The Proper Role for the Presumption of Validity

Guest Post by Derek Dahlgren

In 2011, the Supreme Court addressed the presumption of validity in Microsoft Corp. v. i4i Limited Partnership, 131 S. Ct. 2238 (2011). It confirmed that the standard of proof for invalidity is clear and convincing evidence. Initially, this opinion was seen by many as preserving the strength of patents. But closer scrutiny reveals that the Supreme Court’s analysis does not extend to all invalidity defenses. According to Justice Breyer’s concurrence, joined by Justices Scalia and Alito, the presumption of validity only provides protection against factual elements of an invalidity challenge. That concurrence, and the Supreme Court’s recent opinion in Nautilus, Inc. v. Biosig Instruments, Inc., suggest that the presumption of validity has no application to purely legal bases for invalidity.

A brief discussion of i4i and Nautilus is instructive. In i4i, Microsoft appealed a jury decision finding that it had not proven invalidity due to the on-sale bar, a purely factual inquiry, by clear and convincing evidence. On appeal, Microsoft argued that a defendant to an infringement action need only persuade the jury of an invalidity defense by a preponderance of the evidence. The Supreme Court rejected that argument.

Instead, the Supreme Court concluded that the presumption of validity codified the pre-1952 standard set forth in opinions such as Radio Corp. v. Radio Laboratories, 293 U.S. 1 (1934). The Supreme Court stated that by the time Congress enacted § 282, “the presumption encompassed not only an allocation of the burden of proof but also an imposition of a heightened standard of proof.” i4i, 131 S. Ct. at 2246. The Supreme then upheld the Federal Circuit’s articulation that “a defendant seeking to overcome [the presumption of validity] must persuade the factfinder of its invalidity defense by clear and convincing evidence.” Id. at 2243.

Justice Breyer wrote a separate concurrence. There, he stated “I believe it worth emphasizing that in this area of law as in others the evidentiary standard of proof applies to questions of fact and not to questions of law.” Id. at 2253. He also noted:

Many claims of invalidity rest, however, not upon factual disputes but upon how the law applies to facts as given . . . Where the ultimate question of patent validity turns on the correct answer to legal questions—what these subsidiary legal standards mean or how they apply to the facts as given—today’s strict standard of proof has no application.

Id.

In Nautilus, the same issue—the application of the presumption of validity—arose at oral argument. During the argument, Justice Kennedy pressed Nautilus’ counsel on how the presumption of validity applies to indefiniteness. Nautilus’ counsel conceded that the presumption of validity would accord deference to the PTO’s fact-finding. Tr. at 19:22 – 21:8. But he stated that since there were no fact-findings at issue in this case, the presumption did not apply. Id. At Justice Kennedy’s prompting, he also agreed that the PTO’s legal decisions are not accorded any deference. Id. at 21:4-8.

On June 2, 2014, the Supreme Court issued its opinion in Nautilus, and again touched on the issue. In footnote 10, the Supreme Court rejected the idea that a permissive definiteness standard accords with the presumption of validity. Slip Op. at 13 n.10. To the contrary, it stated that the presumption does not alter the degree of clarity that § 112, ¶2 requires. Id. That said, the Supreme Court ultimately did not address the parties’ dispute as to whether subsidiary factual issues trigger the clear-and-convincing evidence standard. Id. Because the Federal Circuit treated indefiniteness as a legal issue reviewed without deference, and the parties had not identified any contested factual matter, Supreme Court concluded the question could be settled another day. Id.

