Federal Circuit Operating Procedure: Affirm PTO Decisions Without Opinion

The Federal Circuit released two more “Rule 36” from the Federal Circuit: Hill-Rom Services, Inc. v. Stryker Corporation; and First Quality Baby Products v. Kimberly-Clark Worldwide, Inc. Both of these cases involved the patentee appealing PTAB obviousness determinations during reexamination proceedings.

The Federal Circuit’s local Rule No. 36 provides:

Rule 36. Entry of Judgment – Judgment of Affirmance Without Opinion

The court may enter a judgment of affirmance without opinion, citing this rule, when it determines that any of the following conditions exist and an opinion would have no precedential value:

(a) the judgment, decision, or order of the trial court appealed from is based on findings that are not clearly erroneous;

(b) the evidence supporting the jury’s verdict is sufficient;

(c) the record supports summary judgment, directed verdict, or judgment on the pleadings;

(d) the decision of an administrative agency warrants affirmance under the standard of review in the statute authorizing the petition for review; or

(e) a judgment or decision has been entered without an error of law.

Since January 2015 (10 1/2 months), the court has issued 101 precedential opinions.

Although the two cases here do seemingly turn on factual questions, they also deal with obviousness – which is the key issue in the vast majority of Patent Office decisions.

Over the past year, the Federal Circuit has decided a large number of Patent Office appeals with R.36 judgments or non-precedential opinions.  Looking at Federal Circuit decisions since January 1, 2015 that stem from Patent Office appeals: approximately 20% are precedential opinions; 20% are non-precedential opinions; and 60% are Rule 36 affirmances without any opinion at all.

125 thoughts on “Federal Circuit Operating Procedure: Affirm PTO Decisions Without Opinion

  1. The way I see it, the Federal Circuit has been doing high-volume low-touch administrative review in some areas for decades. It may not have always put the USPTO in that camp, but they may not see an alternative now. Is there evidence that the APJs in the USPTO are worse than the other APJs they review?

    Now, writing an appeal brief is starts to take on aspects of writing a petition for certiorari. The appellant has to prove more worthy of review to obtain an opinion on the why of the appeal, that the issue is one where guidance is needed. That should not be hard for certain kinds of requests for joinder, for example.

    While I would hope the Federal Circuit would have decided to demonstrate more need for more judges to deal with the increased work load, it has not appeared to. Either that, or the Rule 36 decisions are its case to get more judges.

    If they wrote decisions for all of them, would we have so many more decisions, or just that many fewer Rule 36 decisions? Congress did want rapid resolution.

    1. Erik, I attended a number of oral arguments recently, and presented one myself. One could see by the attitude of the court whether they were interested in what the advocate had to say. Falling asleep, or close to it, or having a very annoyed look, was a clue.

      It is a wonder why some of these folks even appeal very minor issues or judgment calls made by the agency. They are wasting everyone’s time. (One case involved where someone was not given his “negative review” on time, thereby causing him damage because he continued to make investments assuming everything was OK.)

      When the Supreme Court became overwhelmed, Congress cut off the “right” of appeal. Instead, they allowed the court to select the cases it wanted using the writ certiorari. Perhaps the Federal Circuit could do the same thing with appeals from the agencies, where an appeal will be heard only if the appeal involves an error of law.

      Another thing the Federal Circuit could do would be to hold that IPRs are unconstitutional. That would help its workload problem a lot.

      1. When the Supreme Court became overwhelmed, Congress cut off the “right” of appeal.

        That’s an odd way of putting it. Instead of “Congress cutting off,” the perhaps more accurate way is to put it is that Congress handed the keys to the Court and by letting the Court decide which cases it would (deign to) hear, the Court was granted MORE authority to set its agenda.

        All that being said, “attitude” of the courts is and remains a problem. That problem is NOT helped by the overweening fealty and “Emperor’s n@kedness is such fine raiments” attitude of the bar. Our fealty instead is to the Constitution – and we remain watchdogs and caretakers of a sort over ALL of the branches, owing a duty NOT to one branch over another.

  2. Several of the oral arguments that were held in Boston/Cambridge are not up yet. I called the clerk last Friday and he assured me they would be put up soon.

    As of October 19, they’re still not up (ten days after the argument date). Kinda strange, given that the recordings are typically uploaded within hours of their making.

  3. Practice tips for practitioners and district court judges.

    For practitioners: do not file briefs at the Federal Circuit in which you accuse a district court judge or the PTO of “bias” against you unless you include record evidence of that alleged “bias” in your brief and you are prepared to move against that judge (and the judge’s decision) on the basis of that evidence.

