“Mine-run” and other puzzles

By Jason Rantanen

I’m currently spending much of my time attempting to untangle the mess that is the law around Section 284 enhanced damages (i.e.: willful infringement) and Section 285 attorney fee awards (i.e.: exceptional case determinations).  Octane Fitness doesn’t reset the field so much as add a new layer to an already complex area of law, a layer that also potentially impacts willful infringement due to the Federal Circuit’s linking of the two standards.

There’s a term in Octane Fitness, though, that leaped out at me as I was reading the Court’s opinion.  In discussing what constitutes an exceptional case (and why the Federal Circuit’s objective + subjective standard is incorrect), Justice Sotomayor writes:

But a case presenting either subjective bad faith or exceptionally meritless claims may sufficiently set itself apart from mine-run cases to warrant a fee award.

572 U.S. ___ (2014), Slip Op. at 9.  Perhaps you’re all snickering, but I had no idea what “mine-run” meant so I went and looked it up.  (My first thought was that it had something to do with Minecraft, but I knew that couldn’t possibly be right.)  In the interests of sharing my new-found enlightenment, here’s the definition from Meriam-Webster Online:

1:  the unsorted product of a mine
2:  a product of common or average grade <the mine-run of commercial breads pall with continued eating — Lee Anderson>
The term “mine-run” turns out to be quite popular in recent Supreme Court opinions, appearing in 34 since 2000 (and only 5 in the two centuries before that based on my Westlaw search), although there’s no consensus on whether the term is “mine-run” or “mine run.”
This got me to thinking about other somewhat-Delphic references that the Justices have used in their patent law opinions.  (Or at least, esoteric to me).  The one that immediately comes to mind is the Court’s periodic reference to candles and games, which popped up most recently in FTC v. Actavis.  I’m not planning on doing an exhaustive search, but I suspect there are others.

57 thoughts on ““Mine-run” and other puzzles

  1. I’d like to suggest that the Justices encountered the phrase in The Bramble Bush. Karl Llewellyn used it while beautifully discussing the craft of appellate judging in his 1951 Afterword. I bet it’s on the SCOTUS required reading list (or at least should be)!

    One finds “run-of-the-mine” in the middle of the paragraph that begins:

    “The law of leeways, in our system of precedent, is this: that an appellate court is free, without hesitation and without apology, to make any shift in content and direction of authorities which can be worked by the semiautomatic process by which authorities just take on new light, color, shape – and wording – as they are reviewed against fresh circumstances…If you are one of those who cherish the illusion that the rules alone decide cases, you ignore the law of leeways at the cost of missing the fact of constant movement, movement even in the run-of-the-mine cases decided by memorandum ‘on the authority of Wolf v. Lamb.'”

    1. “Mine-run” appears twice in Llewellen’s still-influential “Remarks on the Theory of Appellate Decision and the Rules or Canons about How Statutes are to be Construed”, published in 1950. Its meaning is clear in the following passage, again addressing appropriate leeway in appellate court decision-making in the face of legal precedent:

      “What is both proper and to be expected in an extreme case would become abuse and judicial usurpation if made daily practice in the mine-run of cases. All courts worthy of their office feel this in their bones, as being inherent in our system of precedent.” 3 Vand. L. Rev. 395 (1949-1950).

  2. Regarding hyphenation, it follows standard grammatical rules: hyphenate when used as an adjective (“a mine-run case”) and don’t when used as a noun (“a mine run of cases”).

  3. Mine Run Ore
    US 2,836,297

    And, “ordinary” would NOT be considered “identical” to “mine run”

  4. You are, Dennis, a source of endless enjoyment in my otherwise dreary patent attorney life. Thanks for the delightful diversion.

  5. Please post their other favorite obscure phrases.

    A favorite obscure phrase of mine is “hoist by his own petard” (or “hoisted by his own petard”).

    The petard was an early bomb used to blow holes in the walls or gates of besieged castles. It used a crude fuse which sometimes went off early.

    “Hoist by his own petard” means “blown up by his own bomb.”

    It is a beautiful thing when opposing Counsel’s devious plan backfires and he is hoist by his own petard.

    In modern French the word “petard” has degenerated to mean “firecracker.” bummer.

    {Information from Wikipedia}

    1. lol – the modern day equivalent is when Malcolm actually chooses to try to engage in a substantive discussion on the merits, and makes one of his famous admissions against interests.

            1. lol -my example of you fits perfectly with NOiP’s post.

              So sorry (not) that you are offended by the truth.

              You know how to change it – just post with a little intellectual honesty.

            2. So sorry (not) that you are offended by the truth.

              I’m sorry that you can’t get the medical help that you need, and I’m sorry that Jason and Dennis are unwilling to nudge you in the right direction.

              But so it goes.

    1. “average” is NOT a better fit.

