Appealing a BPAI Rejection: Can the Applicant Present New Arguments and New Evidence to the District Court?

Hyatt v. Kappos (Fed. Cir. 2010)

The Federal Circuit has ordered an en banc rehearing of its August 14 decision. The appeal focuses on evidentiary and procedural limits of an appeal of a BPAI decisions to a District Court under 35 USC 145. The Court framed the en banc issues as follows:

(a) Are there any limitations on the admissibility of evidence in section 145 proceedings? In particular—

(i) Does the Administrative Procedure Act require review on the agency record in proceedings pursuant to section 145?
(ii) Does section 145 provide for a de novo proceeding in the district court?
(iii) If section 145 does not provide for a de novo proceeding in the district court, what limitations exist on the presentation of new evidence before the district court?

(b) Did the district court properly exclude the Hyatt declaration?

Background: Hyatt's district court action was originally filed in 2003 as Hyatt v. Rogan after the BPAI sustained written description and enablement rejections for seventy-nine of Hyatt's claims. The examiner had issued 45 separate rejections of Hyatt's claims based on the doctrines of inadequate "written description, lack of enablement, double patenting, anticipation, and obviousness." Complicating the case is the fact that the application's claimed priority date is 1975.

The issues in this appeal case arose when Hyatt filed a civil action in DC District Court to challenge the BPAI decision. In the civil action, Hyatt submitted a new declaration offering additional evidence of enablement and written description. However, the district court excluded that inventor-declaration from evidence based on Hyatt's "negligence" in failing to previously submit the information to the PTO.

Writing for the majority in the original panel opinion, Judge Michel affirmed the exclusion of evidence – holding that the district court may properly exclude evidence that Hyatt should have produced to the PTO. Judge Moore penned a compelling dissent in support of the patent applicant's right to a full civil action including the right to submit additional evidence when challenging a PTO decision.

Briefing: Hyatt's en banc brief will be due around March 31 and the USPTO's response due 28-days later. Briefs of amici curiae may be filed without leave of the court, but must otherwise comply with FRAP 29 and Fed Cir R 29.

* * * * *

35 U.S.C. 145 Civil action to obtain patent.

An applicant dissatisfied with the decision of the Board of Patent Appeals and Interferences in an appeal under section 134(a) of this title may, unless appeal has been taken to the United States Court of Appeals for the Federal Circuit, have remedy by civil action against the Director in the United States District Court for the District of Columbia if commenced within such time after such decision, not less than sixty days, as the Director appoints. The court may adjudge that such applicant is entitled to receive a patent for his invention, as specified in any of his claims involved in the decision of the Board of Patent Appeals and Interferences, as the facts in the case may appear, and such adjudication shall authorize the Director to issue such patent on compliance with the requirements of law. All the expenses of the proceedings shall be paid by the applicant.

Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

109 thoughts on “Appealing a BPAI Rejection: Can the Applicant Present New Arguments and New Evidence to the District Court?

  1. ” I make no apology. ”

    Really? Wow, you make a mistake and do not feel the need to apologize. Shocked I am.

    NOT.

  2. “She said she meant Not 6, not 6, 6. Or should I say “he who can’t read a comment properly”?”

    She posted her makeup comment while I was drafting/posting my comment, sometimes I draft and delay/forget to post till later. I have lots of windows open and comments don’t always take the first time. I make no apology. Her spelling out her own mistake is acknowledged. Great job Sarah. Amazing.

    Edit: Kind of like this post didn’t take the first time I pushed post.

  3. Double D’Oh! for you 6:

    What line, specifically did I cross sarah?

    Or should I say she who
    can’t write a comment
    properly?

    Posted by: 6 | Feb 18, 2010 at 02:02 PM

    She said she meant Not 6, not 6, 6. Or should I say “he who can’t read a comment properly”?

    Posted by: Thomas Hobbes was here | Feb 18, 2010 at 02:07 PM

    “Or should I say she who
    can’t write a comment
    properly?”

    Or should we say – he who cannot read a comment properly – 6 you must have missed sarah’s correction at 11:23 AM, a mere forty mintues before you posted.

    D’Oh!

    Posted by: Noise above Law | Feb 18, 2010 at 02:08 PM

  4. “probably not” – 6?

    C’mon man, when has sarah ever picked on you?

    Apologize already to the lady – don’t be a cad.

  5. I have a Constitutional Right to levy and collect taxes. $1000 per comment. Pay up.

    You mean Constitutional (R)ight.

  6. Sorry,

    But my third grader has passed the Mooney level. You are too generous with ascribing that level to Mooney.

  7. “Please go back to high school.”

    Basically, Mooney is urging you to come down to his level. Maybe you can be on the debate team together…

  8. “6 – you have joined the fray and have been found lacking. It has been demonstrated that while being schooled, you cannot (or will not) learn. A Constitutional discussion is simply way over your head.

    Apologize to sarah and go back and hide under your shield of persistent ignorance. The adults are trying to have a conversation.”

    LOLOLOLOLOLOLOLOLOLOLOLOL

    No.

  9. “She did not count upon someone with such a large mind as my own joining the fray.”

    6 – you have joined the fray and have been found lacking. It has been demonstrated that while being schooled, you cannot (or will not) learn. A Constitutional discussion is simply way over your head.

    Apologize to sarah and go back and hide under your shield of persistent ignorance. The adults are trying to have a conversation.

  10. That Obama thread was quite hilarious. I maintain that those obsessed with the distinction between (R)ights and (r)ights are (R)etards. I also maintain that big minds should consider running a background check on their compatriots. One never can be too sure whether they’re palling around with socialists.

  11. “Not until you acknowledge the essential distinction between (r)ights and (R)ights.”

    You spelled one with an (r) and the other with (R). There, happy? Now perhaps that can be the last post regarding that nonsense.

    Your good friend NAL made a crucial miscalculation when she made those comments. She did not count upon someone with such a large mind as my own joining the fray.

  12. …that was nearly the stupdest thing ever written here, excepting only the posts on which you based it.