    15-1275 DCT Lumen View Technology LLC v. Findthebest.com, Inc

    LVT got spanked with enhanced sanctions by the district court for a pattern of presenting “licensing opportunities” to potential defendants without articulating an infringement theory.

    The panel here had some serious questions about the district court’s methodology for calculating the “reasonable attorney fees” and the “enhancement” of those fees. Moore quoted the Supreme’s opinion in LodeStar to support the proposition that “enhancement” under the statute quoted by the district judge (section 285) is aimed at obtaining a fair compensation of fees, and not for deterrence. Not sure if I buy that …

    For district court judges: do not omit explanations for any aspect of any “exceptional case” damages that are being awarded. If you choose a multiplier for “enhancement”, explain why you chose that particular multiplier (e.g., 2x) over another (e.g., 1.5x or 3x). Otherwise the CAFC won’t be able to review for “clear error” and they’ll kick the calculation back downstairs.

  4. What bugs me about the summary affirmances is the complete lack of any information other than (1) the parties and (2) the venue from which the dispute arose.

    In the patent cases, at least, it seems like some one specific statement about exactly what is being affirmed would be appropriate, e.g., “The PTO’s finding of the invalidity of claims 14, 20-21 and 34 of patent ### as obvious is affirmed.”

    That doesn’t seem like too much too ask.

    1. Has anyone looked at how Rule 36 affirmances interact with collateral estoppel doctrines?

      Specifically, in the Federal Circuit case of Tecsec says the following:

      [O]ur Rule 36 judgment did not address any of the issues ruled on below that TecSec had appealed. We did not endorse or reject any of the district court’s specific holdings. For collateral estoppel to apply to a court’s claim construction, the construction “had to be the reason for the loss,” Jackson Jordan, Inc. v. Plasser Am. Corp., 747 F.2d 1567, 1577 (Fed.Cir.1984), a conclusion that does not apply here. We thus decline to hold that collateral estoppel applies in this case.

      Understanding that collateral estoppel is not a substantive patent rule and is instead governed by Circuit, has anyone examined what effect all these Rule 36 affirmances have as to the collateral estoppel effect of PTAB decisions where there are multiple grounds at issue? (Let’s assume they couldn’t reargue validity of cancelled claims as a conclusion, but what about whether collateral estoppel would prevent rearguing how the prior art reads onto the claims if related claims are asserted, as an example)

      1. “rearguing how the prior art reads onto the claims if related claims are asserted, as an example”

        35 USC 315 (e)(2) deals with this issue. Because the claims are “related” this issue “reasonably could have been raised”

        1. Thanks topce,

          I’m actually thinking about a situation where, for example, certain claims of a patent are invalidated by the PTAB under two separate rationales (say x and y), then summarily affirmed by the Federal Circuit.

          Would collateral estoppel apply to prevent the patent owner from arguing how x reads on to elements of a different, but related claim, or how to construe certain shared terms (assuming at the PTAB for that one)? See Westwood Chem for an application of collateral estoppel to non-previously-asserted claims.

          (I’m also not sure 35 USC 315(e)(2) would apply to challenges to different claims, in any event, given that it specifically refers to “a claim” rather than the patent.)

            1. anon,

              Thanks for the notation, but that doesn’t resolve the issue.

              From Westwood Chem we see that collateral estoppel can (though doesn’t necessarily, as you note) apply to related claims. This is also potentially true for claim construction issues. (E.g. if the same term was used in two different claims, one invalidated one not).

              The question is, if the Federal Circuit considers Rule 36 affirmances to not create collateral estoppel where there is two separate possible reasons why the judgment is correct, is it possible that a PTAB invalidation on two grounds would leave a patent owner free to reargue arguments about the prior art, about claim construction, about any issue it lost on so long as there is more than one possible ground the patent owner lost on?

              If the answer to that question is yes (and I don’t know if it is), that seems to raise tensions between the Federal Circuit’s summary affirmance procedures and the policies behind Blonder-Tongue.

              1. Are you asking that in those conditions where the explicit reason for losing is not identified, whether the applicant can pursue different action on one – or the other – reason and “claim” that he lost “for the other reason?

                If said “other reason” does not apply to a previously unasserted claim, would it not be the duty of the court to be clear in its decision so as to prevent this? If the court is not clear as such, should the applicant lose out on such lack of clarity (that is beyond her control)?

                1. If there are not clear grounds for invalidation, it would probably be inappropriate for the CAFC to issue a summary affirmance.

