Technical Amendment H.R. 6621

H.R. 6621 has passed in the Senate, but only after the Senate eliminated section (m) of the bill that would have brought to light information regarding the hundreds of "pre-GATT" patent applications that have been pending since 1995. According to Capitol Hill rumors, well known patentee Gil Hyatt was able to convince one Senator to put a hold on the bill that would have eliminated possibility of passage barring the amendment. Hyatt apparently has a number of applications pending that claim architecture and logic design of very basic integrated circuits. There are several hundred of these pre-GATT applications pending. The majority are apparently ones delayed because of Department of Defense secrecy orders. However, a substantial number would be properly classified as submarine patents whose existence is currently unknown but that potentially claim a broad scope of coverage that could potentially cover elements of an entire mature industry (such as integrated circuits). Because the Senate amended the bill, it must be passed again by the House and signed by the President before conclusion of the term.

Bits and Bytes No. 125: Comments on Comments

  • Gil Hyatt’s attorney contacted me this morning and asked that a few “offending” comments be removed from the post associated with his case. I agreed that they were potentially problematic and removed them. Two discuss LL’s role as an examiner of HYATT’s cases. Because Hyatt’s applications were filed before 1995, those files are likely still secret and thus should not be publicly discussed. I also removed the “sleazeball” comments. As a reminder to commenters – you may appear anonymous, but a well heeled plaintiff could probably track you down unless you take special precautions. I have thus-far successfully resisted providing any identifying information to interested parties. However, I would obey a court order.
  • For PTO Examiners who Comment Regularly. I enjoy your comments and they helpfully reveal aspects of PTO operations that would otherwise be hidden. You should, however, occasionally re-read MPEP 1701: “Public policy demands that every employee of the United States Patent and Trademark Office (USPTO) refuse to express to any person any opinion as to the validity or invalidity of, or the patentability or unpatentability of any claim in any U.S. patent, except to the extent necessary to carry out (A) an examination of a reissue application of the patent, (B) a reexamination proceeding to reexamine the patent, or (C) an interference involving the patent. “
  • Fraud not Inequitable Conduct: IPO executive director Herb Wamsley (writing as the IP LANGUAGE CURMUDGEON) argues that the term “Inequitable Conduct” is misleading. The doctrine does not follow a traditional balancing of the equities, but is seated in fraud. Thus, Wamsley “proposes scrapping the term ‘inequitable conduct’ in favor of ‘fraud,’ a term that is not very well defined in law either, but which better conveys the idea that patents should be unenforceable only if serious misconduct has been proven. If courts had to find ‘fraud’ before they could hold a patent unenforceable, perhaps they would apply the doctrine now called inequitable conduct only in cases of very clear intent and materiality” as the law requires. I think that Wamsley’s suggestion makes perfect sense.
  • IPO’s annual meeting is Sept 13-15 in Chicago: Link. Over 500 individuals (including yours truly) are already signed-up to attend this patent law powwow. This is probably the largest mixer of in-house patent counsel and patent attorneys in private practice. The only problem is the cost: IPO members pay $950; Non-Members pay $1,450; Inventors and academics pay $500.
  • Update on the Faculty Position at the University of Utah Law School200908142110.jpg : They are hiring, but may not have received your e-mail. “Due to a server switch, the email address was not functioning correctly for a few days in August. We sincerely apologize for this error. As of today, August 14th, the email address is once again fully functional. We encourage interested applicants to send their materials to us at that email address, particularly those who sent, or attempted to send, materials in the past two weeks, so that we can be sure that we received them.” [Read the Job Listing] [Klarquist Sparkman is also looking for an O-Chem Patent Attorney or Agent]

The Timeliness of the En Banc Rehearing of Hyatt v. Kappos

The pending en banc case of Hyatt v. Kappos is more important now than ever before because the Board of Patent Appeals and Interferences (BPAI or Board) is deciding more appeals than ever before.  The chart below reflects the number of applications with completed appellate briefing that are pending resolution at the BPAI. As active patent prosecutors are well aware, this chart only reveals a small portion of a complex problem.  Appeal briefing has largely become an ordinary part of patent prosecution practice. Most cases where appeal briefs are filed do not actually reach a BPAI decision.  Rather, in most cases the examiner withdraws the standing rejection rather than pursue the appeal.  In this system, appeal briefs have largely become a priced commodity rather than an all-out factual and legal effort.


In Hyatt v. Kappos, the en banc Federal Circuit is focusing on the amount of new evidence that can be presented when challenging a BPAI decision in Federal District Court under 35 USC 145.  The panel decision held that the district court properly refused to allow Hyatt to submit additional expert testimony that went beyond the arguments presented to the BPAI.  Judge Moore dissented from that holding and instead argued that the right to a “civil action” under Section 145 includes a right for a de novo consideration of patentability.

The issues raised in Hyatt v. Kappos are now important for many patent applicants because of the cost-pressures of appeal briefs and the high-likelihood that rejections will be withdrawn based on the briefing.  Typical Applicants do not submit substantial additional evidence of patentability during the appeal process.  However, under Hyatt, the applicant would be barred from substantially adding to the record in a subsequent civil action.

Supreme Court takes Two More Patent Cases

The Supreme Court has granted writs of certiorari in two pending patent cases. 

In Kappos v. Hyatt, the Supreme Court will decide (1) whether a patent applicant who files a Section 145 civil action has a right to present new evidence to the Federal District Court that could have been (but was not) presented during the proceedings before the USPTO and (2) when new evidence is presented, whether the court may decide the related factual questions de novo and without deference to prior PTO findings.  An en banc Federal Circuit previously sided with the applicant, Hyatt, and held that the district court must allow new evidence and that factual conclusions affected by the new evidence must be decided de novo even if previously determined by the PTO. Judge Kimberly Moore penned the en banc opinion after dissenting from the original panel that had arrived at the opposite conclusion. This is Hyatt’s second case at the Supreme Court.  He won the first against the State of California who was attempting to tax his receipts from patent licensing awards.  Hyatt’s patents are related to computer micro-controller designs and claim a 1975 priority date.