    Mr. 6, your response was only to be expected. I am not deterred, not least because in an eerily similar scenario, my good friend (N)oise was kind enough to reassure me as follows:

    Do not distress yourself with the small minds that so gleefully attack. Remind yourself that although big minds and big thoughts make big targets, they are worth having and expressing nonetheless.

    If the small minds believe that their tactics will work, they will redouble those tactics. If they are upended and made to look like fools, they will still redouble their tactics – but will look twice as foolish. It is an unfortunate, but not unanticipated aspect of the forum we are engaged in.

  13. Now if you could stop talking about supposed (R)ights or any other such nonsense supposedly arising from Article 8 we’d all appreciate it.

    Not until you acknowledge the essential distinction between (r)ights and (R)ights.

  14. Lol, well that’s embarrassing. Thomas stuck a post in before I got that last post off addressing my own post.

    Yes, it is like the time travel paradox. Now if you could stop talking about supposed (R)ights or any other such nonsense supposedly arising from Article 8 we’d all appreciate it.

  15. Thomas (any relation to Michael R?) that was nearly the stupdest thing ever written here, excepting only the posts on which you based it.

  16. Such a trial should never exist so the issue should never come up…

    Wow, it’s like the time travel paradox…

  17. I was just thinking, perhaps you shouldn’t even be able to appeal to the courts if you’re presenting new evidence because technically the office never rendered a decision on the case as it then stands in its modified form.

    Perhaps, since one shouldn’t even be able to appeal to the court in such a case then that is why things are so confusing when we try to think about whether or not the trial should then be de novo and whether new evidence should be allowed into the trial. Such a trial should never exist so the issue should never come up…

    That is to say that technically if you present new evidence you’re not taking issue with the board’s decision, you’re saying that you’d like a new decision made on a different set of facts. I.e. you’re requesting reconsideration ala RCE.

  18. The Constitutional Right that was granted by Congress under 35 USC 145? Please go back to high school.

    Ah, my dear Mr. Mooney, I’m afraid you’re not discussing this issue at the proper level of abstraction. As my good friend Noise was kind enough to point out to me, just a few short weeks ago, “The proper level is NOT in the minutia of details of 35 USC. . . . [Y]ou need to focus on (L)aw, not (l)aw.”

    I humbly admit that I am far outclassed in any discussion of Constitutional (L)aw by several of the more prolific posters in this forum (that has come to be widely known as the Trainwreck). I suggest that you have a thing or two to learn – you might start with a careful study of the comments at the “Obama: There’s Nothing Wrong …” thread. (link to patentlyo.com )

    In that discussion, ably facilitated by none other than the aforementioned Noise, the dimensions of the Constitutional (R)ight to a patent were emphatically and clearly defined.

    I can’t even aspire to an ability to properly summarize the resolution that was obtained at that thread. Thus, I can only offer the words of my esteemed compatriot, AI. Read these words, reflect carefully upon them, and then deny the Constitutional dimensions of the patent (R)ight. I dare you!

    AI: Are WE THE PEOPLE, in a position of vassalage to the United States Congress? Or is the United States Congress the servants of the American people? I hold the latter belief.

    Therefore WE THE PEOPLE have the power to enforce Article 8 of the Constitution by instructing our representatives to enact appropriate legislation for Inventors to be granted patents.

    It is in every sense, our Constitutional right.

    Now, I also acknowledge that WE THE PEOPLE, can instruct our representatives to enact legislation that weakens the law to the point that getting a patent would be virtually impossible or up on issue, worthless.

    That very act is occurring now by anti-patent forces that want to eliminate software and business method patents without going through the trouble of removing “useful arts” from the constitution and “process” from the 1952 patent Act.

    The same weakening could be done for any of our rights, such as voting rights, civil rights, abortion rights etc.

    But that would not change the existence of our rights, only our freedom to exercise our rights. And then of course WE THE PEOPLE can exercise the only right that can’t be denied by legislation, the right of protest and revolt.

    As it stands now WE THE PEOPLE have told Congress what to do in Article 8 section 1 of the Constitution, And until WE THE PEOPLE say otherwise Congress is duty bond to carry out our orders and the Constitutional right to a patent shall so remain.

  19. I was just thinking, perhaps you shouldn’t even be able to appeal to the courts if you’re presenting new evidence because technically the office never rendered a decision on the case as it then stands in its modified form.

    Perhaps, since one shouldn’t even be able to appeal to the court in such a case then that is why things are so confusing when we try to think about whether or not the trial should then be de novo and whether new evidence should be allowed into the trial. Such a trial should never exist so the issue should never come up…

  20. She meant Constitutional Right, of course.

    The Constitutional Right that was granted by Congress under 35 USC 145? Please go back to high school.

  21. Judge Moore said: “The majority takes away this patent applicant’s fundamental right to a “civil action to obtain [a] patent” as granted by Congress in 35 U.S.C. § 145.”

    She meant Constitutional Right, of course. Patents are mentioned in the Constitution, you know. But “fundamental right” is pretty good. That’s right up there with the right to free speech, the right to bear arms …

  22. IANAE,

    “”Mr. Hyatt … acknowledges that deferential review (substantial evidence) is given to the Board fact findings absent new evidence in § 145 proceedings and also that evidence pertaining to new issues cannot be introduced.””

    Stating Mr. Hyatt’s position hardly reflects Judge Moore’s position.

    See the following link for some of her quotes lifted by Professor Crouch:

    link to patentlyo.com

  23. *******”Mr. Hyatt … acknowledges that deferential review (substantial evidence) is given to the Board fact findings absent new evidence in § 145 proceedings and also that evidence pertaining to new issues cannot be introduced.”

    So, yes, even in view of Moore’s dissent, your discussion of a brand new trial as if the issue had never been tried before is way off base.*******

    So, basically, if there is new evidence for existing issues, no deference is given to the BPAI’s fact finding decision? At that point point is it exactly like a whole new trial for those issue? If so, how hard is it to throw in another Declaration, and get the de novo review?

  24. A de novo civil trial — especially in the view of Judge Moore’s dissent — is definitely a relevant issue.

    From the second page of the dissent:

    “Mr. Hyatt … acknowledges that deferential review (substantial evidence) is given to the Board fact findings absent new evidence in § 145 proceedings and also that evidence pertaining to new issues cannot be introduced.”