                2. anon,

                  This is my point. The Federal Circuit, in its Rule 36 affirmance practice, may cause practical implications that undermine Blonder-Tongue, and more general rules regarding finality of judgment, because it didn’t, as MM suggests, put in a line about the basis for its decision.

                  From a due process standpoint, it would seem to be problematic for all the parties involved, and even the public.

              2. I think it would be inappropriate to summarily affirm the case for the precise reason you mention.

                If affirmed, estoppel would probably apply. This would be unfair to the patentholder.

          1. I don’t think there is a clear answer other than asking whether the could have reasonably been raised before the PTAB.

            I can imagine certain scenarios where estoppel would not apply.

            If the PTAB denied the petition on a set of independent claims even though it comes out that those claims could have been invalidated, I don’t think you would be estopped from invalidating them in district court. However, if you failed to put the claim set in the initial petition, estoppel would apply.

            1. Is the “reasonably raised” at point here?

              For arguments sake consider that arguments for each of several items were raised, but that the “lack of clarity” as put forth by Jane remains. Who has power over that?

              1. I think the district court would. Not the CAFC. So if the CAFC summarily affirms the case without stating grounds, the District court would determine whether the issue could have been raised at the initial PTAB hearing in light of the summary affirmance.

    2. MM, JNG below threw down the gantlet about the Feds using Rule 36 so as to not expose the bad reasoning or lack of due process afforded by the PTAB. I suspect he might be right there, but I would like at least one example.

      What I have heard in oral arguments are complaints about IPR procedures, or this or that about evidence, but the Feds never seem to think violations are important as, and, in their independent review, the PTAB got the ultimate result right.

      1. What I have heard in oral arguments are complaints about IPR procedures, or this or that about evidence, but the Feds never seem to think violations are important as, and, in their independent review, the PTAB got the ultimate result right.

        This is because the CAFC is well aware that applicants are, in most instances, getting all the due process that they need and then some. The vast majority of “mistakes” at the PTO favor the applicant, after all. Neither the applicant or the PTO is going to complain about those “mistakes” unless a third party brings the mistake to their attention.

        1. That they need..?

          If there is ANY breach of due process there is NO “as much as they need.”

          Your “sniff” mechanism cannot supplant the plain fact that in law, the ends do not justify the means.

          It is a rather important baseline understanding to have and maintain.

          1. Ned,

            I am amazed at how you gloss over how anti-patent Malcolm is.

            ANY position on these boards that lessens patent rights or hurts a patent holder is SURE to be one that Malcolm gleefully supports. Without exception.

  5. For what it’s worth, the oral arguments in

    15-1304 DCT Better Food Choices LLC v. MyNetDiary, Inc.

    are completely awol. They were scheduled for October 9. Did they not happen?

    1. MM–

      Several of the oral arguments that were held in Boston/Cambridge are not up yet. I called the clerk last Friday and he assured me they would be put up soon.

  6. Truly, the “problem here” is that the Supremes destroyed a reasonable standard for obviousness with their Bilski decision. Like Alice, a patent opponent can now do or say whatever they want to invalidate a patent under the “ordinary creativity” standard.

        1. ^^^ I am not clear as to what you are trying to say.

          Clearly, you are not attempting to actually repeat something I have stated, and it just appears that you want to somehow imply some innuendo.

          Maybe you should look into those short and direct sentences you are typically on about.

              1. Your “rephrasing” misses – and misses badly.

                Nah, it doesn’t. It’s spot on. Go ahead and explain where you see daylight between “unlimited gisting” and “everything is abstract.” The floor is all yours.

                1. Yes it does.

                  I said what I said and what I said is clear.

                  If you disagree, then please state the actual limit set forth by the Court in its creation of the “Gist/Abstract” sword.

                  What is that explicit limit?

                  What words were used by the Court?

                2. please state the actual limit set forth by the Court in its creation of the “Gist/Abstract” sword.

                  Ah, I get it. You were born yesterday so if the Court doesn’t hold your hand and walk you to the pottie, the big monster under your bed is going to eat you.

                  Life must be really difficult for you. But we knew that already.

                3. I said what I said and what I said is clear.

                  LOL. Is everything abstract, “anon”?

                  You seem to think so.

                  And yet we all know it’s not true. I’ve never suggested that everything is abstract. Neither has the Supreme Court.

                  But you and your cohorts do so all the time. You did it just now, as I already pointed out. Go ahead and pretend that you were born yesterday if you think it makes you look like a clever person. Even petulant judges do it sometimes (see, e.g., Plager’s recent meltdown).

