Some Laws Regarding Laws of Nature

United States Declaration of Independence

When in the Course of human events it becomes necessary for one people to dissolve the political bands which have connected them with another and to assume among the powers of the earth, the separate and equal station to which the Laws of Nature and of Nature’s God entitle them, a decent respect to the opinions of mankind requires that they should declare the causes which impel them to the separation.

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Institutes of Justinian 2.1.1

By the law of nature these things are common to mankind—the air, running water, the sea and consequently the shores of the sea.

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Georgia Code § 5-5-41.

[DNA testing permitted if . . .]  (F) The testing requested employs a scientific method that has reached a scientific state of verifiable certainty such that the procedure rests upon the laws of nature; and

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La. Stat. Ann. § 15:422 (now repealed)

Judicial cognizance is taken of the following matters: . . . The laws of nature

(Note, in general, courts still take judicial notice of laws of nature).




Apology to Judge Reyna

I want to pause here for a moment to make an apology to Federal Circuit Judge Reyna regarding what could easily be perceived as poor taste humor.  I continue to have the highest respect for the Judge and hope that it was not taken in offense.

Last week when I wrote about the AATRIX Software case, I included an image of Mexican actor Alfonso Bedoya from the 1948 neo-western “The Treasure of the Sierra Madre” along with a modification of the “stinkin’ badges” quote.  The quote was used again in the Mel Brooks classic Blazing Saddles.

At the time when I wrote about AATRIX, I had no conscious thought of Judge Reyna’s Latino cultural heritage. (Judge Reyna dissented-in-part in the AATRIX decision).  A few hours later I deleted the image after considering that it did not reflect well on either myself, Patently-O, or the patent law community.  However, even at that time I did not consciously recognize the potential link to Judge Reyna.  It was only later that I recognized with some horror how it would be interpreted.

Perhaps no offense was taken. Either way though, I do apologize.

– Dennis Crouch


Patents and Antitrust: Trump DOJ Sees Little Connection

Image result for Makan Antitrust Great AgainFor the first time ever, the head of the Antitrust Division for the Department of Justice is a patent attorney – Makan Delrahim – who is known to be “Makan Antitrust Great Again

In a recent speech, Delrahim explained his general position – that patent holders rarely create antitrust concerns.  Rather, it is equally likely that the problem lies with companies implementing new technologies without first obtaining a license from the relevant patent holders.  He explained that the DOJ’s historic approach has been a “one-sided focus on the hold-up issue” in ways that create a “serious threat to the innovative process.”

In response to Delrahim’s approach, a group of technology implementer companies (also known as downstream innovators) and law professors wrote to Delrahim arguing that “patent hold-up is real, well documented, and harming US industry and consumers” — especially in the area of Standards Essential Patents (SEP) — and in ways that the antitrust laws should help fix.

Sweeping in now to buffer Delrahim’s position are a group of libertarian scholars and others (including David Kappos and Judge Michel) who have offered their competing letter.  Their position is largely that the drastic remedies associated with antitrust laws should only be used based upon strong evidence of problems being caused in the market.  Here, they argue that no evidence has shown that violations of FRAND commitments actually cause market harm.

Prof. Jorge Contreras has written on these issues in several Patently-O posts. Contreras did not sign either letter.

Guest Post by Prof. Jorge Contreras: TCL v. Ericsson: The First Major U.S. Top-Down FRAND Royalty Decision

Unwired Planet v. Huawei: An English Perspective on FRAND Royalties

Guest Post on Using the Antitrust Laws to Police Patent Privateering

Good Things Come in Threes? DOJ, FTC and EC Officials Wax Eloquent About FRAND


PTAB Appeals, Standing, and the PTO’s Voice as Intervenor

Guest Post by Matthew J. Dowd and Jonathan Stroud

Professor Saurabh Vishnubhakat’s recent well-reasoned post and longer article add much to the discussion about standing to appeal from the PTAB. Standing has recently garnered significant interest from the Federal Circuit. Building on existing scholarship, we have written a concise synopsis of standing law as applied to PTAB appeals, forthcoming in Catholic University of America Law Review.