    So, yes, even in view of Moore’s dissent, your discussion of a brand new trial as if the issue had never been tried before is way off base.

  25. Just Visiting,

    “Much of the discussion here about a completely new trial is way off base.”

    The issue is not way off base. Look at a couple of the questions presented by the Fed Cir for en banc consideration:

    (a) Are there any limitations on the admissibility of evidence in section 145 proceedings?

    (ii) Does section 145 provide for a de novo proceeding in the district court?

    A de novo civil trial — especially in the view of Judge Moore’s dissent — is definitely a relevant issue. The case law — as it stands now — may not stand or it may be clarified as to what involves a “civil trial” and how it is distinguished from an “appeal.”

  26. not what you think,

    “So is the file wrapper inadmissible in a 145 civil action?”

    In my opinion, the documents in the file wrapper may be authenticated (e.g., judicial notice taken) and introduced into evidence; however, the FRE applies, so if a document is not admissible or objectionable under the FRE, then the FRE should govern.

  27. new evidence on old issues.

    New issues cannot be introduced.

    Which category, evidence or issue, does the argument and evidence fall to?

    kinda obvious.

  28. “It is irrelevant what went on before.”

    So is the file wrapper inadmissible in a 145 civil action?

    I’m asking.

  29. The FC’s case law is that civil actions are only de novo with respect to the review of new evidence on old issues. New issues cannot be introduced. For points on which no new evidence is introduced, the DCDC review is a deferential review on the record (except for matters of law), not much different than that done by the FC.

    Much of the discussion here about a completely new trial is way off base.

  30. IANAE,

    “Is the PTO allowed to make the same arguments the Board relied on in its decision? Is it likely to? Is it likely to make entirely new arguments that were not made by the Board?”

    The PTO can raise the same argument or make a new argument. It doesn’t matter. Since it prevailed before, it probably would stick with what won and not try to make a new argument.

    “It doesn’t mean “as if the basis for the first instance decision never existed”. It only means the judge doesn’t assume the Board was right.”

    Sure it does in theory, especially if the civil trial is a jury trial. Do you think the jury is going to hear what went on before? It shouldn’t, and I doubt it. It is irrelevant what went on before. Would the same arguments be made? Probably, but in a civil trial, it is before a neutral trier of fact and not a person who performs quasi-judicial functions.

  31. Otherwise, under a trial de novo under § 145, a new trial conducted as if there had been no prosecution of the application in the first instance.

    Is the PTO allowed to make the same arguments the Board relied on in its decision? Is it likely to? Is it likely to make entirely new arguments that were not made by the Board?

    Now, consider what it really means to conduct a new trial “as if there had been no prosecution of the application in the first instance”. It doesn’t mean “as if the basis for the first instance decision never existed”. It only means the judge doesn’t assume the Board was right.

  32. “The Board’s opinion is a significant part of the 145 proceeding, even if it is given no deference.”

    In a de novo proceeding? I don’t think so. This isn’t an appeal where the Board’s opinion with regard to facts is given the “substantial evidence” standard.

    “If you file no evidence, chances are the Board’s opinion will carry the day.”

    If you file no evidence, you lose. Period.

    As for the rest of your statements, they seem to be predicated on the belief that a civil trial is an appeal. It is not. If you want an appeal under which the Board’s decision is reviewed, go the § 141 route.

    Otherwise, under a trial de novo under § 145, a new trial conducted as if there had been no prosecution of the application in the first instance.

  33. To me, it means no deference should be given to the prior record.

    I’ll give you that, but it doesn’t mean anything contained in the prior record is automatically inadmissible.

    The Board’s opinion is a significant part of the 145 proceeding, even if it is given no deference. If you file no evidence, chances are the Board’s opinion will carry the day. If you do file evidence, you only file evidence related to the Board’s stated grounds of invalidity. The relevant facts stated in the BPAI decision will more than likely be reiterated in the PTO’s pleadings before the DC. Your own pleadings will still have to be more persuasive than the BPAI’s decision, one way or another.

    The opinions of the ALJs are the entire reason the Section 145 proceeding exists in the first place. So you’ll forgive me for not considering “inadmissible” as an appropriate synonym for “not entitled to deference”.

  34. IANAE,

    Here’s the legal definition of trial de novo:

    “A new trial on the entire case — that is, onb both questions of fact and issues of law — conducted as if there had been no trial in the first instance.”

    As applied to the PTO, a new trial conducted as if there had been no prosecution of teh application in the first instance.

  35. IANAE,

    “That’s not what “de novo” means. If that’s what it meant, your opinion would not be admissible either.”

    What do you think de novo means? To me, it means no deference should be given to the prior record.

  36. Haven’t we ventured a bit astray from a discussion of the essential distinction between a (r)ight and a (R)ight?

    Or am I on the wrong thread?

  37. the opinion of the ALJs on the BPAI should not be admissible

    That’s not what “de novo” means. If that’s what it meant, your opinion would not be admissible either.

  38. Jules,

    Nice find.

    The paragraph in Lange reads as follows:

    “Assuming arguendo permissibility of such requests, the Court finds such to be irrelevant in a proceeding under § 145. Specifically, and further, it suffices to say that any inquiry in the nature of a challenge to the scientific and professional qualifications of the Examiners-in-Chief cannot be entertained, since a fortiori they are “persons of competent legal knowledge and scientific ability” (35 U.S.C. § 7), who have been “ appointed by the President, by and with the advice and consent of the Senate,” (35 U.S.C. § 3) [emphasis supplied], and perform quasi-judicial functions, as do all other Examiners.”

    That § 7 of the statute no longer exists; the present § 7 addresses the library. I searched the current patent laws with the “scientific ability” and “competent” as search terms, at the only relevant hit was in § 6 which applies to ALJs.

    Since a § 145 trial, in my opinion, should be de novo, the opinion of the ALJs on the BPAI should not be admissible. Moreover, the examiner may testify under the current FRCP and FRE.