                  [shrugs]

                4. Your short script of “born yesterday” does not fit here Malcolm.

                  So once again:

                  If you disagree, then please state the actual limit set forth by the Court in its creation of the “Gist/Abstract” sword.

                  What is that explicit limit?

                  What words were used by the Court?

                  Why do you not answer these short, direct, and clear questions?

                  Yes, we both know why you run away.

      1. You asked me to define abstract a while ago.

        “Not concrete.”

        Patent something concrete and you will be fine.

        Concrete: denoting a material object as opposed to an abstract quality, state, or action.

        1. You are (or should be) aware that the law does not in fact require what you seem to be implying (I am reading into your answer the MoT aspect, and could be off on that).

          You also have gone circular in using “abstract” in your final paragraph for concrete….

          1. the law does not in fact require what you seem to be implying

            Except when it does, which is increasingly often. Or haven’t you noticed?

            Pretty much everyone else has noticed.

            And it was all predicted.

          2. The law requires concreteness because a mere idea without any concreteness is neither new nor useful.

            Needs to be something more. Pretty sure the Supreme Court said something to this effect.

            1. That is not a universal rationale- abstract ideas may indeed be new and useful, but not eligible because they cant be fairly adjudicated, because there are serious liberty implications to monopolies on ideas, and the because the risk of preemption outweighs the economic value of the patent incentive.

                1. But some
                  on here oppose my use of such philosphies and prefer I ground my claims in history and case law, which is of course fair.

                  A more foundational way to look at abstraction is to think about the early cases regarding conception vs. reduction to practice.

                  This is where I find basis for my universal statement—a mere idea is a conception. The question is what is required to reduce a mere idea to practice? Answer is to come up with a concrete invention.

              1. The “Liberty implications” argument is a fallacy.

                The thought of software is not software.

                ALL software is created by the hand of man AS a machine component. That is how software is defined.

                Shall we (again) discuss how the separate aspect of copyright inures? That you require a physical manifestation of some legal sort, and that any of this “totally in the mind” view does not get you there for copyright?

                This (again) smacks of Malcolm’s perpetual goalpost moving attempts to paint claims TOTALLY in the mind and quite misses what Professor Crouch has coined as the Vast Middle Ground.

                Time again for that inte11ectual honesty gut check “folks.”

                1. software is created by the hand of man AS a machine component.

                  Then describe that component in objective structural terms and you’re golden.

                  Otherwise you’re just playing word games. The definition of “software” is not “machine component.” Software is instructions for carrying out logical information processing steps, wherein those instructions are readable by a computing machine.

                  When you’re honest with yourself about that, then you can understand the eligibility issues that are raised by patents which purport to protect these “machine components” at a level which fails to distinguish those “components” structurally from the “components” in the prior art.

                  Basic, fundamental stuff. And it’s not going away. But you know what is going to go away? Take a guess.

                2. ibe that component in objective structural terms and you’re golden.

                  Once again, Macolm makes his pet phrase into an issue with an attempt to treat one optional claim format as some type of de facto ONLY legal claim format.

                  Isn’t it about time you laid that to rest?

    1. Sockie: “Truly the problem here is [make up some self-serving incomprehensible nonsense and insert here].”

      Try harder, please.

      1. Malcolm calling someone else (anyone else) “sockie” is especially ironic given his own “transparency” battles over at PatentDocs.

    2. Wow that took longer than usual to back around to Alice and 101.

      Life is irony- I’m not being sarcastic here: anon is correct about the folly and unrepeatability of district court judges gisting up the thrust of patents as a major part of the eligibility analysis, when we all know if it happens at all, it should happen at the patentability analysis.

      I feel like Neo once he saw the Matrix. Y’all are moving in slow motion.

      It’s all clear to me now. All of it. From a legitimate judicial interpretation of “process” that adds nothing not inherent to the word, to a repeatable test for abstractness, to the procedure needed to get from eligibility to patentability reasonably early in a case…. how to synthesize the key 101 cases into a coherent result, and how to align the TPP requirements with our 101 law. A whole lotta software stays eligible too. All of it done with a essentially a single, logical change in orientation.

      But I have to bide my time, keep my powder dry…and find the right medium to get it out there- cause this sure ain’t it!

      I’m thinking amici on a major 101 case- sure as sunshine we will be getting some soon enough….

        1. 1) no need to change any laws at all. “Process” is the law and will not change. Many, many people think the term is ambiguous when it comes to what may or may not be a process when the subject matter is abstract. Therefore, it needs to be judicially construed.