Drawing from it, we offer a counterpoint to Professor Vishnubhakat’s view, as expressed in his post, of intervenor standing—with his permission (and we thank Prof. Crouch for the opportunity). Professor Vishnubhakat’s thesis asserts, in part, that while 35 U.S.C. § 143 grants the PTO “the right to intervene in an appeal,” separate and independent constitutional standing requirements should prevent it from doing so when an appellee fails to appear. He finds that the PTO’s “ability to intervene often will rest on its ability to show Article III standing” and that the PTO “as intervenor may be able avoid having to show its own standing—but only if (1) the agency has entered the case on the side of a party that does establish standing, and so long as (2) the agency does not seek relief that is different from what that friendly party seeks.” The PTO, he concludes, should not be able to intervene where a party does not appear.

In our view, as a matter of standing alone, the PTO can participate as an intervenor in virtually all AIA appeals from the PTAB—and many reasons are consonant with the principles on which Professor Vishnubhakat bases his reasoning. We make no judgment here on the merits of the positions the PTO solicitor has or will adopt, or the frequency of intervention. While there is a valid debate about the policy choices and the frequency with which the PTO has intervened, that debate is distinct from the legal question of whether the PTO has, or must have, standing as an intervenor beyond their express statutory grant. Professor Vishnubhakat reasons correctly; he just goes a bridge too far.

First, while no court has definitively held that each party to an appeal must establish independent Article III standing where appellants have standing, most courts and opinions suggest that if the party invoking the court’s jurisdiction establishes Article III standing, the inquiry is resolved. For instance, in Camreta v. Greene, 131 S. Ct. 2020 (2011), the Supreme Court found that any opposing party necessarily has an “ongoing interest in the dispute,” so that the case by nature features “that concrete adverseness which sharpens the presentation of issues.”

In ASCARCO Inc. v Kadish, 490 U.S. 605 (1989), the Supreme Court held that while the state-court plaintiffs-respondents lacked Federal Article III standing, the Court had jurisdiction, because the petitioners seeking review had suffered “a specific injury stemming from the [adverse] state-court decree.” Importantly, the Court took no issue with the respondents’ participation in the appeal; they found simply that “the parties remain adverse,” as the plaintiffs-respondents were defending the state court’s judgment, and an appeal would resolve a “genuine case or controversy.”

And the following year in Department of Labor v. Triplett, 494 U.S. 715 (1990),
the Department of Labor and the Committee on Legal Ethics appealed the claims of a third-party attorney below. The majority held that both appealing parties had standing. The government’s “Committee on Legal Ethics” had “the classic interest of a government prosecuting agency arguing the validity of a law upon which its prosecution is based.” There was “no question” the third-party defendant-respondent Triplett had standing, the court reasoned, given his claim that his clients were being deprived of due process. Justice Marshall, concurring, explained that where “respondent has not invoked the authority of any federal court, then, federal standing principles are simply inapplicable to him.” He went on: “Under this Court’s clear pronouncement in ASARCO, the only relevant question for us here is whether one of the petitioners has standing to seek review by this Court of the state court’s judgment.”

Those are a few in an extensive line of cases supporting the view that the party having to show standing is the one seeking to invoke the court’s jurisdiction. For instance, in Rumsfeld v. FAIR, Inc., 547 U.S. 47 (2006), the Supreme Court held that “the presence of one party with standing is sufficient to satisfy Article III’s case-or-controversy requirement.” At a minimum, any fulsome analysis of intervenor standing must consider this precedent.

Second, Town of Chester v. Laroe Estates, Inc., 137 S. Ct. 1645 (2017)—the Court’s most recent opinion on intervenor standing—comports with prior precedent and runs against the need for intervenors to establish standing independent from the parties to the matter, or to establish the standing of an underlying party whose position they support. In Town of Chester, the Court squarely held that “an intervenor must meet the requirements of Article III if the intervenor wishes to pursue relief not requested by a plaintiff.” The Court cited cases specifying that it is the “plaintiff” who needs to show standing, maintaining consistency with the cases discussed above. To read in a requirement that intervenors must establish standing for their positions—or for the parties they side with—even where they pursue the same relief requested by a party would impermissibly broaden the holding.

The Court further explained that, in multi-plaintiff cases, “[a]t least one plaintiff must have standing to seek each form of relief requested in the complaint.” That statement implicitly accepts that not every party needs to prove Article III standing if multiple parties are seeking the same relief and one party has standing. And it does not follow that at least one defendant must have standing to participate on appeal. The Court has deliberately distinguished between a plaintiff’s standing requirement versus a defendant’s.