  39. not what you think,

    “BTW, I understand that, but in reality, do you think a DCDC J is going to actually give the opinion of the examiner, and 3 APJ’s, no deference?”

    If it is a jury trial, there should be no issue of deference mentioned.

    In a bench trial, I’m sure the judge might silently ponder their reasoning without a peep made in the record.

  40. “That’s a good one. Now imagine the buffoon lawyer trying to convince a judge that the examiner’s CV is relevant to whether his client’s patent claim is obvious.”

    That’s also funny. Don’t get me wrong, there are some cases that are deftly prosecuted and litigated with class, the resulting case law sound. But wow do I see a many idi0tic courses of action. That’s just the natural way, I guess.

    I got into this field because of my qualifications. But I used to rely on intuition a lot. This work can benefit from intuition, but largely it is very unintuitive.

  41. “In a de novo trial, no deference is due the four.”

    BTW, I understand that, but in reality, do you think a DCDC J is going to actually give the opinion of the examiner, and 3 APJ’s, no deference?

  42. The reason I’m loling is because I can not image some buffoon examiner on the stand. It’s too ludicrous to imagine.

    That’s a good one. Now imagine the buffoon lawyer trying to convince a judge that the examiner’s CV is relevant to whether his client’s patent claim is obvious.

  43. “I don’t think we have much more to say on this subject, do we?”

    No. We can agree to disagree.

    I hope you get the chance to participate in a 145 civil action and test your approach. I’m not sure it’s been done, and it would be an interesting set of facts and an interesting case.

    Good luck.

  44. WCG, you’re making me lol over here.

    Check MPEP 1701.01. Particularly there’s a citation to Lange v. Commissioner, 352 F. Supp. 166, 176 USPQ 162 (D.D.C. 1972) (technical qualifications of examiners-in-chief not relevant in 35 U.S.C. 145 action).

    The reason I’m loling is because I can not image some buffoon examiner on the stand. It’s too ludicrous to imagine.

  45. The examiner’s credibility is not at issue, even in a 145 civil action, the credibility of the reasoning provided by the examiner is at issue. You don’t need to be able to cross examine the examiner, or challenge the examiner’s CV, to challenge the credibility of the reasoning the examiner relied on.

    Put another way, if you get the same rejection in two different (similar) applications from two different examiners, one of whom has a really impressive CV and the other not so much, do you think the results in both cases should be different?

    What if the entire Board panel had really impressive CVs? Now you have four “experts”, three credible, who think the claim is obvious.

  46. not what you think,

    “But I’m having a hard time believing that if the reasoning provided by the examiner is approved of by 3 APJ’s that you’re going to get a different outcome by putting the examiner on the witness stand in front of a DCDC J[.]”

    In a de novo trial, no deference is due the four.

    “And mind you, you could not ask the examiner, “Why did you modify and/or combine the reference(s)?” becuase that’s irrelevant.”

    I disagree. It would be relevant testimony if my inventor disagrees and he wants a patent.

    I don’t think we have much more to say on this subject, do we?

  47. “Ultimately, it boils down to an issue credibility.”

    I don’t agree. The examiner’s credibility is not relevant. If the prior art reference, or references when combined, show every feature of your claim, and the examiner has provided a reason that one of ordinary skill in the art would have modified and/or combined the references, AND THAT REASON IS CREDIBLE, you’re cooked.

    Clearly, the reasoning has to be credible, i.e. has to have some basis in the prior art reference(s) being applied or in the knowledge generally available to one of ordinary skill in the art.

    If you can establish that the reasoning provided by the examiner is not credible, you may win. But I’m having a hard time believing that if the reasoning provided by the examiner is approved of by 3 APJ’s that you’re going to get a different outcome by putting the examiner on the witness stand in front of a DCDC J and asking the examiner, “Why would one of ordinary skill in the art modify and/or combine the reference(s)?” And mind you, you could not ask the examiner, “Why did you modify and/or combine the reference(s)?” becuase that’s irrelevant.

    The examiner’s credibility is not at issue, even in a 145 civil action, the credibility of the reasoning provided by the examiner is at issue. You don’t need to be able to cross examine the examiner, or challenge the examiner’s CV, to challenge the credibility of the reasoning the examiner relied on.

  48. nwyt Are you saying that there are cases where the level of skill is determinative/dispositive?

    I’m saying that in nearly every Office Action I get, the level of skill in the art is addressed, often with specificity as to the specific techniques that were within the skill level (which is high).

    If I need to challenge an obvious rejection, challenging the level of skill in the art is the last resort. That is why the issue of the skill level per se is rarely the sole issue on appeal. But the level of skill is nearly always addressed by the Examiner, and nearly always correctly, in my experience.

    The inventor was a Nobel prize winning scientist. The rejection was a combination of two patents, both of which he was the sole inventor. He submitted an affidavit basically stating while the combination may have been obvious to him, it would have been beyond the level of one of ordinary skill.

    That sort of self-serving declaration is pretty much worthless, in my opinion.

  49. IANAE,

    “Why can’t the examiner get your CV and cross-examine you on the basis of your conclusion that your client is entitled to a patent?”

    The examiner most certainly can in a civil trial.

    “Stop being a lawyer and start representing your client.”

    Lawyers represent their clients in a § 145 civil trial.

  50. not what you think,

    “I don’t understand.”

    Ultimately, it boils down to an issue credibility. Unlike the favorable presumption in an infringement action, I see no reason why the PTO (or examiner) deserves a favorable presumption in a civil trial under § 145. I agree with most of the statements you’ve made, but a civil trial is a different beast (neither prosecution nor appeal). The rules and laws of which you speak should not apply.

  51. Also, if you’re going to challenge the examiner’s conclusions, why can’t you examine the basis which forms his/her conclusions which includes information typically found on a CV?

    Why can’t the examiner get your CV and cross-examine you on the basis of your conclusion that your client is entitled to a patent?

    I’ve said it before and I’ll say it again. If your claim is actually obvious (or not), it doesn’t matter whether the examiner thinks so or why he thinks so. It doesn’t matter whether you think so. The art is the art. The claim and only the claim is on trial. Your role is to defend the claim against the art.