So where does that leave us? While the Supreme Court has not expressly held that the presumption of validity has no role in purely legal validity challenges, it certainly makes sense. According to i4i, the presumption of validity serves two functions: allocating the burden of proof and imposing the standard of proof. 131 S. Ct. at 2246. For a purely legal question, however, there is nothing to prove by clear and convincing evidence. Furthermore, to apply the presumption for a legal challenge would give deference to the PTO’s legal conclusions. The Federal Circuit does not do that. And the PTO lacks substantive rule-making authority, at least with respect to defining the metes and bounds of invalidity defenses. Thus, there does not appear to be any basis for according deference to the PTO’s legal conclusions. Consequently, for pure questions of law, it seems reasonable to conclude that the presumption of validity has absolutely no bearing. And as a result, invalidity challenges based on purely legal grounds may be much more powerful.

Nonetheless, while the Supreme Court may have circumscribed the application of the presumption of validity, it now has the opportunity to reject the assertion that claim construction is a pure question of law. See Teva Pharms. USA, Inc. v. Sandoz, Inc., No. 13-854. The Supreme Court hinted in Nautilus that factual questions permeate claim construction when it cited to Markman and stated that claim construction “may turn on evaluations of expert testimony.” Nautilus, slip op. at 11. Should that become settled law after Teva, one likely consequence would be a resurgence of the presumption in areas previously considered purely legal domains. Generally, the pure legal bases for invalidity are premised on the notion that claim construction is a pure question of law. Therefore, while the Supreme Court may have given patent challengers a gift in i4i and Nautilus, it could be short-lived to a certain degree.

Derek Dahlgren is an associate at Rothwell, Figg, Ernst & Manbeck, P.C. The opinions expressed are those of the author and do not necessarily reflect the views of Rothwell, Figg, Ernst & Manbeck, P.C. or its clients. This article is for general information purposes and is not intended to be and should not be taken as legal advice.

71 thoughts on “The Proper Role for the Presumption of Validity

  1. Travesty!

    The Federal Circuit holds a patent invalid for failure to disclose an old, and well known element – how to integrate an input.

    This HAS GOT TO STOP!

    TRITON TECH OF TEXAS, LLC v. NINTENDO OF AMERICA, INC.
    link to cafc.uscourts.gov

    (Just a bit of history, this line of cramped view of MPF stems from Valmont v. Reinke, a case authored by a young Randall Rader.)

    1. Not sure how this is a “cramped view” of MPF.

      If – as done by the court here – you waive the ALL arguments raised first here at this level and you have ONLY what was argued below: “Triton argues that merely using the phrase “numerical integration” is sufficient disclosure of an algorithm because numerical integration was well known
      to those skilled in the art.
      ” it has been long held that such is not structure as needed to use 112(f) – WHETHER OR NOT structure was well known to those skilled in the art.

      Or by “cramped” you mean to ignore the requirement to have structure in the specification at all for 112(f)?

      1. anon, the cramped view is that the details of well-known structure has to be set forth in the specification.

        In the present case, programs for doing digital integration are well-known and notorious. Any program would work. The invention had nothing to do with how to perform the digital integration, just that it be done.

        Historically, means plus function were commonly used to claim old and well-known structure so that the breath of the claim would include all variations. Thus in a claim that required some mode of transportation to get an object from here to there, and specification discloses a car, not only does the claim cover the car and equivalents, but in the context the claim, that car could be to be any kind of car. The details of how to construct car need not be disclosed.

        But this well understood use of means plus function ended with Valmont. Rather than providing broad scope, the claims henceforth provided only a very narrow cramped view of corresponding structure, even if the details well-known structure were irrelevant to the invention.

          1. The disclosure off a microprocessor is enough when the function claimed is well know such that anybody and everybody knows how to program a microprocessor to do the recited function.

            1. You lose it there on the assumption of programming.

              Watch that House/Morse trap so you do not assume into ‘oldbox’ all future inventions.

        1. The invention had nothing to do with how to perform the digital integration, just that it be done.

          Which is it? “Nothing to do” or “essential”?

          1. MM, it was necessary that it be done, but how to do it was not part of the invention.

            Take a means for attaching as part of a claim. The novelty is in the overall structure, but any means for attaching will do.