      “mine run” includes ALL of the UPS and DOWNS of the run of the ore coming out of the mine, it is most definitely NOT the “average” quality of the ore leaving the mine.

      1. Term is indefinite under Miyazaki, as the listed definitions are both being attempted to be used to the exclusion of the other definition.

        I wonder how soon the Justices would tire of that if they were held to that standard in their writings…?

  6. Malcolm,

    I admit that I only superficially understood the obvious holding here, and the debate between Prost and Linn in dissent, as it involve chemical compounds and arguments about novelty. I would be very much obliged if you could discuss the debate in more simplified terms.

    Linn’s problem was that the reference relied on to invalidate the claims was before the examiner and he ruled on both novelty and obviousness. Linns suggested that the court should not overrule the patent examiner without a very good reason.

    Allergan, Inc. v. Apotex, Inc.
    link to cafc.uscourts.gov

      1. Yes, Jason, I misspoke there — an not only is it Chen’s first dissent, he is standing up for the examiners — telling the Federal Circuit not to substitute their judgment for the PTOs that have considered the reference and have allowed the claims over it.

        1. While I appreciate what the good judge is saying there he harps too much on the presumption o validity and the “burden”. It is one thing to say: think again, maybe even one more time, if the PTO already considered this ref. It is quite another to be all like “but but but the lawls says that yous guys gots a big ol burden to meet!” The later is about as convincing as the childish arguments anon et al make on here.

          That said, if what he said was the case in the refs I’d probably agree with him as to his result, though not on the grounds that the law (statute) has set such a high burden to meet that just was never met.

          1. The later is about as convincing as the childish arguments anon et al make on here.

            lol- from one who does not recognize the rule of law, that comes across as a compliment 6.

            Thanks.

          2. “It is quite another to be all like ‘but but but the lawls says that yous guys gots a big ol burden to meet!’ The later is about as convincing as the childish arguments anon et al make on here.”

            Not sure why you regard a preponderance, i.e. more likely than not, i.e. 50.0000000000000001%, is a “big ol burden” to meet. Considering that you routinely boast of finding killer knock-out 102(b) art with 5 second Google searches, what is the problem exactly?

            1. “Not sure why you regard a preponderance, i.e. more likely than not, i.e. 50.0000000000000001%, is a “big ol burden” to meet.”

              I do not. But that is what he was making it out to be in his dissent. Perhaps give it a read.

            2. Oh and my bad, I should have clarified for you, here we’re talking about clear and convincing here in this case, preponderance is not at issue.

    1. Ned,

      I did find it interesting that the Majority position on the contested issue of obviousness never once even mentioned the examiner nor the examiner’s express findings.

      1. anon, indeed.

        I would argue that when the examiner has considered a reference and the very issue before the court and has made a call on “obviousness,” that call should stand unless it was clear error. If it is a matter of judgment only based on substantial evidence, with no legal error, then the rule of law all but requires that the examiner’s call stands.

        1. I am not sure about “rule of law” as an examiner hardly sets the rule of law, but for the majority to not even address the examination of record, and so heavily gear its decision on a view that the lower court did not consider the full scope (of claims, while it does not consider the full scope of the developed record) just reminds me of the judicial “do-as-I-say-not-as-I-do” meme that we are seeing so much of nowadays.

          1. anon, the rule of law essentially says that once an issues has been decided, it is followed unless there is a very good reason to change the rule. Stare Decisis is one such example. Law of the case is another.

            The only difference here is that the examiner decided the particular issue and not the Federal Circuit. But, is that a distinction with any difference? I would say not, because congress granted the PTO the authority to decide the issue in the first place.

            Therefor, the rule of law would require that the prior decision of the examiner on the very same issue be respected unless there was clear error.

            1. Those are distinctions Ned that prove my position in that they are general truisms, not individual examiner actions.

              Careful on leaning on your vaunted Ned-IMHO-law tendencies, as most often they do not work out to well for you.

              So while clearly Congress granted the PTO authority to decide the issue in the first place, the sum total of that authority vests in the presumption of validity of the granted patent.

              Nothing more.**

              As you can easily recognize, there is a vast difference between a rule of law and a presumption.

              ** Typically, it is viewed as nothing more, although court cases (d@m judiciary mucking about again) have created a pseudo-heightened presumption beyond the statutory language. Does – or perhaps better asked – can this judicial “doctrine” reach to substantially change the actual words of Congress?

              Here, I would say not. Part of the presumption of validity stems from the “good faith” belief that the examiner will choose the best prior art. This may or may not include later art that is in front of the judges. The optional nature here includes the possibility that such art will be before the judges and thus, it would be reasonable to conclude that Congress already considered that reasonable occurrence when it chose the words that it chose.

            2. argh – this moderation filter is tedious.