    Stop being a lawyer and start representing your client.

  52. Malcolm,

    Are you saying that there are cases where the level of skill is determinative/dispositive?

    The only case I’ve heard of was being handled by a friend. The inventor was a Nobel prize winning scientist. The rejection was a combination of two patents, both of which he was the sole inventor. He submitted an affidavit basically stating while the combination may have been obvious to him, it would have been beyond the level of one of ordinary skill.

    I didn’t ever find out what the outcome of that case was.

  53. “I think this is correct. You can certainly challenge the Examiner’s conclusions regarding the level of skill of the ordinary artisan. But the Examiner’s level of skill in that art is not relevant to the obviousness of a claim.”

    This might be so for an infringement action, but I know of no § 145 action which holds this. Also, if you’re going to challenge the examiner’s conclusions, why can’t you examine the basis which forms his/her conclusions which includes information typically found on a CV?

    Why should the Federal Rules of Civil Procedure and Federal Rules of Evidence be limited in a “civil trial” in which the PTO examiner might have to testify? In my view, the PTO examiner in a civil trial should be treated just like any other expert witness because this is a “civil trial” and not an appeal.

    BTW…if you haven’t noticed it, Judge Moore is 100% correct in her dissent.

  54. “That’s surprising because the issue arises routinely in chem/bio practice.”

    I’m not in chem/bio.

    “What is wrong with the court hearing from the examiner the basis for his opinion (other than a few conclusory lines in an OA)?”

    Because the Nine in Black have stated, unequivocally, that the determination of obviousness requires the resolution of 4 factual inquiries, not 5, not 6, or any other number.

    Do you think the Nine, or the Fed. Cir., would have a problem with a USDC J considering a 5th, or 6th, or whatever, factual inquiry?

    The basis for the examiner’s opinion is the facts that the examiner has properly found (assuming the examiner properly found all of the facts). The examiner can only tell you that in his/her opinion the evidence in favor of obviousness “weighed more” than the evidence in favor of non-obviousness.

    I don’t understand what you think you’re going to establish by asking the examiner why he/she concluded that the invention was obvious. The examiner can only tell you that the reference, or references when combined, included every feature in the claim and that there was a reason to modify and/or combine the reference(s). That reason, whatever it may be, e.g. from the lamest/weakest “to make it better” (don’t laugh, I’ve seen that one) to the strongest “to increase the capacity of the engine by 13.489%”, should be on the record long before you get to 145 civil action. And if the examiner provides a reason, and 3 APJ’s review that reason and say, “Yeah, sounds sufficient to us” what do you hope to achieve by getting the examiner on a witness stand in front of a neutral trier of fact (e.g. a DCDC J)?

    I don’t understand.

  55. You’re not going to win any case by arguing the examiner’s credentials. You can only win a 103 argument by introducing evidence and arguments in favor of non-obviousness that “weighs more” than the examiner’s evidence and arguments in favor of obviousness.

    I think this is correct. You can certainly challenge the Examiner’s conclusions regarding the level of skill of the ordinary artisan. But the Examiner’s level of skill in that art is not relevant to the obviousness of a claim.

  56. not what you think,

    “I don’t understand why you disagree with me. Do you really think you’re going to be able to introduce evidence of the examiner’s credentials, or be allowed to cross-examine the examiner, during a 145 civil trial? The case law is pretty clear, even if you were permitted to depose/examine the examiner, you cannot ask questions regarding the examiner’s mental processes during the examination of the application.”

    The goal of a § 145 civil trial for the applicant is an order directing the grant of a patent. What is wrong with the PTO (presumably, through its examiner) making its case for rejecting the claims at issue under § 103 in front of a neutral trier of fact? What is wrong with the court hearing from the examiner the basis for his opinion (other than a few conclusory lines in an OA)?

    I know that Western Electric v. Piezo Tech, 860 F.2d 428 (Fed. Cir. 1988) limits an examiner’s participation in a district court action, but this case was an infringement case of a previously granted patent and not a § 145 action in which the seeks a grant of patent.

    One more thing…there is no “hearing officer” or “adminstrative law judge” during prosecution (that I’m aware of) which hears evidence from both sides, i.e., where the applicant can ask questions of the examiner in front of a neutral trier of fact in the PTO decides. For what I know, this is different than other administrative bodies to which the APA applies (Social Security, OSHA, NLRB, etc…). The civil trial of § 145 is the applicants first crack.

  57. notwhatyouthink But I honestly can’t think of a single application I’ve handled where the level of ordinary skill in the art was even addressed, let alone determinative of the ultimate legal question (i.e. obviousness).

    That’s surprising because the issue arises routinely in chem/bio practice.

  58. “I’m a little confused here. ‘Substantial evidence’ is a standard of appellate review. Is it review a standard which applies to the examiner? Preponderance of evidence v. substantial evidence?”

    Each of the factual inquiries of a 103 analysis must be resolved by the examiner. The examiner must establish, by substantial evidence, 1) the scope and content of the prior art, 2) the differences between the claims and the prior art, and 3) the level of ordinary skill in the art. Substantial evidence is evidence that a resonable mind might accept as adequate to support a conclusion. So if the examiner says, “Jones discloses feature X of the claims in column Y, line Z” then if a reasonable mind would accept that, yes, Jones in fact does disclose feature X, then the fact is “properly found.”

    You are of course free to argue that the examiner is not giving feature X the broadest reasonable interpretation, or is misinterpreting the disclosure of Jones, but for purposes of burden shifting, the examiner has successfully shifted the burden to you to rebut that Jones does not disclose feature X.

    Once the examiner has “properly” resolved the three factual inquiries (i.e. has properly made findings of fact, each supported by substantial evidence), if those facts establish, by a preponderance, then the examiner has made a prima facie case of obviousness. In other words, if the facts establish that the claimed invention is more likely obvious than non-obvious, the claims are not patentable.

    You are free to introduce arguments/evidence to rebut any of the examiner’s findings of fact, and to address the fourth factual inquiry: secondary considerations. If you present evidence of secondary considerations, the examiner is required to re-evaluate all of the evidence (i.e. your evidence of secondary considerations does not have to be sufficient to “knock down” the examiner’s prima facie case, but only needs to establish that all of the evidence, when properly weighed, makes it more likely that your claimed invention is non-obvious instead of obvious).

