replete with it.LOL – you recently used the term ‘literal’ – I suggest that you try to understand that meaning does not require a literal use of the term.

            22. no, because you do nothing but insult and, on occasion speak cryptically about how a question has been “asked and answered”. For example, I don’t recall your having given us an “interpretation” of the reference, ever. Yet here you are asserting that you have multiple times.

            23. (sigh)The use of the word ‘abstract’ in the reference you wish to you to make a bogus argument that software is ‘abstract’ in a patent-denying way is clear error, as has been explained to you many, many, many, many, many times without insult and with great clarity. Yep, you definitely took the title back from Malcolm.

            24. “The use of the word ‘abstract’ in the reference you wish to you to make a bogus argument that software is ‘abstract’ in a patent-denying way is clear error, as has been explained to you many, many, many, many, many times without insult and with great clarity.”You assert that it’s clear error to use the word “abstract” in the reference to make an argument that software is abstract. Ok, I hear your assertion that perhaps using that term in a reference to make such an argument is clear error. Now, if we could get back to the topic of just what the correct interpretation of the reference is I’ll be much obliged. Please tell us what the clearly correct way of interpreting the reference is, if you don’t mind terribly.

            25. Asked and answered 6: see the previous discussions concerning the ladders of abstraction.. See the chapter and verse in two well known patent references.How much Fricken hand-holding do you need?

        2. I wonder what the affect would be on the Fed. Cir. if we put into evidence in a declaration during prosecution that various elements of the claims added structure.That depends on what the “elements” are.

      3. I don’t know how excellent it is. Just the same as he wishes to bind the federal circuit’s hands in one manner I seek to bind them in the other. And I have actual evidence to support my factual findings. He on the other hand has at most a concocted declaration which the office will have to accept as being true (and thus the case never makes it to the CAFC) unless it has evidence the contrary and has to balance them out.

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