Caraco Pharmaceutical Laboratories, Ltd. v. Novo Nordisk A/S is a brand versus generic pharmaceutical dispute involving the scope of a generic company’s right to counterclaim against the brand based upon a brand’s overbroad description of claim scope submitted to the FDA.  The Federal Circuit held that the Hatch-Waxman Act only allows for deleting of improperly listed patents while the petitioner here argues that the Act also allows for correction of misstatements for patent scope.

The Supreme Court today also decided two personal jurisdiction  that could have some impact on how foreign entities are treated in US patent cases. In  J. McIntyre Machinery v. Nicastro, the court held that a the “stream of commerce” theory of personal jurisdiction was being taken too far and that the foreign manufacturer (Nicastro) could not be subject to courts located in New Jersey because it had not engaged in activities in that state that “revealed an intent to involde or benefit from the protection of the [New Jersey] laws.”  In Goodyear Luxembourg Tires v. Brown, the court held that courts located in North Carolina did not have general jurisdiction over Goodyear’s foreign subsidiary.

Where we are with the GATT Bubble of 1995

by Dennis Crouch

The Federal Circuit recently wrote about the GATT-Bubble in Hyatt v. Hirschfeld decision. “[I]n the nine days leading to June 8, 1995, the PTO reported that it received and processed over 50,000 applications—one-quarter of the entire year’s projected filings.”  Pre-GATT applicants had a comparative incentive to keep their patent applications pending longer because patent term was calculated based upon the issue date.* This was especially true in the early days prior to creation and expansion of Patent Term Adjustment.  1995 was 26 years ago — most folks who are patent attorneys today were not yet even in law school at the time. That summer, I was working at a bacon factory in Frontenac Kansas (The $5.15 per hour was substantially above minimum wage of $4.25).


The bulk of pre-GATT applications were processed and issued/abandoned roughly as expected.  However, there has been quite a long tail of pending applications.  By 2010 the number was down to about 600 pre-GATT pending applications.  We know now that about 380 of these were associated with Gil Hyatt; the remaining 220 were associated with other applicants.**   By 2016, the number was down to 20 non-Hyatt pre-GATT pending applications, and now in 2021 there are only 2 non-Hyatt applications remaining.  There will be a few more years of litigation, but if the PTO’s win on prosecution estoppel holds, this chapter will finally be closed.

= = =

In recent years, all of the pre-GATT patents have issued to Personalized Media Communications (PMC).

  • U.S. Pat. No. 10,715,835 – 2020 Signal processing apparatus and methods
  • U.S. Pat. No. 10,616,638 – 2020 Signal processing apparatus and methods
  • U.S. Pat. No. 10,609,425 – 2020 Signal processing apparatus and methods
  • U.S. Pat. No. 10,523,350 – 2019 Signal processing apparatus and methods
  • U.S. Pat. No. 10,334,292 – 2019 Signal processing apparatus and methods
  • U.S. Pat. No. 9,674,560 – 2017 Signal processing apparatus and methods

In addition, a number of unclassified pre-GATT cases have also moved through.  An interesting one is a patent issued to Lockheed Martin in 2020 on a “method for opening a combination padlock.” U.S. Pat. No. 10,669,742.  Basically, this is a method and apparatus for figuring out the combination on the padlock.  The application was filed back in 1990 and kept secret by order of the Department of Defense until 2018.

= = = = =

* Applicants who beat the 1995 deadline were granted given either a patent term of 17 years from issuance or else 20 years from filing, whichever was longer as calculated at issuance. In that scenario, there were very good reasons to file before the deadline if the invention was ready for patenting.

** Note – for this essay, I’m ignoring old applications that were kept secret and denied issuance by the US Government.

Patently-O Bits and Bytes No. 59

  • The Patent Hawk Strikes: Gary Odom enjoyed inventing and patenting so much that he became a patent searcher. He also writes the Patent Hawk blog from his Oregon roost. He has now sued Microsoft in the Eastern District of Texas for infringing his Patent covering toolbar groupings (Patent No. 7,363,592). If you are using Office 2007, you might check to see whether your Microsoft click-through license includes indemnification.
  • Law students ask me about law firm titles, so I created the following “Glossary of Patent Law Firm Professionals
    • Associate: A lawyer who is not yet a partner, but is on that track.
    • Partner: Could be either equity partner or non-equity partner.
    • Equity Partner: An owner of the firm. Firms may have complex ownership structures and various levels of equity.
    • Non-Equity Partner: A senior associate with a fancy title. Many firms do not tell its clients which partners are equity vs non-equity.
    • Of Counsel: Catch-all used when an attorney wants to work a reduced load or not be fully engaged with the firm. Also, many firms hire lateral would-be partners as of counsel until the firm decides to make a partnership offer.
    • Special Counsel: Same as of counsel.
    • Senior Counsel: Same as of counsel, but indicates a senior level attorney
    • Technical Advisor: non-lawyer, often a patent agent. Some firms separate patent agents from technical advisors based on PTO registration.
    • Law Clerk: non-lawyer, typically also a law student.
    • Docketing clerk: Typically a paralegal. The most important job in a patent prosecution firm.
    • Patent Paralegals and Secretaries: The most difficult positions to fill with qualified individuals willing to work with patent attorneys.
    • Contract Attorney: The person who is treated the worst but is paid fairly well. Spends the day doing document review and checking facebook.
  • Quote of the week: “Next time wear a tie. This is the Federal Circuit.” CAFC Judge to appellate counsel.
  • Inventor Gil Hyatt gets $388 million more – this time from the California Franchise Tax Board. The lawsuit by Hyatt was filed in 1998 after California assessed Hyatt with millions of dollars of income tax while Hyatt claimed he did not live in the state. In the case, the Supreme Court had rejected California’s immunity argument – finding that a Nevada court was not required to give full faith and credit to California’s self-immunity statute. [Link] Gilbert Hyatt is known for receiving a broad patent on the microcontroller. Before the patent was invalidated, Hyatt received $70 million+ in royalties.