Arizonans for Official English v. Arizona, 520 U.S. 43 (1997), is not to the contrary, as the good professor suggests. There, the Court held that standing “must be met by persons seeking appellate review, just as it must be met by persons appearing in courts of first instance.” The person seeking appellate review—and thus invoking the court’s jurisdiction—is the appellant, similar to the plaintiff below.

A third consideration—one noted in Professor Vishnubhakat’s post—further supports the PTO’s role as intervenor, and supports the bulk of, but not all of, his conclusions. He is right that, in cases where the PTO will be asking for relief different from one party with standing, the PTO may then have to demonstrate standing, consistent with Town of Chester. This would be true regardless of—and separate from—whether the underlying party has standing.

This matters little given the Chenery doctrine, which bars courts from accepting an agency’s post hoc rationalization as support for the agency’s decision. Chenery essentially precludes the PTO from asking the Federal Circuit for relief that is any broader than what the PTAB held or what the appellee might argue on appeal. In PTAB appeals, rarely will the PTO be seeking a different scope of relief than what the PTAB did or what an appellee will be seeking—usually affirmance. And if the intervening PTO does expand its argument beyond the scope of the original decision, then its argument is simply barred from doing so by Chenery, and the court need not concern itself with a standing analysis.

Fourth, as a practical matter, even if the PTO had to demonstrate standing, the PTO has a statutory right to participate in the appeal as an amicus. The PTO could advance the same arguments as amicus as if it were intervenor, rendering this debate somewhat academic. And the Federal Circuit, if it were so inclined, could grant the PTO leave to file a brief longer than the standard amicus brief, or any additional briefing it might seek. This point does not affect the Article III standing analysis directly, but it speaks to any practical effect of denying the PTO its statutory right to participate as intervenor. If the Federal Circuit is confronted with the choice of having only one side argued, as opposed to having both sides argued, we would suggest most judges, as a practical matter, would prefer to have the competing arguments for consideration, instead of a docket of one-sided, limited, or partially argued cases. The standing issue aside, the patent system and the public good are best served by arguments fully vetted by the adversarial process.

As a final point, we acknowledge the distinct policy concerns created by frequent intervention on one side of the “v.” Getting beyond the standing issue—which we don’t see as much of a hurdle for PTO participation in PTAB appeals—more significant questions arise about if, when, and how often the PTO intervenes. Indeed, George Washington University Law School Professor Dmitry Karshtedt has persuasively called for further exploration of whether the PTO solicitor must or should defend the Board’s decision. Dmitry Karshtedt, Acceptance Instead of Denial: Pro-Applicant Positions at the PTO, 23 B.U. J. Sci. & Tech. L. 319 (2017). This issue is the third question raised sua sponte in Knowles Electronics LLC v. Matal, currently pending at the Federal Circuit. Professor Karshtedt concludes that the PTO solicitor may disagree with the Board where it is plainly inconsistent with the public good. Although we take no position here, we recommend his paper and agree that it’s a debate well-worth having.

We leave these debates for another day, simply noting that a rough internal count reveals: As of September 2016, out of 179 cases decided, the PTO had intervened 98 times (~54% of decided cases); by September 2017, that percentage had fallen dramatically, to 144 out of the 408 then-decided (~35%). Overall, the PTO has said it has intervened in fewer than 25% of all appeals, and that number continues to fall. There may be several reasons for the decline, such as fewer fundamental legal issues as the AIA matures, or a change in PTO policy after thinking its frequent intervention may have irked some judges. Regardless of the precise reasons for the decline and the other policy concerns raised in Knowles, the question of the PTO’s standing to intervene is a distinct legal question. And we think precedent strongly supports the PTO’s ability to intervene in most, if not all, appeals from the PTAB.

Stambler v. Mastercard: Petition to SCOTUS

Two questions presented on Leon Stambler’s petition for writ of certiorari:

1. Whether covered business method review, an adversarial process used by the Patent and Trademark Office to analyze the validity of existing patents, violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.

2. Whether the Federal Circuit’s issuance of Rule 36 judgments without opinions for the disposition of appeals from the Patent and Trademark Office violates 35 U.S.C. § 144’s requirement that the Federal Circuit “shall issue” its “mandate and opinion” for such appeals.

The petition explains:

The first question is substantially similar to that presented in Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, No. 16-712 (June 12, 2017), which has been argued and is awaiting decision by the Court. The second question is identical to that presented by the Petition for writ of certiorari in Celgard, LLC v. Matal (No. 16-1526) (question #2, petition pending).