          2) J, I’d love too – I really want to get it out there- but it has to go as a whole. I think believe the key insight is rock solid, but I need to write it up, revise it, and work with a skilled lawyer to format it correctly top to bottom. Hopefully it will get a full review here when the time comes. I have not had to unlearn patent law- I think it helped in this instance. I can see how different viewpoints have their germs of truth, which sent me down this path of trying to accommodate the divergence, which led to the hinge pins of untying eligibility from patentability, interpreting “process”, and finding the commonest repeatable meaning of “abstract”.

          1. the hinge pins of untying eligibility from patentability

            LOL

            I’ve only been waiting a decade or so for someone to step forward with these awesome “hinge pins” which don’t exist. Are you going to walk on water, too, Martin?

          2. You (the Royal You, as in the judiciary) do not get to call a term “ambiguous” just so that you can turn the law into a nose of wax.

            The insertion itself of “abstract” is not the words of Congress.

            Your notion of “unlearn patent law” smacks oddly – and comes across as wanting a license (much like Topce) to ig nore basic principles in order to put forth some alternate reality “philosophy” that does not take into account that which is necessary to take into account.

            I do applaud your wanting to suss out your views with a trained attorney, but any attorney worth their salt will tell you exactly what I have told you all along.

      1. Martin: district court judges gisting up the thrust of patents

        LOL. Show us some specific examples, Martin, of this “gisting up the thrust” so we can see what you mean.

        Try to remember: nobody is obliged to pretend that a 1000 word description of a peanut butter sandwhich is describing something other than a peanut butter sandwich. Lawyers think of clever ways to say simple things. Smarter lawyers and judges read right through the baloney.

        1. MM, on a practical basis, everyone knows the crapola getting tossed on 101 motions is, in fact, junk. The problem is the stretching of eligibility inquiry into patentability inquiry. You asked for an example? From reading cases over the years, I think Judge Robinson in Delaware is notably thoughtful and experienced, and not unfriendly to patentees. See this opinion: She agrees with the result, but she is not so sure of the means to get there…

          link to delawareiplaw.com

          Walk on water? Hardly anon, but I think I have something pretty good and I don’t want to waste it on the likes of you, just yet anyway.

            1. Yes I misattributed MM’s barb, sorry about that. I am looking forward to his critique very much.

              As to your other nonsense: I now agree that much software should be eligible. I have a simple test for which software. I also think the current Alice framework is really an obviousness test, rather than a workable eligibility test.

              As to unwinding eligibility from patentability, it appears to be entirely focused on process claims, which is why process must be construed. Justices of the Supreme Court have said its ambiguous, so Ill take their word over yours on it. You are simply wrong that the word has a plain and limited meaning.

              I thinkz it’s riot that you fetishize the words of Congress and the Constitution, but only to the extent they support patent rights, rather than even acknowledge the obvious threat to liberty involved with patenting ideas- at SOME extreme anyway.

              Economic liberty is no less valuable or inherent than political liberty.

              1. And oh yes: there are valuable, useful, novel, non-obvious ideas that should not receive any protection as intellectual property, as hard as that may be to wrap one’s mind around.

              2. You funny.

                First you apologize.
                Then you agree with me.
                Then you try to insult me (even as you agree with me).

                It is more than just “a riot” that you still think that patents are a “threat to liberty” vis a vis “patenting ideas” and completely miss what I say as to why that line of thought is a fallacy.

                Once you really do grasp the terrain of law – patent law – you just might find that your agreement with me far outweighs your (old and ill-conceived) “philosophies” that you want to bring in without regard as to the actual foundations of patent law.

              3. Martin: I now agree that much software should be eligible. I have a simple test for which software.

                I’m already bored of the silly ball-hiding. At the very least, please try to remember that we’re talking about the eligibility of patent claims, which is a somewhat different subject than the eligibility of things that may be covered by those claims (because it might be possible to draft an eligible claim covering some of those things). It’s a difference that matters.

                I also think the current Alice framework is really an obviousness test, rather than a workable eligibility test.

                Well, you’re wrong and it’s easy to demonstrate why. Consider a claim to a “A system including a computer, wherein said computer comprises a memory, wherein said memory is configured to provide, in response to a request from a user, [insert important non-obvious information relating to a user’s pet’s welfare here].”

                If Alice was “an obviousness test”, then that claim sails right through Alice because the system is performing a non-obvious useful function. But we all know that’s not what happens under Alice.

                1. I started a long comment, just not possible to get it all in here. I’m going to write it up this weekend and email to Prof. Crouch to see if he will let me do a guest post with it.

          1. Martin: See this opinion: She agrees with the result, but she is not so sure of the means to get there…

            Martin, I’m not going to read some opinion and guess how it relates to your proposition which I challenged you on.