PTO Publishes Comments on Proposed BPAI Rules

Because of the expected increase of appeals to the Board of Patent Appeals and Interferences (the “Board”), the Patent Office has proposed a new set of rules governing practice before the Board. [Proposed Rules]. The PTO received over fifty comments from the public — mostly negative.  As it turns out, the rules appear to primarily serve as a roadblock to appeals — either by raising costs or creating procedural stumbling blocks.  The extra rules are especially shocking when you consider that the vast majority of appeals filed never reach the BPAI. Rather, even after the applicant files an appeal brief, most cases are re-opened by the Examiner who either allows the case or re-opens prosection. [cite]

In its letter to the PTO, the AIPLA noted problems with the new rules:

Some of these new requirements … do not appear to address any specific problem being experienced by the Board, and would simply add additional formal requirements that would increase the burden and costs of preparing an appeal brief, and lead to even more disputes over compliance of an appeal brief with the many formalities already required.

Intellectual Ventures said it more forcefully:

The proposed new rules are onesided and will serve as a significant hurdle to a patent applicant in pursuing their statutory right of an appeal to the BPAI. Many of the proposed changes run counter to the patent statute and improperly attempt to transfer responsibilities and shift burdens of proof from the USPTO to applicants. … Since the agency is forcing more appeals, the appeal process should be reformed to make appeals easier and less expensive to prepare rather than make appeals more expensive and burdensome as in the proposal.

Some Examples:

  • Proposed Rule 41.37(q) and (r): would require applicants to identify for every argued claim where every claim limitation finds support in the specification and is illustrated in the drawings — even where a claim limitation is not at issue in the appeal. This requirement only raises the cost of preparing an appeal brief.
  • Proposed Rule 41.37(o)(7): Would require applicant to provide an explanation of patentability when obviousness is asserted. There may be some policy reasons for requiring this. However, under current law, the applicant is not required to prove patentability — rather, the applicant only needs to poke holes in the Examiner’s prima facie case of obviousness.  

In its comments, the Adams law firm of New Mexico noted a recent Patently-O posting on BPAI delay — and suggested that briefs should be submitted directly to the BPAI — not to examiners for their initial review.  

David Boundy – writing for CantorFitz – debated whether these rules are actually ‘procedural.’

When combined, the various limits imposed in the propped Appeal Rule accumulate to a substantive denial of an applicant’s right to a fair and efficient appellate review. Increased fonts [14 point], decreased page limits [25 pages], added material that must be included, no limits on the amount of material that an Examiner can present, and a draconian remedy for failing to address every point raised by an Examiner – all make one question the motivation for these proposed changes. At some point, a collection of “procedural” limits becomes so stringent that they amount to a “substantive” limit on the ability to prosecute an application.

A. Intellectual Property Organizations and Government Agencies

  1. American Bar Association (ABA) [PDF]
  2. American Intellectual Property Law Association (AIPLA) [PDF]
  3. Bar Association District Columbia (BADC) [PDF]
  4. Intellectual Property Owners Association (IPO) [PDF]
  6. Minnesota Intellectual Property Law Association (MIPLA) [PDF]
  7. National Association of Patent Practitioners (NAPP) [PDF]
  8. Washington State Patent Law Association [DOC]

B. Corporations and Associations

  1. 3M Innovative Properties Company (3M IPC) [PDF]
  2. Alkermes, Inc. [PDF]
  3. Amylin Pharmaceuticals, Inc. [PDF]
  4. Intellectual Ventures (IV) [PDF]
  5. Ceres [PDF]
  6. Cantor Fitzgerald L.P. [PDF]
  7. Eastman Kodak Company [PDF]
  8. Eli Lilly and Company [PDF]
  9. IBM Corporation [DOC]
  10. Microsoft Corporation [DOC]
  11. Wyeth [DOC]

C. Law Firm

  1. Adams Law Firm Co. [PDF]
  2. Greenblum & Bernstein, P.L.C. [PDF]

D. Individuals

  1. Aaronson, Larry [DOC]
  2. Alstadt, Lynn, J. [DOC]
  3. Baker, Daniel [DOC]
  4. Calvert, Ian, A. [DOC]
  5. Cermank, Adam, J. [DOC]
  6. Dolce, Marcus, P. [PDF]
  7. Golladay, James, E., II [PDF]
  8. Haynes, Michael [PDF]
  9. Hoover, Allen, E. [DOC]
  10. Hyatt, Gilbert P. (comments) [PDF]
  11. Hyatt, Gilbert P. (appendix) [PDF]
  12. Hyatt, Gilbert P. (comments) [PDF]
  13. Hyatt, Gilbert P. (appendix) [PDF]
  14. Hyatt, Gilbert P. [PDF]
  15. Jocke, Ralph, E. [PDF]
  16. Keegan, Robert, R. [DOC]
  17. Katznelson, Ron, D. [PDF]
  18. Marshall, Bob [DOC]
  19. Meirs, Raymond, C. Jr.. [DOC]
  20. Miller, Jerry, A. [PDF]
  21. Moore, Steven, J. [DOC]
  22. Moore, Steven, J. [DOC]
  23. Mullen, James, J. [PDF]
  24. Murashige, Kate, H. [PDF]
  25. Paul, Scott, D. [PDF]
  26. Reeves, Nancy, L. [DOC]
  27. Schideler, Blynn, L. [DOC]
  28. Steinkraus, Walter, J. [PDF]
  29. Svensson, Leonard [PDF]

Hyatt’s Family Tree

by Dennis Crouch

In the ongoing saga between the USPTO and Hyatt, the USPTO recently submitted an interesting family tree of related applications filed by Gilbert Hyatt.  Nice redaction.