            The spec discloses a screw. The details of the screw have nothing to do with the invention. To declare the patent invalid because one did not disclose the precise details of the screw is complete and utter nonsense.

            Yet that is what happed in this case — but with integration instead.

            1. Ned,

              That’s because there is a rampant bias against one of the statutory categories (you know, the English-Story carryover of no patents for methods).

              Some squinch tight their eyes and allow the category, but only if another of the “hard goods” categories is in evidence. They “excuse” the process category if they can grope outward and find a hard good category to hang their hat on (even the case you present has a claim in contention of an item).

              But the process category is a full blood brother of the other categories – not a sub-tier category.

              So here too, the bias surfaces. One can hold a screw in one’s hand (or drop an anvil on one’s toe). But what does a “means for attachment” actually weigh? (lol, sound familiar?) And by the way, this has nothing to do with 112.

            2. Well, Anon, Art was in the statute from the beginning. Perhaps the courts should have defined process claims as statutory as Art claims.

    2. Disclosure of a class of algorithms “that places no limitations on how
      values are calculated, combined, or weighted is insufficient to make the bounds of the claims understandable.” Ibormeith, 732 F.3d at 1382.

      [A]t best, Triton argued to the district court that one of skill in the art
      would have been able to identify a preferred integration algorithm because different methods for performing numerical integration were well known. Triton did not argue below that one of skill in the art would have understood
      the disclosure of “numerical integration” as describing a particular two-step algorithm. It cannot make that argument for the first time on appeal.

      Even if we accept the softie woftie-coddling mythology that algorithms are “structure”, at the district court level the patentee still failed to identify any specific “structure” (i.e., algorithm) described in the specification. Someone dropped the ball. Maybe it was the prosecutor who chose to use the “means” language. Maybe it was the trial lawyer. [shrugs]

      The CAFC opinion dances around the heart of the problem, of course, which is that there are no objectively identifiable “structures” that correspond to these information processing methods.

      This claim is incredible jnk when viewed from any number of angles. The resason these hand-wavey terms became an issue is because the patentee tried to claim a new information processing “device” in purely functional terms. The fashionable mythology, again, is that you are allowed to do this when you disclose “corresponding algorithms” in your specification. It’s really not that much to ask given the bizarre contortions the court is already going through in its endless efforts to please The Most Self-Absorbed “Innovators” That Ever Existed.

      1. The problem, rather, is your view on what is allowed in the art to which the invention pertains.

        Put aside your vap1d ad hominem, and all you have is your fee-fees are hurt that innovation in this area is as it is.

        Self-absorbed? – lovely AOOTWMD.

    1. Wow. Changed my mind completely in the subject – machines really do think and we need to change the laws – including patent laws immediately. Note that this has been confirmed as well as the secret capture if thoughts from 6’s toaster reveals that the toaster is very upset at having his buttons pushed by someone whom the toaster thinks is far inferior in thinking skills.

      / eye roll

      1. Clearly, anon, the examiner’s opinion on a reference is entitled to weight. In claim construction, for example, what the examiner decided on the record is always considered – it is the default construction unless one convinces the trier of fact that there was clear error.

        Consider, we have the infringer’s paid expert, clearly not biased or is that clearly not unbiased, giving his or her views. Then we have the examiner giving an opposite view. Who has “more” credibility? The expert who is paid to prevaricate or the examiner who is honest?

        1. Ned,

          Being paid would be one factor to be weighed – but it is not conclusive.

          Let’s augment your question with a few other factors:

          The expert is world renowned., knows the material fully and is open to cross examination (the opponent has FULL opportunity to develop the jury’s view of ANY effect of bias).

          The examiner is a relative new hire, evidences little understanding of the subject, is NOT AVAILABLE for direct testimony, let alone for cross examination.

          Your same question: who has more “credibility?”