              One innocuous message to clear, but here is another thought:

              Regarding “unless there was clear error” is something that I can buy into to – the Majority knows (or should know) what is clearly on the record and should address that record. Here, not even addressing what the examiner stated and not even addressing ANY level of error only leaves one wondering if the Majority itself did not consider the record – ironic in that the Majority’s quibble with the dissent is that the Majority felt that the dissent did not properly consider the entire record (scope of claim).

              Judges – we deserve better writing from you.

    2. Ned — I haven’t looked at the cited references to get a gauge on whose interpretations (the majority’s or the dissent’s) are more accurate but this seems to have played out like I’d expect any genuinely and hotly contested bio case to play out (other than the outcome, which can be difficult to predict).

      As for the presumption of validity and deference to the Examiner’s findings regarding a reference, at the end of the day the presumption really is about who has the burden of proof and little else. If, after reading the record and the arguments on appeal, two out of three judges are convinced that the patent is invalid, then they just have to explain why they believe that. The Examiner need not have made an express error but may simply have lacked all the information and arguments presented in court.

      In any event, the set-up here is far from unique: the claims were (arguably) too broad for the patentee to fairly rely on unexpected results to prove non-obviousness because the prior art (arguably) also broadly suggested modifications that fell within the scope of the claims. When the nexus between the unexpected results and the claimed invention gets lost, the patentee is in deep water.

            1. A bit touchy today

              Note that this identical hypocritical txrd is elsewhere railing against the “lack of substance” in other people’s comments.

            2. lol – way too much qq from you, as I have obviously made several posts here with substantive content.

              If you can’t take a little ribbing in addition to the content, well, you know (or should know) what to do.

      1. “As for the presumption of validity and deference to the Examiner’s findings regarding a reference, at the end of the day the presumption really is about who has the burden of proof and little else. If, after reading the record and the arguments on appeal, two out of three judges are convinced that the patent is invalid, then they just have to explain why they believe that. The Examiner need not have made an express error but may simply have lacked all the information and arguments presented in court.”

        This is correct. The idea that the decision of an examiner on anticipation or non-obviousness, which includes the ever present “how many counters do I need this bi-week” factor, should be carved in stone and untouchable by a court is pretty ridiculous. Portola Packaging was statutorily overruled for a reason.

        1. To draw a subtle difference AAA JJ, by no means am I saying (or even implying) that the examiner’s position should be set in stone.

          But here, the Majority writes as if they did not even read the notice of allowance. Such writing is excessively poor, as in the instant facts the very same reference was distinguished below on the record.

          The court can very well “touch” the examiner’s work – it just would be nice when they do so that they, well, actually “touch” it.

        2. AAA JJ, carved in stone is not what we are talking about, is it?

          Clear error is what we are talking about.

          I think the point Chen was making was that the issue was the same before the PTO and the Court, not different. Portola Packaging does not apply if this is the case.

          On appeal from the PTO, the only question that the court can decide is whether there was substantial evidence and/or where there was clear error. Otherwise the decision of the PTO is final.

          Why shouldn’t the Court from a district court case review the evidence before the examiner and if it is the same evidence and the issues are the same, why shouldn’t the examiner’s call be respected unless there is clear error?

          Otherwise, we never get repose. Every time a trier of fact looks at the very same issue, they can make a different call. Why should this be allowed?

          There is a reason for the 7th Amendment – the part that findings of the jury are not to be set aside. I think that is what we have here.

          1. While I get (I think) what you are trying to say Ned, it comes across a bit odd. The Examiner is not a judge (no rule of law), the Examiner is not a PHOSITA (although he does get to say what PHOSITA would do) and the Examiner certainly is not the jury, so no, no 7th Amendment issue here.

            Bottom line is that the Majority writing is lousy because they criticize the dissent for the very thing that they themselves appear to do.

            (hmmm, reminiscent of another lousy rhetorical tactic: AOOTWMD)

      1. ?

        Not wanting to be banal mean. Choosing some obscure and arcane word or phrase is ok? Language does change over time , so what if that obscure and arcane meaning no longer fits the use as intended? What if additional meanings have come into vogue? What if a patent term has become an example of patent profanity?

  7. “Run of the mine” (not mill) and “mine run” are favorite expressions of Justice Ginsburg. Look it up. See also this opinion from the 9th Circuit (US v. Ibarra, 345 F3d 711 (9th Cir 2003), which deals with the meaning of the term “run of the mine case”, and in particular footnote 2 which discusses the terms and a William Safire column about them.

    1. Never came across these expressions before. Run of the mill is very familiar, and I assumed that if you changed it to mine instead of mill it would probably mean the same thing? Arcane is right, though.

  8. Nice column, Jason. I had never noticed that term before, either – it’s apparently a more obscure version of “run-of-the-mill.” (I’m presuming that “run-of-the-mill” is not obscure, of course – I suppose I could be wrong.)

    I’d love to see more examples.

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