It is unclear to me why the entire block is redacted since some of the Hyatt patents have issued and therefore are public as is the application of any unpublished application whose filing-date benefit is claimed by one of issued patents.


Reopening Prosecution – Rather than Allowing Appeal

In his petition for writ of certiorari, Gilbert Hyatt asks:

Whether MPEP § 1207.04 violates patent applicants’ statutory right of appeal following a second rejection.

This section of the MPEP allows a patent examiner to “reopen prosecution to enter a new ground of rejection” in response to a patentee filing an appellate brief.  Hyatt argues that this approach violates the right to appeal under 35 U.S.C. § 134 and § 6(b).  When I previously wrote about the case, I noted a “remarkably parallel” case from 1904 where the Supreme Court authorized mandamus action where the examiner refused to forward cases to the Board. U.S. ex rel. Steinmetz v. Allen, 192 U.S. 543 (1904).  The Supreme Court in that case also wryly spells-out the justification for restriction practice — “to obtain more revenue” for the Patent Office.

In its newly filed responsive brief, the USPTO agrees that after having its claims “twice rejected . . . the applicant is entitled to appeal that rejection. . . [However], contrary to petitioners’ assertion, that procedure does not deprive any patent applicant of his right to review by the Board.”

[Supreme Court Docket Page]

The PTO draws a distinction with Steinmetz because it was related to a refusal to allow an appeal with regard to restriction practice — rather than repeated reopening of prosecution.

= = = =

My take here is that the PTO should be able to reopen prosecution when it acts reasonably.  A mandamus action or APA lawsuit should be available if the agency acts otherwise.

Old Applications; New Patents

By Dennis Crouch

Patent applications filed on or after June 8, 1995 have a term of twenty years from the date of application filing. The prior rule offered a term of seventeen years from the issue date. This change was part of the Uruguay Round Agreements Act (URAA) that harmonized US law with that of other countries and also helped to substantially move away from the problem of patent application sandbagging / submarining where patent applicants intentionally delayed prosecution in order to accrue additional end-stage patent term. That problem has arisen again, although to a lesser extent, with the generous patent term adjustment offered for delays in prosecution.

Although the change-over was almost twenty-years ago, there are still a number of pre-URAA patents pending at the PTO. When they issue, these patents have the benefit of having 17-more years of patent term remaining. For some fundamental technologies whose market has blossomed over the past two decades, that potential value is enormous. According to the PTO, there are now 450 of these old applications still pending at the USPTO. That is down from about 600 three years ago.

The chart below shows the number of pre-URAA patents issued each year for the past decade.

The twenty pre-URAA patents issued in 2013 are owned by only seven different entities, and twelve of them are owned by Personalized Media Communications.

  • BAE Systems: 8,576,108 (active expendable decoy to fool enemy missiles);
  • Children's Medical Center: 8,597,910 (DNA encoding Von Willebrand Factor Proteins);
  • Colgate-Palmolive: 8,535,730 (tarter control toothpaste);
  • Genentech, Inc.: 8,357,513; 8,399,250; 8,557,768 (genes and methods relating to the human mpl ligand polypeptide);
  • Institut Pasteur: 8,507,196 (A kit for determining the absence of HIV-1 RNA in a biological sample);
  • Personalized Media Communications: 8,395,707; 8,558,950; 8,572,671; 8,584,162; 8,587,720; 8,607,296; 8,559,635; 8,566,868; 8,601,528; 8,555,310; 8,613,034; 8,621,547 (programmable TV remote control);
  • ZymoGenetrics: 8,603,777 (Genetically modified cells that produce human Factor IX).

 I recently wrote about the Gil Hyatt case that involves several patent applications filed in the 1970s and an additional handful of applications pending since the mid 1990s. The PTO has not issued a Hyatt patent since 1997. 

Pending Supreme Court and en banc Federal Circuit Patent Cases

By Jason Rantanen

The Supeme Court continues to take an active interest in patent cases, with three currently pending before the Court.  Briefs are available through the American Bar Association's Supreme Court coverage site.

Patent Cases Pending Before the Supreme Court:

Mayo v. Prometheus: Subject Matter Patentability of Processes, redux. In Mayo, the Supreme Court will revisit the issue of patentable processes in a case that was the subject of a grant-vacate-remand order following Bilski.  The Court has asked the parties to answer the following question:

Whether 35 U.S.C. § 101 is satisfied by a patent claim that covers observed correlations between blood test results and patient health, so that the claim effectively preempts all uses of the naturally occurring correlations, simply because well-known methods used to administer prescription drugs and test blood may involve “transformations” of body chemistry.  

Argument is set for December 7, 2011.  This case has prompted substantial debate and numerous amici submissions.  Prior PatentlyO posts:

Kappos v. Hyatt: Standard of Review of Patent Office Appeals to the District Court.  In Kappos v. Hyatt, the Supreme Court will address the de novo nature of a civil action brought by a patent applicant under 35 U.S.C. § 145.  The Federal Circuit, sitting en banc, previously held that in such a proceeding the applicant many present new evidence to the district court and that any factual conclusions impacted by that evidence must be determined de novo, without deference to the patent office.  The Supreme Court has not yet set oral argument.  Prior PatentlyO commentary:

Caraco v. Novo: Counterclaims Relating to Brand Name Description of Claim Scope. This case relates to a generic company's ability to seek a counterclaim to correct a brand pharmaceutical company's alleged misdescription of patent claim scope submitted to the FDA. Oral argument is set for December 5, 2011.