    2. I saw this and immediately thought that this is where 6 WANTS to go with his “poor cyber conscious PEOPLE, who are “rendered mere property by today’s legal system:

      link to appy-geek.com

      Um, sure 6 – go ahead and “fight” for your beloved. Nevermind the rest of society that is just not “advanced” as you are and your belief systems….

  2. Ned,

    Seriously? Five distinct posts in sug short time each asking the same strawman question (strawman becuase NO ONE is even talking about matters of fact), all the while you still leav out there hanging my two questions (directly on point to the actual issue)?

    1. anon, there is absolutely no doubt that one has a right to a trial by jury on disputed facts when one’s patent may be lost. Given the new legal standard for indefiniteness that involves a person of ordinary skill, we are going to have paid prevaricators introducing and commenting on evidence of what one of ordinary skill in the art would understand a claim term to mean, and whether the scope was “reasonably certain.” That this has some overlap with the standards for claim construction all but goes to show one that Newman was right in her dissent in Markman.

      If the infringer stays away from paid prevaricators and just relied on attorney argument, the issue would be very much a legal issue based upon undisputed facts — the record. But, trust me, that is not how it is going to work out in court in the ordinary case.

      It would be nice if we had a hard and fast rule — if the infringer’s defense is that the claims are indefinite and if the infringer introduces an expert witness, the patent owner has a right to a trial by jury on the construction of the term at issue.

      1. Whether or not Newman was correct in her dissent in Markman is just not at issue.

        Neither is the contention that factual matters deserve consideration.

        You are still not addressing the issue put to you. You are still bouncing between matters of fact and matters of law.

        I really wish you would try to sway me in a reasonable and logical manner. See my post: link to patentlyo.com

  3. Hi Derek,
    Great article.

    Is the status of indefiniteness a question of law or a mixed question necessarily the same as the status of whether claim construction is a question of law or a mixed question?

    Resolving indefiniteness, pre or post Nautilus, requires analyzing claim scope, which is the claim construction question, which is a mixed question of law and fact reviewed as though it were purely a question of law.

    So, one would think, whatever answer attaches to claim construction with respect to the nature of the question and the attending deference to the factfinder, would also apply to indefiniteness?

    Again, great article.
    Amit

    1. Amit, if there is a right to a jury trial on disputed issues of fact, the judge cannot preempt that function by finding facts himself and then instructing the jury. Thus if there is a battle of experts over the meaning of a term, and the accused infringer also asserts that the claim is invalid because the term is indefinite, the whole issue has to be given to the jury.

      1. Ned:

        The question here is whether the interpretation of a so-called patent claim, the portion of the patent document that defines the scope of the patentee’s rights, is a matter of law reserved entirely for the court, or subject to a Seventh Amendment guarantee that a jury will determine the meaning of any disputed term of art about which expert testimony is offered. We hold that the construction of a patent, including terms of art within its claim, is exclusively within the province of the court.

        Markman v. Westview Instruments, Inc., 517 U.S. 370, 373 (1996).

        1. Amit, Nice. But if one is going to declare the patent invalid and there is a question of fact, the Supreme Court has also decided that the patent owner has a right to a jury trial. ex parte Wood & Brundage, 22 U.S. 603, 6 L. Ed. 171, 32 S. Ct. 589 (1824).