The case relates to Stambler’s U.S. Patent No. 5,793,302 (authentication system and method). The patent has been asserted in dozens of cases and upheld in several court decisions prior to the PTAB finding it invalid.


Eligibility Analysis and its Underlying Facts: A Roadmap for Surviving Dismissal on the Pleadings

by Dennis Crouch

Aatrix Software, Inc. v. Green Shades Software, Inc., 2017-1452, 2018 WL 843288 (Fed. Cir. Feb. 14, 2018)

Following upon its February 8 decision in Berkheimer, the Federal Circuit has again sided with the Patentee on eligibility grounds – holding here that the lower court’s judgment on the pleadings failed to consider disputed issues of material fact.  Prior to this pair of cases, it was unclear whether eligibility analysis involved factual questions.  Although pair of cases indicate a precedential sea-change, both opinions were written by Judge Moore and joined by Judge Taranto (Berkheimer was also joined by Judge Stoll).  Here, Judge Reyna dissented, writing:

I respectfully disagree with the majority’s broad statements on the role of factual evidence in a § 101 inquiry. Our precedent is clear that the § 101 inquiry is a legal question. In a manner contrary to that standard, the majority opinion attempts to shoehorn a significant factual component into the Alice § 101 analysis.

Reyna in dissent.

The divide among the court is now quite clear — what is needed is an en banc consideration of the issues.  Failing that, we will continue to muddle and err.

Going back to the majority opinion, the court explained the setup:

  • Plaintiff filed complaint alleging patent infringement;
  • Defendant motioned for dismissal on the pleadings — asking the court to declare the asserted patent ineligible as a matter of law;
  • Plaintiff filed a motion to amend its complaint to add specific allegations of fact directed to step-two of the Alice/Mayo inquiry — attempting to setup a material factual dispute that could not be resolved on the pleadings;
  • District Court found the patent claims ineligible; refused to allow the amended complaint; according to the court the amendment would not have made any difference – would not have manufactured a factual dispute – since eligibility is a pure question of law.
  • On appeal here, the Federal Circuit has vacated the judgment — holding that the complaint raises factual disputes that must be resolved prior to ruling on the eligibility issue.

The majority writes here:

[The Federal Circuit has previously] held that patent eligibility can be determined at the Rule 12(b)(6) stage. This is true only when there are no factual allegations that, taken as true, prevent resolving the eligibility question as a matter of law.

. . .

The district court granted this Rule 12(b)(6) motion without claim construction. We have some doubt about the propriety of doing so
in this case, but need not reach that issue because it did err when it denied leave to amend without claim construction and in the face of factual allegations, spelled out in the proposed second amended complaint, that, if accepted as true, establish that the claimed combination contains inventive components and improves the workings of the computer.

Moore majority opinion.

Following the majority opinion, some plaintiffs will now look to the patentee’s proposed proposed amended complaint as one roadmap establishing a factual dispute sufficient for a patentee to overcome a motion on the pleadings.  In particular, the complaint alleges a novel data importation scheme that is database independent and that “eliminat[es] the need for hand typing in the values.”  Further, the complaint alleges that the result is “increased the efficiencies of computers processing tax forms” and “saved storage space” on the computers.

Although not proven, Judge Moore suggests that – if proven – these allegations would leave the asserted claims patent eligible since they are “directed to an improvement in the computer technology itself and not directed to generic components performing conventional activities.”  Judge Moore then goes on to explain that these allegations are factual allegations rather than conclusory legal allegations and must be given due process according to the rules of our legal system.  The majority opinion also claims the following:

Whether the claim elements or the claimed combination are well-understood, routine, conventional is a question of fact. And in this case, that question cannot be answered adversely to the patentee based on the sources properly considered on a motion to dismiss, such as the complaint, the patent, and materials subject to judicial notice.

This quote sets-up the potential en banc case: To what extent does eligibility involved factual disputes; to what extent should extrinsic evidence be available to prove those facts?  For patent litigators, these questions look strikingly similar to the decades old dispute over the proper approach to patent claim construction.  It is easy to see eligibility following in the same line of reasoning seen in Teva and Phillips that allows for full judicial but opens the door to potential (but often not required) factual findings regarding extrinsic evidence.