    “I agree with you in so far as your statement is limited to the prosecution. In my opinion, this should not be so for a § 145 civil trial.”

    But why? Why should the DCDC J consider other factual inquiries? The determination of obviousness is the same regardless of the forum. You resolve the four factual inquiries, weigh the evidence, and determine if a preponderance of the evidence establishes obviousness or non-obviousness. Why should there be a 5th factual inquiry (i.e. the “credentials” of the examiner) just because you’re in a 145 civil action?

    “May I suggest that this question is not addressed during prosecution but one that is available during a civil trial.”

    I agree that the level of ordinary skill in the art is rarely addressed during prosecution. But that is not because it is not permitted to be addressed. Furthermore, presenting evidence of the level of ordinary skill in the art during a 145 civil trial is not the same as presenting evidence of the “examiner’s credentials” during a civil trial. The “examiner’s credentials” are completely and totally irrelevant to the determination of obviousness regardless of the forum. If you wanted to present evidence of the examiner’s credentials during a 145 civil trial I would expect the PTO solicitor/associate solicitor to stand up and say, “Your Honor, we object, the evidence is irrelevant” and I would expect the judge to say, “Sustained.”

    “I agree with you in so far as your statement is limited to the prosecution. I disagree with you if you want to extend it to a civil trial.

    I don’t understand why you disagree with me. Do you really think you’re going to be able to introduce evidence of the examiner’s credentials, or be allowed to cross-examine the examiner, during a 145 civil trial? The case law is pretty clear, even if you were permitted to depose/examine the examiner, you cannot ask questions regarding the examiner’s mental processes during the examination of the application.

    You’re not going to win any case by arguing the examiner’s credentials. You can only win a 103 argument by introducing evidence and arguments in favor of non-obviousness that “weighs more” than the examiner’s evidence and arguments in favor of obviousness.

  59. not what you think,

    First of all, nice comments.

    “If the facts, each properly supported by substantial evidence, support a determination of obviousness by a preponderance (i.e. the facts show that the invention is more likely obvious than non-obvious), the examiner has made a prima facie case.”

    I’m a little confused here. “Substantial evidence” is a standard of appellate review. Is it review a standard which applies to the examiner? Preponderance of evidence v. substantial evidence?

    “You cannot traverse a 103 rejection on the grounds that the examiner is not a PHOSITA, or that the examiner’s credentials don’t establish the examiner as a PHOSITA, or that the examiner hasn’t presented evidence that the examiner is a PHOSITA. That is simply not one of the factual inquiries that makes up the determination of obviousness.”

    I agree with you in so far as your statement is limited to the prosecution. In my opinion, this should not be so for a § 145 civil trial.

    “If the examiner presents substantial evidence that establishes the level of ordinary skill in the art, you have to address it. But I honestly can’t think of a single application I’ve handled where the level of ordinary skill in the art was even addressed, let alone determinative of the ultimate legal question (i.e. obviousness).”

    May I suggest that this question is not addressed during prosecution but one that is available during a civil trial.

    “But you’re not going to get anywhere arguing the examiner’s “credentials.” Don’t even waste your time chasing that rabbit down a hole.”

    I agree with you in so far as your statement is limited to the prosecution. I disagree with you if you want to extend it to a civil trial.

  60. “…then what is wrong with determining the examiner’s credentials upon which he supports his opinion?”

    What is wrong with it is that the examiner’s “opinion” (i.e. legal conclusion that the claimed invention is obvious) is not “supported” by the examiner’s “credentials.” The examiner’s “opinion” is supported by the facts (assuming the facts are properly found, i.e. supported by substantial evidence).

    You remain free, of course, to argue that the examiner’s conclusion is incorrect. In other words, you can argue that the facts do not establish, by a preponderance, that the claimed invention is obvious, but instead the facts support, by a preponderance, that the claimed invention in non-obvious.

    But you’re not going to get anywhere arguing the examiner’s “credentials.” Don’t even waste your time chasing that rabbit down a hole.

  61. “Then what business the examiner have in determining that a PHOSITA would find something obvious under KSR?”

    As I explained, the examiner’s role is one of a fact finder. In evaluating all of the facts found to make the ultimatel legal determination (obviousness is a question of law, not fact), the examiner’s role is one of a quasi-judicial official. There’s plenty of case law on this. If the facts, each properly supported by substantial evidence, support a determination of obviousness by a preponderance (i.e. the facts show that the invention is more likely obvious than non-obvious), the examiner has made a prima facie case.

    You cannot traverse a 103 rejection on the grounds that the examiner is not a PHOSITA, or that the examiner’s credentials don’t establish the examiner as a PHOSITA, or that the examiner hasn’t presented evidence that the examiner is a PHOSITA. That is simply not one of the factual inquiries that makes up the determination of obviousness.

    If the examiner presents substantial evidence that establishes the level of ordinary skill in the art, you have to address it. But I honestly can’t think of a single application I’ve handled where the level of ordinary skill in the art was even addressed, let alone determinative of the ultimate legal question (i.e. obviousness).

    Under the old TSM regime, the level of ordinary skill in the art pretty much went unaddressed. In that instance, the disclosures of the references relied upon were considered to represent the level of ordinary skill in the art. Plenty of case law on that too.

    Under KSR, a combination of known elements is likely to be obvious (or whatever the direct quote is) UNLESS the combination would have been beyond the level of ordinary skill in the art. If you want to argue that to traverse an obviousness rejection, you had better present some evidence of what applicant regards as the level of ordinary skill in the art. Under the current case law, if you want that evidence considered, you better submit it as early as you can.

  62. “What business does your expert have in determining that he wouldn’t?”

    That’s easy. The grant of a patent.

    “No, it makes him a person who disagrees with you. It’s not the same thing at all.”

    You and I disagree, but neither of us is spending money in our instant discussion. I would agree that you and I are not adversaries on this blog.

    However, when you throw into the fact that my client is spending his money, it rises to the level of adversarial.