      2. It is, of course, true that credibility judgments have to be made about the experts who testify in patent cases, and in theory there could be a case in which a simple credibility judgment would suffice to choose between experts whose testimony was equally consistent with a patent’s internal logic. But our own experience with document construction leaves us doubtful that trial courts will run into many cases like that. In the main, we expect, any credibility determinations will be subsumed within the necessarily sophisticated analysis of the whole document, required by the standard construction rule that a term can be defined only in a way that comports with the instrument as a whole. See Bates v. Coe, 98 U.S. 31, 38, 25 L.Ed. 68 (1878); 6 Lipscomb § 21:40, at 393; 2 Robinson, supra, § 734, at 484; Woodward, supra, at 765; cf. U.S. Industrial Chemicals, Inc. v. Carbide & Carbon Chemicals Corp., 315 U.S. 668, 678, 62 S.Ct. 839, 844, 86 L.Ed. 1105 (1942); cf. 6 Lipscomb § 21:40, at 393. Thus, in these cases a jury’s capabilities to evaluate demeanor, cf. Miller, supra, at 114, 117, 106 S.Ct., at 451, 453, to sense the “mainsprings of human conduct,” Commissioner v. Duberstein, 363 U.S. 278, 289, 80 S.Ct. 1190, 1198, 4 L.Ed.2d 1218 (1960), or to reflect community *390 standards, United States v. McConney, 728 F.2d 1195, 1204 (C.A.9 1984) (en banc), are much less significant than a trained ability to evaluate the testimony in relation to the overall structure of the patent. The decisionmaker vested with the task of construing the patent is in the better position to ascertain whether an expert’s proposed definition fully comports with the specification and claims and so will preserve the patent’s internal coherence. We accordingly think there is sufficient reason to treat construction of terms of art like **1396 many other responsibilities that we cede to a judge in the normal course of trial, notwithstanding its evidentiary underpinnings.

        1. Amit, have you ever read Dairy Queen and/or Beacon Theaters.

          When there are legal issues that must be decided by a jury and there are overlapping factual issues that a court must decide, the court cannot decide those issues!

          If validity is raised, a legal issue that must be tried to a jury, the court cannot decide disputed issues of fact.

    2. Thanks, Amit. In my opinion, indefiniteness and claim construction are linked. And if SCOTUS says one or the other is not a pure legal issue, it may have consequences for how the presumption applies as well as the standard of review on appeal.

      1. Based on cases they’re about to hear, I don’t see any occasion for SCOTUS to say something different than what they’ve already held: mixed question decided by the judge.

        It’s not going to cease to be a mixed question. There isn’t much room for a rational argument that there are never factual determinations involved in defining claim scope.

        So I’m not sure what you see coming down the pike. Maybe you can clarify. Sandoz? That just goes to the standard of review for factfindings; not to the nature of the question itself.

        1. Amit, do you agree or disagree with the basic principle that when one is going to declare a patent invalid that the patent owner has a right to a jury trial on disputed facts. ex parte Wood & Brundage, 22 U.S. 603, 6 L. Ed. 171, 32 S. Ct. 589 (1824).

  4. I believe Markman held that claim construction did not enjoy a right to jury trial and was for the court.

    But validity is not claim construction and validity has a right to a jury trial on disputed facts — see, e.g., ex parte Wood & Brundage, 22 U.S. 603, 6 L. Ed. 171, 32 S. Ct. 589 (1824). Also, In re Lockwood, In re Lockwood, 50 F.3d 966 (Fed. Cir. 1995) (vacated when the patent owner withdrew his demand for a jury trial).

    So if the issue turns into a battle of experts, then the jury has to decide validity.

    1. “validity is not claim construction” <– but it is for indefiniteness.

      The same level of factfinding is involved in defining claim scope (construction) versus determining whether claim scope is discernible to a degree of reasonable certainty to the PHOSITA.

      The same reasoning SCOTUS offered in Markman applies to indefiniteness because the analysis is identical to CC.

      1. Do you agree or disagree that the patent owner has a right to jury trial if one is going to declare his patent invalid. ex parte Wood & Brundage, 22 U.S. 603, 6 L. Ed. 171, 32 S. Ct. 589 (1824).

    2. To be sure, they’re different questions.

      Claim construction asks: What would PHOSITA regard as the scope of this claim term in light of the intrinsic record?

      Indefiniteness asks: Would the PHOSITA be able to determine claim scope with reasonable certainty?