            You are suggesting that judges are regularly engaging in some unseemly activity in the 101 context that is unfair to patentees. I want to see a specific example of what that activity appears to be and I want you to show me why you believe that activity leads to the wrong result. You seem to have thought about this a lot so it shouldn’t be difficult for you.

            1. and I want you to show me why you believe that activity leads to the wrong result.

              Your “wants” are very very very strange when viewed in conjunction with your own lack of being willing to show anything as to the proper means to a desired end, Malcolm.

              The word “hypocrite” rings loudly in describing you.

              Hint: it is NOT a question of reaching the “wrong result” – and never has been.

              It very much is a question of using appropriate legal means of reaching whatever result.

              You obfuscate and dissemble on this critical point forever and a day here. I think that the only ones you “f001” are the echo chamber folk who look at the desired ends and want those selfsame ends and simply are too careless or too lazy to employ the mental rigor in using the appropriate means to get to those ends.

  7. Hill-Rom and Stryker are constantly in litigation, it appears. Was this case relating to the same patent whose district court claim construction was broadened by the Federal Circuit last year?

    Factual background for the First Quality Diaper case:

    link to natlawreview.com

    I hadn’t gotten around to checking out either of the oral arguments in those cases. Often times that’s the best (only!) way to get some insight into what the CAFC’s reasoning was. It’d be nice if the CAFC would write more when it’s affirming the PTAB’s or a district courts ineligibility findings under 101 because folks would get a better sense of both (1) the incredible junk that gets litigated (2) the ridiculous arguments that these judges have to listen to in defense of that incredibly junk. On the other hand, it’s probably best that the court doesn’t waste its resources when the case is a slamdunk (which is usually the case for most of the 101-based appeals they hear these days).

  8. The problem here is that the standard of review of facts is for substantial evidence. This has no place where there is no examiner, but instead where there is a trial to a court. Zurko does not apply because that portion of the administrative procedures act that a applies to findings of facts by examiners should not apply here.

    1. What factual questions must be resolved in the subject matter eligibility “analysis” that SCOTUS has provided us? What evidence is sufficient to resolve those factual questions?

      1. What factual questions must be resolved in the subject matter eligibility “analysis” that SCOTUS has provided us?

        What’s in the prior art?

        What evidence is sufficient to resolve those factual questions?

        Admissions by the applicant and common sense in the possession of reasonably intelligent fourteen year olds.

        1. “Admissions by the applicant and common sense in the possession of reasonably intelligent fourteen year olds.”

          Unfortunately I don’t think the PTO or USDC’s are requiring even that much.

        2. The Justices – in a point blank response to Amici who mirrored your “What’s in the prior art?” were pretty direct in saying something else.

          1. The Justices – in a point blank response to Amici who mirrored your “What’s in the prior art?” were pretty direct in saying something else

            Nobody has any idea what you’re talking about. Nice try, though.

              1. Instead of whining about your previous failure to communicate any information, maybe you could try typing out an explanation in English that everyone can understand (and verify because surely you’ll provide both the “mirroring” and the Justice’s response).

                Too difficult for you? I thought so.

                Just keep digging, then.

                [shrugs]

                1. The “keep digging” short script mindless post remains – yet the objectively accurate reference to what that post is, is “too impolite”….?

                  Nice job prof.

    2. In the case of case of patent infringement litigation (i.e. where there is no examiner and the APA does not apply), is “invalidity” for lack of subject matter eligibility required to be proved by “clear and convincing evidence”? If so, see my questions above.

      1. AAA JJ, whether something is non statutory is not a question of fact.

        However, whether it is APPLIED (as in Diehr) to transform…

        1. “…whether something is non statutory is not a question of fact.”

          So it’s a pure question of law? There are no factual questions involved at all?

          1. a pure question of law

            Where the “question” is how the law is being applied to a “thing” (whether that “thing” is abstract or not), the “question” is never going to be “purely” one of law.

            Of course, that proposition depends to some extent on one’s definition of the term “pure.”

            Are you trying to make an important point, AAA JJ? Or are you just throwing a little fit because some claims of yours got tanked under 101 and you wished that it hadn’t been so easy?

            1. Oh, before I forget, let me guess: you’re going to invite me to play your old game of “post some serial numbers” that you never seem to tire of.

              I’ll post some serial numbers. Right after you do.

              All of this is assuming, of course, that the wonderfully unbiased moderator of this site doesn’t moderate my comments out of existence as he’s wont to do when I respond to your n0nsense.