  63. Then what business the examiner have in determining that a PHOSITA would find something obvious under KSR?

    What business does your expert have in determining that he wouldn’t?

    The PHOSITA is not a real person. He is a make-believe person. Your job is to enlighten the decision maker with enough knowledge that the PHOSITA would have, so that decision maker can make an informed decision.

    Doesn’t an examimer’s finding that the applicant’s argument is not persuasive to overcome a § 103 rejection make it an adversarial?

    No, it makes him a person who disagrees with you. It’s not the same thing at all.

  64. IANAE,

    “This obsession with making the process adversarial”

    Doesn’t an examimer’s finding that the applicant’s argument is not persuasive to overcome a § 103 rejection make it an adversarial? The finding of an unpersuasive argument make it an adversarial, no?

  65. not what you think,

    “The examiner’s role in prosecution is not as a PHOSITA.”

    Then what business the examiner have in determining that a PHOSITA would find something obvious under KSR?

  66. “At what point can the applicant dig into the examiner’s personal knowledge and determine his credentials as being a PHOSITA?”

    The examiner’s role in prosecution is not as a PHOSITA. The examiner’s role is one of a fact finder. The arguments and evidence you present, either during prosecution or duruing a 145 civil action or a 141 appeal should be directed to the issue of whether the examiner properly resolved the factual inquiry of the level of ordinary skill in the art, not whether the examiner him/herself is a PHOSITA.

    Of course, if the examiner is relying on facts within his/her personal knowledge to resolve the factual inquiry(ies) of the scope and content of the prior art and/or the level of ordinary skill in the art, then yes, you should request a Rule 104 affidavit from the examiner and you should have the opportunity to challenge the affidavit.

  67. There is no opportunity during prosecution (that I no of) in which the examiner must provide a CV after which the applicant where ask questions or the applicant’s expert to refute.

    if the examiner issues a § 103 rejection arguing that a PHOSITA would find something obvious and uses KSR, then what is wrong with determining the examiner’s credentials upon which he supports his opinion?

    Even if the examiner has no credentials at all, that doesn’t make him wrong. You still have to show that he’s wrong. Believe it or not, it is possible to file evidence of your own, other than in direct rebuttal to someone else’s written declaration.

    This obsession with making the process adversarial and personal is exactly what I mean when I say people spend too much time being lawyers and not enough being agents.

  68. IANAE,

    “not on appeal to the courts.”

    There is no reference in § 145 that an “appeal” is taken to the district court. To me, Congress has made it clear that an applicant can “appeal” to the CAFC per § 141 or commence a civil action per § 145 at which time the dissatisfied applicant may question the examiner as a PHOSITA.

    “It sounds to me like all the evidence you want to file under 145 is focused on discrediting the PTO and not showing that your client is entitled to a patent.”

    No and yes.

    No, because it is not “all” the evidence. There is no opportunity during prosecution (that I no of) in which the examiner must provide a CV after which the applicant where ask questions or the applicant’s expert to refute.

    Yes, because if the examiner issues a § 103 rejection arguing that a PHOSITA would find something obvious and uses KSR, then what is wrong with determining the examiner’s credentials upon which he supports his opinion? If an examiner is discredited, isn’t that one less roadblock to getting the patent?

  69. Alas, “under 145 is focused on discrediting the PTO” is equivalent to “showing that your client is entitled to a patent”. You cannot ignore the nature of the battle.

    The process is adversarial – there is no “trust” – and any such leanings are off in the “ideal” wannnabe world. It will be a long, long time before the ramifications of the reject-reject-reject philosophy have abated enough to countenance the level of “idealism” that IANAE takes for granted.

  70. The § 145 appeal puts the PTO’s expert (i.e., examiner) on trial,

    I thought it was the patent application that was supposed to be on trial, not the examiner. It sounds to me like all the evidence you want to file under 145 is focused on discrediting the PTO and not showing that your client is entitled to a patent.

    Anyway, if those are really the procedures you need to adequately prosecute your patent for some reason, you should be asking for them at the Board, not on appeal to the courts.

  71. IANAE,

    “The PTO is the forum we trust to decide questions of patent prosecution in first instance, and on appeal to the Board. That gives the applicant many, many opportunities to put evidence of fact on the record. He shouldn’t be able to do a half-assed job through all that administrative process and fix it all on a de novo appeal.”

    At what point during patent prosecution does the applicant get to cross-examine and ask questions of the PTO’s expert in the field? At what point can the applicant dig into the examiner’s personal knowledge and determine his credentials as being a PHOSITA? Is the examiner required to submit a declaration from which the applicant can refute such declaration with a responsive declaration?

    The § 145 appeal puts the PTO’s expert (i.e., examiner) on trial, something he cannot get during prosecution (unless you can inform me otherwise).

  72. I agree with Paul Morgan, as he more eloquently stated what I tried to toss off quickly. I don’t think highly of Mr. Hyatt’s applications, but the fact of the matter is applicants should not be denied a chance to introduce new evidence at trial or why bother going to a district court in the first place.

  73. Why in the world would Congress provide specifically for an

      appeal

    to a district court when one was already provided to the Federal Circuit unless the district court had the power to rehear the entire case and not just assess the whether the BPAI was wrong.

  74. “The relentless parking…other than scoping out a target for future litigation.”

    Malcolm, once more on the treadmill of inanity.

    This is the fourth time I am providing a link that should disabuse you of your beloved “troll” rationale:
    link to 271patent.blogspot.com

    Your tired arguments are still tired.

  75. It has always been regarded as black letter law that new evidence could be introduced in district court as it, and not the PTO, is a court of first instance. This decision is certainly an upset. However, surely any decision of the DCDC is appealable to the CAFC.

  76. The relentless parking of Bilski-esque methods and related junck in the appeal queue at the USPTO ruins the USPTO for individuals and businesses who actually work and do research other than scoping out a target for future litigation.

  77. Why not? The cost comes out of his own pocket.

    Welcome to the USPTO, where the customer is always right. Right?

    Seems to me that when an application this old stays pending this long, and the applicant essentially takes the position that better pleadings on his part would have saved him a round of appeal, the cost comes out of a lot of other pockets too.