      They’re both mixed fact/law questions. But the Markman logic applies to both. The factual questions are part of a more complex determination which takes into account the spec and file history. Markman is a judgment call that judges can handle this complexity better than juries. And that historically, we have ceded fact questions to judges.

      1. Amit, answer the question: do you agree or disagree that if one is going to declare one’s patent invalid that one has a right to a jury trial on disputed facts. ex parte Wood & Brundage, 22 U.S. 603, 6 L. Ed. 171, 32 S. Ct. 589 (1824).

        Are you seriously going to argue that an infringer’s expert’s opinion on what one of ordinary skill in the art would understand a claim term to mean is not a jury trial question when validity is at issue?

        1. An infringer’s expert’s opinion on what one of ordinary skill in the art would understand is a fact question. But it’s not a jury trial question in the context of claim construction, per Markman.

          Markman is clear that in certain mixed questions of law and fact, like claim construction, we don’t allocate factfinding to one entity (jury) and analyzing the rest of the intrinsic record (spec, file history) to another entity (judge). It’s one decision which Markman SCOTUS deemed “too complex” for the jury pool.

          That’s the holding of Markman.

          Is your position that Markman-SCOTUS is at odds with Ex parte Wood. It would be helpful if you could cite which particular passage you’re referring to in ex parte Wood so we could understand if Markman-SCOTUS is inconsistent or consistent with it.

          1. Amit, with new formulation of indefiniteness by the Supreme Court in Nautilus , both claim construction and indefiniteness involve the same issue, what a particular claim term means to one of ordinary skill in the art.

            When one is confined only the claim construction, Markman tells us that the decision is for the court. ex parte Wood tells us that when one is going to invalidate a patent, one has a right to a trial by jury on disputed issues of fact.

            Thus, in the case when the infringer advances the position that a claim is indefinite because of a particular claim term, the issue is not really one of construction anymore but one of validity. If the meaning and scope, and these are somewhat interrelated, of the term are subject to dispute, I would argue that the patent owner is entitled to a right to a trial by jury if the dispute involves a battle of the experts.

            1. on disputed issues of fact.”

              Ned – somehow, you keep on saying this, and not recognizing what you are saying.

              In the present case, the issues is simply NOT one of a disputed issue of fact.

              Factual predicates to the legal question are still provided the deference as they were before. Are you saying this case changed that?

              Are you saying instead that you want to move any mongrel question – one of law based on facts – to be a pure factual question?

            2. If the infringer advances a construction of a disputed claim term, he should be deemed to have waived any argument that the claim is indefinite.

              Anon, when you say, “In this case,” I have no idea what you are talking about.

              As to disputed facts, what one understands a claim term to mean if supported outside the record is raising an issue of fact. If based solely on the record, then the issue really is a legal issue and experts are not needed.

            3. The moderated post was inexplicably dropped, but from what I remember Ned, is asking you if you realize that the immediate discussion is being generated by a case. Do you have some other case in mind, or are you speaking at a more general Ned-IMHO-Law level?

              Not sure I agree with your “deemed-waived” view – you have heard of arguing in the alternative, right?

            4. Double-criminy

              The moderated post was inexplicably dropped, but from what I remember Ned, is asking you if you realize that the immediate discussion is being [tied to] a case. Do you have some other case in mind, or are you speaking at a more [typical] Ned-IMHO-Law level?

              Not sure I agree with your “deemed-waived” view – you have heard of arguing in the alternative, right?

            5. Well anon, the only cases we are talking about are Markman that held that claim construction was for the court, ex parte Wood that held that patent validity had a right to a trial by jury on disputed facts, and Nautilus that injected the person of ordinary skill into the definiteness inquiry.

              I simply note once again that claim construction and definiteness now have an overlapping issue: the meaning of a term to one of ordinary skill. If this is an issue of fact, it must be tried to a jury.

            6. If this is an issue of fact, it must be tried to a jury.

              if

              IF

              And how is this “if” arising in Nautilus? (why are you talking about the issue of fact when everyone else is talking about the ultimate issue of law?