            2. BTW, what is the “prior art” for purposes of the “analysis” required for 101? Is it the same prior art as for 103 (i.e. the pertinent prior art) or is it anything that was previously known to anybody?

              Would love to get an answer. Even better if you could provide a cite to any of the SCOTUS precedent on 101 that actually explains your answer.

              1. what is the “prior art” for purposes of the “analysis” required for 101? Is it the same prior art as for 103 (i.e. the pertinent prior art) or is it anything that was previously known to anybody?

                Prior art is prior art. This hand-wavey concept of “pertinent art” is a bunch of self-serving result-oriented nonsense. Either the argument based on the cited art is convincing (under whatever standard one is applied) or it isn’t.

                They important point you seem to be having such a hard time accepting is that if the prior art renders X obvious in view of A and B, then adding some otherwise ineligible element to X isn’t going to get you a patent *absent* an unexpected result (see, e.g., the grown up arts where people actually make new stuff and provide data demonstrating the unexpected properties in their application). Or your claim that you might happen to squeak by the PTO is going to be ineligible.

                This isn’t really difficult stuff to understand. The difficulty most people have is that they operated blindly in a broken system where patents claiming junky ineligible abstract “innovations” were handed to them for years. That era is ending. And it’s not going to come back, ever. Get used to it.

                1. Prior art is prior art. This hand-wavey concept of “pertinent art” is a bunch of self-serving result-oriented nonsense.

                  This so-called nonsense of yours is critical to understanding the difference between 102 and 103.

                  If you do not understand this, you have NO business posting here.

                  None.

                2. ” This hand-wavey concept of “pertinent art” is a bunch of self-serving result-oriented nonsense.”

                  No, it’s not.

        2. Ned,

          You do realize that “to transform” sounds in your windmill chase to rebirth the MoT, which is not a legal requirement.

          That was one of the 9-0 results (every Justice on a very very split panel) tossed out that version of attempting to elevate MoT into more than just a clue.

          1. anon, you obviously have never read Alice or Mayo. “To transform” is a requirement mentioned three times in Alice:

            The holding:

            “The question presented is whether these claims are patent eligible under 35 U.S.C. § 101, or are instead drawn to a patent-ineligible abstract idea. We hold that the claims at issue are drawn to the abstract idea of intermediated settlement, and that merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention. ”

            link to scholar.google.com Alice at 2352.

            1. Ned,

              Please read what I actually wrote: clearly, my “transform” is in relation to MoT and not to the “transform” of the law of nature.

              Kindly move the goalposts back and respond to my actual statements.

              Thanks.

    3. “Zurko does not apply because that portion of the administrative procedures act that a applies to findings of facts by examiners should not apply here.”

      You are limiting Zurko to its facts. Why?

      1. The presumption is (or should be) that the APA applies to all agencies.

        Congress designated the PTAB to be an agency adjudication, meaning 5 U.S. Code § 706(2)(e) would apply.

    4. “The problem here is that the standard of review of facts is for substantial evidence. ”

      Mmmm. I thought that was mostly because we’re an agency? Not just because there is an “examiner” behind it.

      I’m all for considering a different review standard for the PTAB findings in post-grant proceedings and all but I think we get that standard just as an agency iirc.

      1. Even with the status-quo standards of review, there are a number of important issues that stem from understanding that the ultimate issue of obviousness is a question of law that flows from factual conclusions made from the evidence. For many issues it is difficult to tell whether the PTO has made a factual vs legal conclusion.

        1. “For many issues it is difficult to tell whether the PTO has made a factual vs legal conclusion.”

          I definitely agree with that. Sometimes I think the PTO should be required to put down what they explicitly find as a fact, and then in a distinct section tell how it supports a legal conclusion of x, y or z. That would help many examiners (and their reviewers) correctly end cases much faster. I almost cannot believe that it wasn’t set up that way from the ancient times, but I also forget how willy nilly examination (even officially speaking) was not 20 years ago.

          1. Many PTAB decisions include a section labelled “Findings of Fact.” They’re not always correct, but at least they can be identified and addressed.

            “That would help many examiners (and their reviewers) correctly end cases much faster. I almost cannot believe that it wasn’t set up that way from the ancient times, but I also forget how willy nilly examination (even officially speaking) was not 20 years ago.”

            If the current Patent Academy curriculum does not explain what are questions of fact (e.g. scope and content of prior art, level of ordinary skill, reason to modify/combine, reasonable expectation of success, Wands factors, etc.) and what are questions of law (e.g. obviousness, enablement, etc.), and how those questions are resolved, and by what standard, then the curriculum needs to be thrown in the nearest garbage can and completely rewritten.