Patent Cases Pending Before the Federal Circuit Sitting en banc:

Akamai v. Limelight and McKesson v. Epic: Multi-Party, Multi-Step Infringement issues.  In this set of cases the Federal Circuit will address infringement liability when multiple parties collectively perform separate steps of a muti-step process claim but no single entity performs all the steps. Oral argument will take place on November 18, 2011.  Prior PatentlyO commentary:

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.

Odyssey Logistics v. Iancu: Two of the three bears in an APA challenge

By Jason Rantanen

Odyssey Logistics and Technology Corporation v. Iancu (Fed. Cir. 2020) Download opinion

Panel: Lourie, Reyna and Hughes (author)

Some of my biggest head-scratchers when I studied administrative law in law school were the timing rules for bringing challenges under the Administrative Procedures Act.  It wasn’t because of a lack of comprehension, but instead due to the way these rules can block off judicial review of agency action.  Individually the timing rules make sense, but collectively they produce a Three Bears-type situation: the timing of challenges has to be just right, or the challenge will get tossed for being either too early or too late.

This case involves two challenges to actions taken by the PTO and one challenge to a set of rules published by the PTO in 2011.  The first two challenges were dismissed as two early and the third was too late.

Count I involved a request for rehearing by the relevant Technology Center Director following the Patent Trial and Appeal Board’s (PTAB) reversal of the examiner’s objections to Odyssey’s application.  The request for rehearing was filed about five months after the PTAB decision.  Odyssey challenged the propriety of the request on procedural grounds at the PTO, which were rebuffed, and then filed a challenge in the Eastern District of Virginia before the PTAB issued its decision on the substantive merits raised by the rehearing.  The Federal Circuit affirmed the district court’s holding that there was not yet a “final agency action” under the APA.  Nor did the Federal Circuit see this as a situation involving an abusive use of agency rules to delay proceedings that justified compelled action by the court.

In Count II, Odyssey challenged what it argued were new grounds for rejection by the examiner.  However, the PTAB had not yet issued a decision at the time Odyssey brought the challenge.  The result: dismissal for non-finality.  Odyssey argued that the district court should have instead dismissed on mootness grounds, but the Federal Circuit said that wasn’t necessary: “[A] federal court has leeway to choose among threshold grounds for denying audience to a case on the merits….The district court did not err by “tak[ing] the less burden-some course.”  Slip Op. at 11.

The final count was a challenge to certain amendments that the PTO made to its rules on practice for ex parte appeals in 2011.  Odyssey argued that these amendments were facially invalid–that the regulations were unlawful generally.  However,  28 U.S.C. § 2401 bars claims that are not brought within 6 years of the date the action accrues.  Odyssey argued that the relevant triggering date was the effective date of the regulation (January 23, 2012) rather than the date it was published in the Federal Register (November 22, 2011), but the Federal Circuit disagreed: under both Fourth and Federal Circuit law, the relevant date for substantive facial challenges is the date of publication.  Substantive facial challenges are different from “as applied” challenges, which accrue as of “the time of an adverse application of the decision against the plaintiff.”  Id. at 13, quoting Hyatt v. U.S. Pat. & Trademark Off., 904 F.3d 1361, 1372 (Fed. Cir. 2018).  The result was that Odyssey’s challenge, which was filed in district court on January 23, 2018, was time-barred by § 2401.

Edit: Shortly after I posted this, counsel for appellant contacted me to inform me that the statement “Odyssey challenged the propriety of the request on procedural grounds at the PTO, but then filed a challenge in the Eastern District of Virginia before the PTAB ruled on the request for rehearing” was incorrect: in fact, the lawsuit was filed after the petition for rehearing was granted but before the PTAB had issued a decision on the merits on the substantive issues raised by the rehearing.  I’ve changed the above post to specifically refer to the “decision on the substantive merits raised by the rehearing.”   I also made a few other edits to clarify the issue raised in Count I.  




Law Review Case Note Topics for 2010-2011

Dear Law Review Editors: Please send me a note ( to let me know about patent law focused articles that you publish in your journal so that I can highlight them on Patently-O.

Student Note Topics: Here are some suggestions for patent law focused law review topics for 2010-11 that I would like to see for my own edification. Please send me an e-mail if you choose one of these.

Working through Old Patent Applications

The decision in Hyatt v. Lee (Fed. Cir. 2015) included a citation to a June 2013 letter submitted by then Acting Director Terry Rea to the Senate Judiciary Committee. The letter was submitted in a response to a Senate request for information regarding still pending patent applications filed pre-GATT.

Rea reported that 482 applications are still pending that were filed prior to June 8, 1995. That cutoff is important because those applications – if ever issued as patents – will be entitled to 17-year patent terms following the issue date.  Applications filed since that date are given 20-year terms that begin counting at the application filing date.

The letter goes on to list the serial number, inventor, assignee, priority date, and other information for each of the 482 applications.

Leading the pack is Gilbert Hyatt with 399 applications pending. Runner-Up is Personalized Media Communications (John Harvey) company with 38 applications pending.  The remaining ancient-application-owners are all smaller players with only one or two pending (as of 2013). These include UCB Pharma; Boeing; US Dept of HHS; Sanofi-Aventis; and US Smokeless Tobacco Company, as examples.

Although the letter does not so indicate, it is apparent to me that the data does not include applications kept from issuing due to secrecy orders.  On example is recently issued U.S. Patent No. 9,057,604 that was filed as an application in 1989 but did not issue till 2015 because of a secrecy order by the U.S. Government.  Since Rea’s letter, 30 of Harvey’s patents have issued. See link.