Last note here — The claims at issue are claims 1, 2, and 22 of U.S. Patent No. 7,171,615 (“’615 patent”) and claims 1, 13, and 17 of U.S. Patent No.
8,984,393.  These patents cover really simple tax prep forms that I expect the Supreme Court would eat for lunch.

Trump’s Budget Proposal for USPTO Flat for FY 2019

The Trump proposed budget for FY2019 appears to be essentially flat as compared with FY2018.  The proposed budget would permit the USPTO to spend up to $3.459 billion in FY 2019 (year beginning October 1, 2018). We are approaching the 1/2 way mark for FY 2018.  In the most recent PPAC meeting, PTO Chief Financial Officer Tony Scardino reported expected FY2018 spending of $3.444 billion.

Trump Budget (PTO on p. 199):




Reversing vs. Vacating PTAB Decisions

By Dennis Crouch

In re Hodges (Fed. Cir. 2018)

In a split opinion, the Federal Circuit has rejected the PTAB’s anticipation and obviousness decisions – finding that the Board erred in holding that the key prior art reference inherently disclosed the an “inlet seat” defined by a “valve body” of the claimed drain assembly.

Anticipation arises from analysis of the “four corners” of a prior art reference. That one document must “describe every element of the claimed invention, either expressly or inherently, such that a person of ordinary skill in the art could practice the invention without undue experimentation.” Spansion, Inc. v. Int’l Trade Comm’n, 629 F.3d 1331 (Fed. Cir. 2010).  Although “inherent description” offers some leeway, the doctrine only applies if the supposed inherent characteristic necessarily follows from the express teachings of the reference.  Right-off-the-bat, we can note a problem here with the Examiner’s statement that “it is at least ‘arguable’ that [the prior art reference] does not disclose “a valve body which defines an inlet seat.”

Beyond that, in walking through the prior art, the Federal Circuit found a major problem with the PTO analysis — basically that the prior art’s “valve body” was disconnected from the inlet-valve (that inherently contained an inlet seat).  Thus, according to the court, the valve could not “define” the inlet seat as required by the claim.

Figure 7 avove from the prior art shows the issue:  The portion marked in yellow defines the claimed valve assembly and the top red valve is the location of the required inlet seat.  The claim though requires that the valve assembly “define” the valve seat.  I’ll note here a major problem with the analysis – why not just define the “valve assembly” of the prior art as including the upper valve (as I’ve done with my redrawing of Figure 7 below)?

I mentioned above the split opinion. Both the majority (Judges O’Malley and Lourie) and the Dissent-in-part (Judge Wallach) agreed that the PTO had failed to show anticipation.  The difference came with the result – the majority reversed while the dissent would have taken the lesser action of vacating the PTAB ruling.

Here, the appellate panel’s problem with the PTAB is that it found an erroneous factual finding.  However, because the lower tribunal is ordinarily seen as the finder-of-fact, the result of this type of disagreement is usually to vacate the PTAB’s decision and have the lower tribunal review the evidence once again.  Here, the Majority justified its reversal with a conclusion that the PTAB conclusions were “plainly contrary to the only permissible factual finding that can be drawn from [the prior art] itself.”

Writing in dissent, Judge Wallach argues:

When an agency fails to make requisite factual findings or to explain its reasoning, “the proper course, except in rare circumstances, is to remand to the agency for additional investigation or explanation. The reviewing court is not generally empowered to conduct a de novo inquiry into the matter being reviewed and to reach its own conclusions based on such an inquiry.” Fla. Power & Light Co. v. Lorion, 470 U.S. 729, 744 (1985). By reversing the PTAB’s determination [of anticipation] the majority engages in the very de novo inquiry against which the Supreme Court has cautioned.


Patent Pendency Snapshot

The charts below provide a pendency snapshot for utility patents issued in the past month. Each chart provides two curves – one counting pendency from filing date (or 371 Date for Nat’l Stage) to issuance and the other counting pendency from the earliest priority filing date to issuance.  (Each dot represents a three-month period). Median pendency is now down to about 25 months from filing and only about 10% of these newly issued patents were pending for > 4 years.