        2. The indefiniteness analysis reduces to a claim construction analysis. Is your position that the fact that validity is at stake forces us to treat the same analysis as a judge question in the Markman context and a jury construction in the indefiniteness context?

          It would be helpful if you could pinpoint which portion of ex parte Wood you find helpful to resolve this.

  5. Interesting discussion in the Nautilus oral argument that PTO fact finding should be given deference. It seems that the Federal Circuit did not give the PTO any deference when it held, in Allergen, the claims obvious over a reference that the PTO had considered, where the examiner made specific findings in his reasons for allowance as to why the claims were not obvious over the reference.

      1. 6, well, on both. The parties experts always testify on the ultimate legal issue as well. Why not consider the unbiased, unpaid for opinion of someone who is also an expert — the examiner — for everything he said on the record.

        To me, judges really ought to defer to the PTO unless they committed clear error.

  6. Yeah I thought this was already pretty much common knowledge or accepted wisdom. I would be surprised if there are people that think differently.

  7. Nice article. Glad to see the two separate and distinct requirements [for patent litigation, not the PTO] of the “presumption of validity” and “clear and convincing EVIDENCE” discussed as such.

  8. Good article, but… what about section 282: “A patent shall be presumed valid. Each claim of a patent (whether in independent, dependent, or multiple dependent form) shall be presumed valid independently of the validity of other claims; dependent or multiple dependent claims shall be presumed valid even though dependent upon an invalid claim. The burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity.”

      1. We know the presumption creates an evidentiary burden. SCOTUS has said that. And in Nautilus, SCOTUS refused to dilute a legal requirement (at least under CAFC’s current framework) based on the presumption. I think that suggests the presumption has no force with respect to legal issues. That said, I admit SCOTUS hasn’t come out and made a broad statement to that effect. But I think SCOTUS has gotten pretty close. And when you look at the basis for the presumption–assuming PTO did its job correctly–I think the rationale for extending the presumption to pure legal issues is pretty weak.

          1. Not sure I agree with that. The statute just says patents are presumed valid. It doesn’t define what that means. SCOTUS has interpreted the presumption as creating evidentiary burdens and apparently nothing more.

            1. As I pointed out below Derek – the quote of the Court is “We are not answering that question.”

              That decidedly does not mean “and apparently nothing more.

          2. The statute says what is already being done, right David?

            The point under contention (I think) – is somehow, with some (unstated) authority, heightening what is in the statute for a particular item specifically made of record to some (unstated) level on a legal – as opposed to factual – basis.

    1. Perhaps, but the argument in Nautilus and more importantly footnote 10 in the opinion seem to be consistent with the concurrence. And I think that historically the presumption has only applied to factual predicates for an invalidity challenge(e.g., Graham factors rather than ultimate obviousness determination). So, personally, I don’t think SCOTUS is changing the law. I think it is trying to clarify the presumption’s role because practitioners and courts sometimes let it carry over into legal determinations.

      1. Further to my question at 2.1.1.1, can you explain what is the “before” of the legal determination and contrast that with an extended “after” of the same legal determination?

      2. Is this the part of the footnote that you implicate: ?

        The parties nonetheless dispute whether factual findings subsidiary to the ultimate issue of definiteness trigger the clear-and-convincing-evidence standard and, relatedly, whether deference is due to the PTO’s resolution of disputed issues of fact. We leave these questions for another day.

        1. No. I think that’s relevant but I was focusing more on the apparent rejection of the idea that the presumption dilutes the definiteness requirement in the prior paragraph of footnote 10.

      3. Ironic then that the statement to which footnote 10 is appended is:

        We agree with Nautilus and its amici that such terminology can leave courts and the patent bar at sea without a reliable compass.

        which is exactly one of those “do-as-I-say-not-as-I-do” faults of the Supreme Court itself.

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