Federal Circuit asked to Decide whether US Patent Law Excludes Non-Human Inventors

by Dennis Crouch

Thaler v. Hirshfeld, App No. 21-02347 (Fed. Cir. 2022)

Prof. Ryan Abbott continues to push Thaler’s case on a global basis.  Thaler created an AI system that he calls DABUS.  DABUS created two separate inventions — a “Neural Flame” and “Fractal Container.”  Thaler filed for patent protection, but refused to name himself as the inventor — although he created DABUS, these particular inventions did not originate in his mind.   The USPTO rejected the applications — explaining US patents must name a human inventor.  Now the case is pending before the Federal Circuit.  The reality here is that Thaler could have claimed to be the inventor and the PTO would not have blinked-an-eye; and no other person or entity would have standing to challenge that result.  In a forthcoming article, I argue that the PTO’s don’t-ask-don’t-tell approach is a truly problematic legal fiction.  And, Thaler’s refusal to comply provides helpful exposure to the hypocrisy.

After being refused a patent, Thaler sued in district court, but the district court sided with the PTO and dismissed the case on summary judgment.  Now the appeal to the Federal Circuit.  Thaler argues:

The USPTO does not accept than an AI can be an “inventor.” This holding is simply inconsistent with the Patent Act’s plain language,  Congressional intent, and the Constitution. The District Court improperly endorsed an interpretation of the Patent Act that, for the first time, excludes an entire category of innovation from patent law protection. The result of which will be to discourage innovation, limit
disclosure of trade secrets, and restrict commercialization of new products.

Thaler Brief.  The argument begins with an analysis of the Patent Act: (1) nothing in the Act actually requires human inventors; and (2) nothing in the Act requires “conception.”  Rather, the design of the system is to create an open incentive field to generally encourage innovation, disclosure, and commercialization.  Barring AI-created inventions from the patent sphere discourages each of these goals of the patent system.

One catch to the Thaler argument in the US is that the 2011 America Invents Act included a new definition of the term “inventor” that requires the inventor be an “individual” and required submission of a inventorship declaration from “each individual who is the inventor or joint inventor.” 35 U.S.C. §§ 100, 115.  The statute also provides a binary gender identification for inventors: “himself or herself.”  These changes suggest a human-inventor requirement, but there are also a number of cases interpreting “individual” to include non-human persons.  In addition, the law allows for a substitute declaration in cases where the inventor is legally incapacitated.  In this case, Thaler submitted that substitute declaration on behalf of DABUS.

Briefing appears complete in the case, and oral arguments will likely be scheduled for sometime this summer.

Briefs filed in the case:

Cartoon adapted from Peter Steiner’s famous work originally published in The New Yorker in 1993.

Agency Bad Guidance Practices at the Patent and Trademark Office: a Billion Dollar Problem

David Boundy’s writing often focuses on the intersection between administrative procedure and Patent Office operations. In his new Patently-O Law Journal essay, Boundy explains the role of guidance (the MPEP, memoranda to examiners, checkboxes on forms, etc. — anything the PTO uses to govern the public or its employees outside the Code of Federal Regulations). Boundy explains when the PTO may act by guidance vs. when the PTO must use a full statutory rulemaking procedure.

Boundy walks through how bad PTO guidance practices is leading to lost patent protection, companies not formed, companies that fold because of delays and unpredictability of their patent applications, business opportunities not pursued, and similar economic effects, etc.  He estimates the cost as several billion dollars per year.

Boundy’s essay then explains how that law applies to several specific rules that PTO improperly promulgated by guidance that create difficulties for patent applicants.

  • Example 1: The secret 2007 restriction memo
  • Example 2: Unpublished rules for ADS submission of bibliographic data
  • Example 3: MPEP § 2144.03(C) misstatement of the law of intra-agency Official Notice
  • Example 4: MPEP § 1207.04 and an examiner’s power to abort an appeal
  • Example 5: the PTAB’s Trial Practice Guide (The right way)

Boundy’s essay is directly relevant to the pending en banc petition in Hyatt v. USPTO that challenges the agency’s right to “reopen prosecution” following a second rejection rather than allowing issues to be appealed.  Although the Federal Circuit ruled that Hyatt’s petition was time-barred, Boundy explains, inter alia, that PTO procedural failures likely divested the agency from any statute of limitations defense.  See, e.g., National Resources Defense Council v. Nat’l Highway Traffic Safety Admin, 894 F.3d 95, 106 (2d Cir. 2018) (a rule does not go effective until published in the Federal Register, and that’s the event that commences the limitations period). 

Read it here:

  • David A. Boundy, Agency Bad Guidance Practices at the Patent and Trademark Office: a Billion Dollar Problem, 2018 Patently-O Patent Law Journal 20. (Boundy.2018.BadGuidance)
Prior Patently-O Patent L.J. Articles:


Pending Supreme Court Patent Cases 2016 (April 18 Update)

by Dennis Crouch

Cuozzo: Prof Mann provides his preview of the April 25 oral arguments in Cuozzo v. Lee; and Cuozzo has filed its reply brief. Neither document address my the mootness concern regarding Cuozzo’s demand for an ordinary construction of claim terms rather than their broadest reasonable interpretation.  As far as I have seen, nothing in the record suggests that a change in claim interpretation standard would alter the PTO’s determination.

Following its April 15 Conference, the Supreme Court denied certiorari in a set of cases, including Vermont v. MPHJLimelight v. Akamai; Hemopet v. Hill’s Pet Nutrition; and Tas v. Beachy. In its April 1 Conference, the Court denied cert in Retirement Capital v. US Bancorp. That case had questioned whether subject matter eligibility under 35 U.S.C. § 101 is a ground specified as a condition for patentability under 35 U.S.C. § 282(b)(2).