Federal Circuit: Walker Process Claims do not Arise Under US Patent Law

By Dennis Crouch

Xitronix Corp. v. KLA-Tencor Corp (Fed. Cir. 2018)

Acting sua sponte, the Federal Circuit has transferred this appeal to the Fifth Circuit – holding that the Walker Process monopolization case does not arise under the U.S. Patent Laws as required by the appellate court’s jurisdiction statute 28 U.S.C. § 1295(a)(1). This decision reverses the court’s position from In re Ciprofloxacin Hydrochloride (Cipro) Antitrust Litigation, 544 F.3d 1323 (Fed. Cir. 2008) based upon the intervening Supreme Court decision of Gunn v. Minton, 568 U.S. 251 (2013). The court (Judge Moore) was also clearly perturbed by both parties’ failure to cite or discuss Gunn in their requested supplemental briefs.

Walker Process lawsuits get their name from the 1965 Supreme Court decision Walker Process Equipment, Inc. v. Food Machinery & Chemical Corp., 382 U.S. 172, 176–77 (1965). The case stands for the proposition that federal antitrust liability (Sherman Act) can stem from attempts to enforce a patent procured through fraud (inequitable conduct). Here, Xitronix allegation is that KLA-Tencor obtained United States Patent No. 8,817,260 by “intentional and willful misrepresentations and omissions” in a way that created “an artificial impediment to competition.” Complaint. The district court dismissed the case on summary judgment – holding that, “even assuming [he] misstated the state of the prior art,” the prosecuting attorney’s “remarks may fairly be viewed as attorney argument and not factual misrepresentations.” [XitronixSJ]

Pre Gunn: In its 2008 Cipro decision, the Federal Circuit explained that a Walker Process claim arose under U.S. patent law “because the determination of fraud before the PTO necessarily involves a substantial question of patent law.” In Nobelpharma, the Federal Circuit specifically held that the patent-specific issues lead the court to apply Federal Circuit law to Walker Process claims (rather than the default of regional circuit law). Nobelpharma AB v. Implant Innovations, Inc., 141 F.3d 1059 (Fed. Cir. 1998).

Impact of Gunn: In 2013, the Supreme Court altered course in Gunn – holding that that the Federal Circuit’s approach to arising-under jurisdiction had been too loose. In that case, the Court held that a legal malpractice case did not arise under U.S. patent law even though the claim necessarily required application of U.S. patent law. The court explained that, even though necessary, “the federal issue in this case is not substantial.” In Gunn and the prior decision Grable & Sons, the Supreme Court was clear that our system of Federalism requires a “balance of federal and state judicial responsibilities.”

For Xitronix, the state-federal balance is not an issue as it was in Gunn and Grable but rather a question of which Federal Appellate court has jurisdiction. However, the Federal Circuit followed the same approach that the Supreme Court did in Gunn – finding the one-off outcome here unlikely to impact or undermine the court’s “uniform body of patent law.”

Holding: Federal Circuit does not Have Jurisdiction. Case Transferred to 5th Circuit

Federal Circuit: “Injected Molded” limitation imparts structure (although we can’t define what structure)

By Dennis Crouch

In re Nordt Development Co., LLC. (Fed. Cir. 2018)

During the course of prosecution of its flexible knee brace patent, Nordt amended the claims to include a limitation that the struts and other components were “injection molded.” The idea here was that the prior art primarily used fabric or elastic bands and so the injection molding limitation would allow the applicant to slip through.

Claim 1 at issue here:

A support for an area of a body that includes a hinge joint, comprising:

(a) a hinge mechanism comprising an injection molded strut component and injection molded first and second arm components;

(b) an elastically stretchable framework injection molded about the strut and arm components of the hinge mechanism, the framework being configured to extend across the hinge joint of the area of the body, and the framework defining a flexible, elastically stretchable web of elastomeric interconnecting members; …

The examiner though gave essentially no weight to the new limitation. According to the examiner, the claims are apparatus claims and thus the included method of manufacturing is immaterial.

Injection molding is a method of manufacturing an apparatus and claim 1 is an apparatus claim. In order to anticipate the injection molded feature, the prior art must disclose the finished product and not the method of making the product. Therefore, although [the prior art] does not disclose the sleeve is injection molded, [it] does disclose the sleeve is a flexible, elastically stretchable web of elastomeric interconnecting members [as required by the claims]

On ex parte appeal to the PTAB, the Board affirmed the rejection and further implied that, although the “injection molded” limitation could potentially be limiting, Nordt had failed to “persuasively explain structural limitation is imparted by this manufacturing practice.” Thus, although the prior art knee brace was not injection molded, the Board found it to anticipate the resulting product since it included the same structural elements. The approach offered by the PTO classifies the claim as a product-by-process claim. For those claims, the Federal Circuit has ruled that patentability “does not depend upon its [claimed] method of production.” In re Thorpe, 777 F.2d 695 (Fed. Cir. 1985). Rather, the claim will be unpatentable if the resulting product is found in the prior art “even though the prior product was made by a different process.” Id.