    It would have been a bit strange for Congress to provide two paths for those dissatisfied with a BPAI decision unless those paths had some significant differences.

    Is there a compelling reason to have two parallel mechanisms for review of the same decision? If, as I infer from your comment, the main difference is new evidence, Congress should commit to whether they’re going to allow new evidence at that stage of the process.

    “He had a terrible lawyer at the Board” … a funny comment considering the circumstances.

    Yes, that was intended.

  78. “Or should I say she who
    can’t write a comment
    properly?”

    Or should we say – he who cannot read a comment properly – 6 you must have missed sarah’s correction at 11:23 AM, a mere forty mintues before you posted.

    D’Oh!

  79. She said she meant Not 6, not 6, 6. Or should I say “he who can’t read a comment properly”?

  80. “He had a terrible lawyer at the Board” … a funny comment considering the circumstances. You know what Lincoln said about this: a man who represents himself has a fool for a client.

  81. If you can’t introduce new evidence at District Court, then there isn’t much difference between filing a civil action or appealing directly to the CAFC. It would have been a bit strange for Congress to provide two paths for those dissatisfied with a BPAI decision unless those paths had some significant differences.

    It seems to me that the only reason to choose District Court over the CAFC would be to introduce new evidence.

  82. This 35 year old piece of crxpola doesn’t deserve another shot at life.

    I’m pretty sure Mr. Hyatt is more than 35 years old.

  83. But I really don’t think that’s the case for Mr. Hyatt. He had a terrible lawyer at the Board, but that’s his own fault and it’s not the CAFC’s mess to clean up.

    Word.

    Don’t encourage more poor briefing before the BPAI. This 35 year old piece of crxpola doesn’t deserve another shot at life.

  84. “He shouldn’t be able to do a half-assed job through all that administrative process and fix it all on a de novo appeal.” Why not? The cost comes out of his own pocket. “All the expenses of the proceedings shall be paid by the applicant.” 35 USC 145.

  85. the PTO is not a court. Its procedures are not the same as those of a court. In reexamination there is no opportunity to cross-examine witnesses. So the PTO can never be a court of first instance.

    The PTO is the forum we trust to decide questions of patent prosecution in first instance, and on appeal to the Board. That gives the applicant many, many opportunities to put evidence of fact on the record. He shouldn’t be able to do a half-assed job through all that administrative process and fix it all on a de novo appeal.

    If the PTO procedure didn’t allow the applicant to present his evidence in a timely manner, that’s definitely something for the courts to fix. But I really don’t think that’s the case for Mr. Hyatt. He had a terrible lawyer at the Board, but that’s his own fault and it’s not the CAFC’s mess to clean up.

  86. While it is high time the Federal Circuit reconciled and clairified [or directed panels to follow its stare decisis rules] for the prior case law on this subject [which prior case law, not the statute, provides the “de novo” language]. But let’s hope the old “bad facts make for bad law” problem does not adversly affect this en banc review, in view of the notorious Hyatt nearly endless claiming practices [second only to Lemelson’s]. Perhaps a remand for consideration of other issues, like prosecution laches, and/or if prolix numbers of added claims can be a violation 35 USC 112, might be more appropriate in this case? The Federal Circuit need to consider 35 USC 145 as to more deserving applicants who want able to present discovery evidence on the secondary factors for unobviousness, utility, and other issues they did not have an adequate opportunity to do below.

  87. Ianae (or inane, or insane, or mooney, or whatever your name is): the PTO is not a court. Its procedures are not the same as those of a court. In reexamination there is no opportunity to cross-examine witnesses. So the PTO can never be a court of first instance.

  88. It may easily be the case that his new evidence at the D.C. court was introduced at the earliest time that it could have been, because in response to the PTO’s late statement of its view.

    Was this point argued before the DCDC or the CAFC? Because it looks like his original submissions to the BPAI were unnecessarily general and vague, and he really could have done much better at the time.

    I’m not a fan of de novo review in general. You should get one trial, where you put forward your best evidence, and it should only be overturned for glaring error, procedural unfairness, new evidence you really couldn’t have introduced earlier (e.g. if what David Boundy said is true), mistakes of law, or something of that nature.

    If the Circuit (or even the DCDC) is going to consider a question de novo, make it the court of first instance and save everybody the time.

  89. Mark: I don’t think that company had anything to do with “developing” the US Patent Classification system, considering that it’s been around since before 1872. Rather, they helped out with a reclassification project to tidy up some areas of class 705.

    Falasco, L. (2002) “Bases of the United States Patent Classification.” World Patent Information Vol. 24, pp. 31-33.

  90. @ Mark
    That’s heartening that the PTO is finally maybe doing something about its neglected classification system.

  91. The background of this case extends back even further, to the examination process. The Patent Office ABSOLUTELY POSITIVELY refuses to supervise its examiners, or to enforce its procedural guidance. Examiners are free to rewrite Chapter 2100 of the MPEP or 37 CFR 1.104, and the PTO will give examination counts.

    From what appears in the public record, one could infer that Mr. Hyatt’s case arises, at least in part, from the PTO’s refusal to require its examiners to follow written guidance, and thus failure to give a full written statement of the PTO’s position in time for applicants to provide rebuttal evidence — in other words, the PTO’s POLICY of sandbagging.

    It’s entirely consistent with my experience and with the statement of facts in the FedCir decision that perhaps the first time Mr. Hyatt got a full analysis from the PTO on some of the issues was in a DECISION ON RECONSIDERATION FROM THE BOARD. It may easily be the case that his new evidence at the D.C. court was introduced at the earliest time that it could have been, because in response to the PTO’s late statement of its view.

    The real solution to the PTO’s problem is for the PTO to enforce its own rules, and keep its half of the “compact prosecution” bargain.

  92. Having researched this in law school (admittedly many, many moons ago), my recollection is that a 145 civil action was de novo (so any and all evidence from both sides would come in just as in any civil case), while an appeal to the Fed Cir was an APA appeal in which the PTO would only have to show that there was sufficient evidence in the record to support the BOPAI decision.

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