The only patent cases surviving the April 15 conference are (1) Interval Licensing v. Lee that asks the same question as Cuozzo: Can the Patent and Trademark Office appropriately apply the “broadest reasonable interpretation” standard in construing patent claims in post-grant validity challenges?; and (2) Medinol v. Cordis that focuses on whether “the equitable defense of laches [may be used to] bar legal claims for damages that are timely under the express terms of the Patent Act.”   Medinol is conceptually linked to the SCA Hygiene case that also raises the laches issue. The court will consider both cases in its April 22 conference and may likely couple the decision to grant/deny.  The court is also scheduled to consider Cloud Satchel (abstract idea eligibility) and Globus Medical (appellate jurisdiction) at Friday’s conference. Neither of these cases offer much hope for the respective petitioner.

In Cooper v. Lee, the US Government filed its brief opposing certiorari. The government argues that Cooper’s Article III challenge to the IPR system “lack’s merit.”

[P]atents are quintessential “public rights” whose issuance and cancellation Congress may permissible entrust to a non-Article III tribunal. . . . Pursuant to its constitutional authority to “promote the Progress of Science and useful Arts” by establishing a patent system, Congress created the PTO – an agency with “special expertise in evaluating patent applications.” Kappos v. Hyatt, 132 S. Ct. 1690 (2012). It directed that agency to issue a patent if “it appears that the applicant is entitled to a patent” under standards set by federal law, 35 U.S.C. 131. Patents are accordingly rights that “exist only by virtue of statute.” Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 229 n.5 (1964). They “dispose of public rights held by the government on behalf of the people.” Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 849 n.2 (2015) (Thomas, J., dissenting).

The government also argues that the posture of the case lacks merits – in particular that Cooper’s collateral challenge to the procedures doesn’t work.  Cooper has argued that “inter partes review violates Article III of the Constitution by authorizing an Executive Branch agency, rather than a court, to invalidate a previously issued patent.”

Daniel Bohnen has filed a brief on behalf of UK’s Chartered Institute of Patent Attorneys (CIPA) in support of the Sequenom v. Ariosa petition.   The brief argues that the court should look to “maintain international harmonisation in the law of patent-eligibility.”[AriosaCIPA].  More briefs in support of the petitioner are expected this week as is Ariosa’s opposition brief (if any).

Finally, Nova has filed its opposition in Dow v. Nova and is attempting to refocus attention on the merits of the indefiniteness decision rather than the procedure for reaching that decision.  The difference in question presented is interesting:

Dow: Whether factual findings underlying a district court’s determination on the definiteness of a patent claim under the Patent Act, 35 U.S.C. 112, like a district court’s factual findings underlying construction of a patent claim, are subject to appellate review only for clear error or substantial evidence rather than de novo review.

Nova: Whether the court of appeals correctly invalidated Dow’s patent claims as indefinite under 35 U.S.C. § 112.

Explaining its shift of the question, Nova argues that “Dow’s petition rests on a false premise that the Federal Circuit refuses to give deference to factual findings” that underlie the definiteness determination.  Nova is correct as to the Federal Circuit’s position — the only question here is whether the Supreme Court will order the appellate court to follow its own law in this case. [DowPetition][NovaOpposition]

The big list: (more…)

The Economist: Time to Fix Patents

In its newest issue, the Economist is coming out strongly against the patent system – based upon the argument that “patent-lawyers are masters of obfuscation” and that patents are being used both by established incumbents and patent trolls to stifle further innovation.

The system has created a parasitic ecology of trolls and defensive patent-holders, who aim to block innovation, or at least to stand in its way unless they can grab a share of the spoils. An early study found that newcomers to the semiconductor business had to buy licences from incumbents for as much as $200m. Patents should spur bursts of innovation; instead, they are used to lock in incumbents’ advantages.

The patent system is expensive. A decade-old study reckons that in 2005, without the temporary monopoly patents bestow, America might have saved three-quarters of its $210 billion bill for prescription drugs. The expense would be worth it if patents brought innovation and prosperity. They don’t.

The Economist has a longstanding pro-competition anti-patent bent.  In the 1800’s The Economist proposed full abolition of the patent system. The paper’s stance is no longer opposition, but does come with the interesting statement that “government should force the owners of intellectual property to share.”

Their proposals:

1) Patent Use Requirement – the patent should only be enforceable if the patentee uses it in the marketplace.

2) Patent Opposition – patents should be easier to challenge without going to court and the burden of proof should be lower.

3) The standard for non-obviousness should be raised so that patents are only granted to those “who work hard on big, fresh ideas, rather than those who file the paperwork on a tiddler.”

4) Patent term should be reduced – especially in fast-moving technology areas.



Patent Continuation Strategies Face Major Threat

by Dennis Crouch

Impact of Sonos on Patent Prosecution: The recent Sonos v. Google decision threatens to grind to a halt, or at least significantly restrict, a once-common patent prosecution strategy – keeping continuation applications pending for years to obtain new claims that cover marketplace developments. Sonos Inc. v. Google LLC, 20-06754 WHA, 2023 WL 6542320 (N.D. Cal. Oct. 6, 2023).  In Sonos, Judge Alsup found Sonos’s patents unenforceable due to prosecution laches, despite Sonos diligently prosecuting related applications for 13 years; serially filing a continuation with each allowance. The decision casts doubt on the viability of pending continuation applications over a long period, even absent any evident applicant delay — especially in situations where new claims are drafted in response to emerging technologies or market demands. Although claim fluidity remains an integral principle in patent law, Sonos adds considerable viscosity to the practice. The viability of continuation strategies, especially in rapidly evolving technologies, may face a reckoning in the wake of Sonos.  The patentee will certainly appeal, but it is not clear that the Federal Circuit will change the path in any way.