On appeal here, the Federal Circuit has vacated that finding – holding that the “injection molded” limitation is a structural limitation and thus should be seen as limiting. In its holding, the court followed the precedent of In re Garnero, 412 F.2d 276 (CCPA 1969) (holding that “interbonded one to another by interfusion” connotes structure to a claimed composite and should therefore be considered in the determination of patentability) as well as Hazani v. U.S. Int’l Trade Comm’n, 126 F.3d 1473, 1479 (Fed. Cir. 1997) (“chemically engraved” was a structural limitation); Vanguard Prods. Corp. v. Parker Hannifin Corp., 234 F.3d 1370 (Fed. Cir. 2000) (term “integral” was a structural requirement even though described as a manufacturing process in the specification); 3M Innovative Props. Co., 350 F.3d 1371 (finding “superimposed” to describe a structural relationship and not a process); SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312 (Fed. Cir. 2006) (Newman, J., dissenting) (listing “a molded plastic” as an example of a process limitation that connotes structure).  See MPEP 2113.

Thus, the general precedent of Thorpe is good law: Board should typically not accord patentable weight to a process limitation in a product-by-process claim. However, patentable weight should be given to the limitation when it connotes a required structure. Here, the Federal Circuit found that this case fits the second category:

[W]e find that “injection molded” connotes structure. Although the application describes “injection molded” as a process of manufacture, neither the Board nor the examiner dispute Nordt’s assertion that “there are clear structural differences” between a knee brace made with fabric components and a knee brace made with injection-molded components.

Here, the court concluded that it surely connotes structure, but was unable to particularly define what that structure means. Rather, on remand the Board will need to determine what particular structures are being claimed by the “injection molded” limitation.

= = = = =

Note here that the court did not discuss how broadest reasonable interpretation impacts the decision here. A different panel might have held that the “best” interpretation of the claims is that the limitation provides structure, but a reasonable interpretation is that it merely indicates the process of manufacturing.

= = = = =

Could the applicant have drawn the same line by claiming that the strut is “configured to exhibit the properties of an injection molded material” rather than claiming an “injection molded” strut?

Is it Patent Eligible?


1. A method for implementing a blackjack game in a physical casino, the method comprising:

providing the physical casino with a physical gaming table with a felt layout on top of the gaming table, the felt layout including a plurality of betting circles imprinted into the felt layout;

providing one or more physical decks of cards;

receiving a wager from the player in the form of one or more physical chips in a player’s betting circle of the plurality of betting circles;

dealing, using the one or more physical decks of cards, cards for a player’s hand and cards for a dealer’s hand;

enabling the player to play out the player’s hand;

resolving the dealer’s hand, comprising, upon meeting a bum condition of a number of the cards for the dealer’s hand exceeding two and a point total of the cards for the dealer’s hand exceeding a predetermined amount and equaling a preset total,

burning a card in the cards for the dealer’s hand and dealing an additional card for the dealer’s hand; and

resolving the wager according to predetermined blackjack rules.

PTAB says not eligible. Ex Parte Hall, APPEAL 2017-002594, 2018 WL 460997 (PTAB Jan. 12, 2018). The Board’s two step analysis is as follows: (a) the claims are directed to the abstract idea of “rules for conducting a wagering game;” (b) although the claims is tied to physicality, it does not provide “something significantly more than a claim on the abstract idea itself.”

PatentlyO Bits and Bytes by Anthony McCain

Get a Job doing Patent Law                  

Welcome new USPTO Director Andrei Iancu

Andrei Iancu has now been sworn-in as the new USPTO director.  He begins today with his mission to ensure that the American IP system remains “the crown jewel that provides both the incentives and the protections necessary to enable that innovation and resulting growth.”

For the past nine months, the Agency has been led to Joe Matal who was given the difficult title of “person performing the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.”  Congratulations to Matal for his successes in shepherding the agency during this time.

I wrote earlier this week that the Chinese patent system is at a crossroads as it reaches middle-age.  I believe that the US patent system is also at a crossroads – ready to be refreshed and renewed, but tentative about what that will mean for established interests.  I look forward to hearing Iancu’s vision for the future and his ideas for implementation.


Patent Eligibility: Underlying Questions of Fact

by Dennis Crouch

Important statement from the Federal Circuit today on the factual underpinnings of the eligibility analysis:

While patent eligibility is ultimately a question of law, the district court erred in concluding there are no underlying factual questions to the § 101 inquiry. Whether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination.

Berkheimer v. HP, Inc. (Fed. Cir. 2018) [Berkheimer].  The decision penned by Judge Moore partially vacates the lower court’s summary judgment of ineligibility.  In particular, the court affirmed ineligibility of claims 1-3 and 9 of Steven Berkheimer’s U.S. Patent No. 7,447,713, but found that dependent claims 4-7 were not proven ineligible.

The short decision by Judge Moore and joined by Judges Taranto and Stoll is in substantial tension with prior treatment of eligibility analysis that has generally permitted resolution of the issue on the pleadings as a pure question of law.  The decision’s unsatisfying distinguishing point is that the court’s prior practice “demonstrate [that] not every Section 101 determination contains genuine diputes over the underlying facts material to the Section 101 inquiry.”  The court needs an en banc powwow to clarify the issues here.

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Claims at issue (1-3 and 9 are ineligible; Underlying facts required to determine whether 4-7 are ineligible).

1. A method of archiving an item in a computer processing system comprising:

presenting the item to a parser;

parsing the item into a plurality of multi-part object structures wherein portions of the structures have searchable information tags associated therewith;

evaluating the object structures in accordance with object structures previously stored in an archive;

presenting an evaluated object structure for manual reconciliation at least where there is a predetermined variance between the object and at least one of a predetermined standard and a user defined rule.

2. The method as in claim 1 wherein the respective structure can be manually edited after being presented for reconciliation.

3. The method as in claim 1 which includes, before the parsing step, converting an input item to a standardized format for input to the parser.

4. The method as in claim 1 which includes storing a reconciled object structure in the archive without substantial redundancy.

5. The method as in claim 4 which includes selectively editing an object structure, linked to other structures to thereby effect a one-to-many change in a plurality of archived items.

6. The method as in clam 5 which includes compiling an item to be output from the archive, wherein at least one object-type structure of the item has been edited during the one-to-many change and wherein the compiled item includes a plurality of linked object-type structures converted into a predetermined output file formal.

7. The method as in claim 6 which includes compiling a plurality of items wherein the at least one object-type structure had been linked in the archive to members of the plurality.

9. The method as in claim 1 which includes forming object oriented data structures from the parsed items wherein the data structures include at least some of item properties, item property values, element properties and element property values.

Patent Term Adjustments at PTO and in Court

by Dennis Crouch

A patent’s legally effective term is calculated based upon its filing date.  Delays in issuance would seemingly lead to a reduction of patent term.  However, through a series of legislative initiatives, Congress created a system of Patent Term Adjustment to compensate patentees for delays in patent issuance.  Most PTA is added based upon PTO failure to timely issue office actions (A Delays) or to issue the patent within three years of the filing date (B Delays).  However, patents with the longest PTA are generally those associated with interference proceedings, secrecy orders or successful appeals (C Delays).

Today, most patents are awarded some patent term adjustment, but the numbers continue to drop as shown by the two charts below. The first chart shows the percentage of US utility patents issued with at least some PTA being awarded. The second chart shows the average PTA award of those patents with PTA.  In the second chart the discrete jump followed Wyeth v. Kappos (Fed. Cir. Jan. 7, 2010). In that case, the Federal Circuit held that the PTO had been misreading the statute and thus undercounting PTA.

In Actelion Pharm., Ltd. v. Matal (Fed. Cir. Feb. 6, 2018), the Federal circuit sided with the PTO in a patent term adjustment challenge holding that the PTA calculations beginning with a national-stage application were not triggered by the patentee’s statement that it “earnestly solicits early examination and allowance of these claims.”  The problem was that “casual” request was buried within the remarks while the applicant failed to check the box on the form to expressly request.

In a separate recently decided PTA case, a district court has agreed with Ariad that its original RCE filing should only cut-off PTA accumulation since the PTO negligently failed to process the filing (instead sending a notice of abandonment) and then took three months to withdraw the abandonment.  ARIAD Pharm., Inc. v. Matal, 1:17-CV-733, 2018 WL 339141, at *1 (E.D. Va. Jan. 5, 2018)