Understanding Claim Fluidity: One feature of the US patent system is claim fluidity.  Most claims are amended during prosecution. Most patents claim priority back to an earlier filing with different claims.  Claims can later be amended during a post-grant proceeding. And, to make things clear the reissue state permits a patentee to alter the claims to cover in situations where the original patent claims “more or less than he had a right to claim in the patent.” 35 U.S.C. 251.

Although reissue applications are always available during the life of a patent, they have major downsides, including the two year post-grant timeline for enlarging patent scope. Id. The alternative approach followed by most is to “keep a family member alive” in areas involving technology important to the patentee.  As one family-member patent is about to issue (or be abandoned), the patentee makes sure to file a continuation application with a new set of patent claims and claiming priority back to the original filing documents.

In developing that new set of claims, the patentee will typically consider the marketplace. What market developments have occurred since the original filing date? Some of these developments may be internal — looking at their own current and future product line.  Some of the developments will also be external — looking to see how others have begun using aspects of the disclosed invention.  We then craft claims that cover these new developments; being wary to ensure that the patentee has “a right to claim” this new coverage.  This right to claim is ordinarily measured by the doctrines of enablement and written description and during prosecution we also look to the prohibition on new-matter under 35 U.S.C. § 132.

Sonos v. Google: Judge Alsup’s new decision in Sonos v. Google suggests that this common approach should come to an end. In particular, the court concluded that Sonos’ asserted claims were unenforceable because they had been added to a continuation application filed 13-years after the original priority document in a way that was prejudicial to the behemoth Google.

The essence of this order is that the patents issued after an unreasonable, inexcusable, and prejudicial delay of over thirteen years by the patent holder, Sonos. Sonos filed the provisional application from which the patents in suit claim priority in 2006.

Sonos Inc. v. Google LLC, 20-06754 WHA, 2023 WL 6542320 (N.D. Cal. Oct. 6, 2023).  Judge Alsup goes on:

Trial brought to light what happened here. This was not a case of an inventor leading the industry to something new. This was a case of the industry leading with something new and, only then, an inventor coming out of the woodwork to say that he had come up with the idea first — wringing fresh claims to read on a competitor’s products from an ancient application. . . . It is wrong that our patent system was used in this way. With its constitutional underpinnings, this system is intended to promote and protect innovation. Here, by contrast, it was used to punish an innovator and to enrich a pretender by delay and sleight of hand. It has taken a full trial to learn this sad fact, but, at long last, a measure of justice is done.


The basic setup here is not simply a delay.  Judge Alsup concluded that Sonos learned of a particular feature from Google (allowing a speaker to be in two different zones). And, that Sonos later filed a continuation application that included claims to the new feature. Meanwhile Google invested in the technology and launched its own products.

New Matter and Priority Claims: An odd aspect of the decision is that Judge Alsup concluded that the new feature constituted “new matter” that “[u]nder black letter patent law … necessarily sunk any claim of priority.”   Of course, “new matter” does not actually tank priority claims.  Rather, the priority question depends upon a proper claim and sufficient support as guided by the doctrines of enablement and written description. But Judge Alsup appears to have felt misled regarding the priority issue earlier in the case. At that prior stage, Google had failed to present certain evidence showing lack of priority. Judge Alsup seems to feel he was duped into accepting Sonos’ priority claim. As he put it:

Put another way, ‘I got a half a deck of cards’ and ‘I was not told the complete truth.’ . . . To repeat, the judge was not made aware in the briefing (or at the hearing, or otherwise until trial,) that this sentence had been inserted by amendment in August 2019. That, alone, would have been a red flag.

Id.  The opinion shows Judge Alsup’s displeasure at feeling he was not given the full story by Sonos earlier in the case. He seems to take particular issue with Sonos relying on specification language that was added years later by amendment.  He similarly did not fault Google for failing to discover the issue since the prosecution history is quite complex.

Potential Repercussions for Patent Prosecutors and Portfolio Managers: The case is obviously a major one that patent prosecutors and portfolio managers should consider.  The decision suggests strongly that the common patent prosecution strategy of keeping continuation applications pending to obtain new claims may be disfavored – at least when done over a decade or more as well its use to obtain new claims covering market developments.

Diligence in Prosecution Not a Justification for Delay: Unlike prior cases such as Hyatt, the patentee was diligently prosecuting the patents during the entire period. However, the court found that diligence “does not render the delay any less unreasonable and inexcusable. Indeed, it renders the delay all the more unreasonable and inexcusable.” The court explained that Sonos “could have filed parallel applications with new claims covering the invention” and did not have to “run out its string of inert applications before turning to claim the invention that mattered.”

Patent Term and Prosecution Laches: The Hyatt and Lemelson cases adopted by the Federal Circuit focused on pre-1995 patent applications. The old system provided an incentive for delay during prosecution because the patent term of 17 years began running as of the patent issuance date.  The result was the potential of greatly increasing the effective patent term.  That incentive for delay no longer exists because post-1995 patents (like those of Sonos) have a patent term that runs from the non-provisional filing date.  Thus, each  day of delay ate into the Sonos patent term.  There is some support for the idea that prosecution laches no longer applies in this new system because of the congressionally created limited term of 20 years that begins with the start of prosecution in a manner that is closely parallel to a statute of limitations.  In recent cases, the Supreme Court has held that laches is not a proper defense to damages claims when a statute of limitations is in place.  Still, Judge Alsup concluded that the change in patent term has no impact on the doctrine of prosecution laches.

The Future of Claim Fluidity and Patent Strategy: In the case, a jury had sided with the patent holder Sonos and awarded $32 million in back damages.  Judge Alsup’s decision flips that verdict and also kills any plans Sonos had to exert its exclusive rights over the marketplace. While claim fluidity remains an integral feature of patent law, Sonos has added considerable viscosity to the system.