            My guess is that the current curriculum does not.

      2. An IPR is like the administrative tax court. Facts are found. Legal conclusions are made. But Congress provided for the tax court,

        “Section 7482(a)(1), here, confers jurisdiction upon the courts of appeals to review decisions from the Tax Court “in the same manner and to the same extent as decisions of the district courts in civil actions tried without a jury.” ”

        “We hold that the Tax Court’s findings of fact are reviewed for clear error, but that mixed questions of law and fact are reviewed de novo, to the extent that the alleged error is in the misunderstanding of a legal standard. See 26 U.S.C. § 7482(a)(1); MacWade, 460 F.3d at 267.”

        DIEBOLD FOUNDATION, INC. v. CIR, 736 F. 3d 172 – Court of Appeals, 2nd Circuit 2013

        link to scholar.google.com

        Obviously, the tax court is treated like a court. The PTAB is not, but needs to be.

        1. Tax Court is an Article I tribunal. Congress made the decision to treat it more like an article III court. Who says they have to though?

          1. This again is the reason everyone is so Pi$$y. It “looks” like a trial, so therefore it must be, even though this was not Congress’s intent.

            Now everyone wants all the goodies they get in Article III Courts. This was not intended by congress.

            1. A come on, T, the entire purpose for IPRs was to provide a low cost alternative to the courts. The costs were reduced because infringement liability and damages were not litigated.

              But in every Other respect, congress clearly intended the procedure to be like the courts despite the holding by a bare majority in Cuozzo to the contrary.

              1. Not quite. These proceedings were modeled after the EPO opposition proceedings.

                Some wanted this to be an alternative to lit. Others saw it as a quick “kill switch” for bad patents.

                1. T, in the EPO, there is an examiner who examines and claims may be amended. link to en.wikipedia.org

                  An opposition is very much like an inter partes reexamination. It is framed US vs. patentee.

                  IPRs are hardly even close to being like this.

        1. I would think that an agency action is an action of the government in its sovereign capacity. If the so-called action of the agency is to decide private rights, then a more searching review of the facts is not only justified, but might be constitutionally required. I do not think that the provision of a more search review of tax court appeals was accidental.

          Cf., Crowell v. Benson.

          1. This seems like you are conflating two issues.

            1) Whether Congress intended the PTAB to be an agency subject to the APA (via being an “arm of the USPTO) or an Article I tribunal.
            2) Whether patents are public or private rights.

            1. Also, why is the scope of review of the government taking of a patent (infringement) that of the courts while a complete revocation is subject to a standard where the courts review is only for substantial evidence?

              Makes no sense.

              1. If the DOD infringes on my drone, it is an infringer.
                If the USPTO infringes on my drone?

                See how nonsensical that last question is. The way you frame the issue makes no sense.

                1. Congress provided no cause of action against the PTAB. In 35 USC 6, it designated the PTAB as an arm of the USPTO.

        2. The trial before the Board between two parties contesting validity hardly qualifies as “agency action.”

          But that is not what IPR is. The action is between the PTAB and the petitioner. The respondent is merely a party in interest to the adjudication.

          Lets say I want to build a dam. I apply to whichever agency. Then the homeowner intervenes saying there would be some sort of nuisance .

          Is that an Article I proceeding? No it’s an adjudication with an interested third party.

          1. What? T, the statute requires that the petitioner shall prove invalidity by a preponderance and shall state the grounds and evidence in support of invalidity of every claim.

            The PTAB has no authority to invalidate a claim except on grounds in the petition, and if they find the petitioner carried its burden of proof. They cannot go on a lark, find new evidence, or invalidate a claim on difference grounds than are contained in the petition.

            But of course, the Feds blew by all this in Cuozzo who are now petitioning the Supreme Court.

            But the statutory framework is clear.

            1. Agencies can’t do that either. They are tied to the record.

              There is a spectrum between ajudicative bodies, article I courts and article III courts.

              Is the PTAB an article I court in your opinion?

              1. T, regarding being bound by the record, you are talking about an appeal. In the IPR, the evidence is the petition or supplementary evidence filed by the petitioner, and whatever evidence the patent owner files. That is the record.

                The role of the PTAB is determine whether the petitioner carried his burden based on the record. They are not entitled to revoke the claims based on some different evidence, or some different grounds not raised in the petition. That plainly is beyond the statute.

  9. Dennis

    Its clear the CAFC has become the tail to the PTAB dog….they have abdicated responsibility in their role of overseer in so many ways – even if you have a rock solid case for reversal they simply won’t take time anymore to write an opinion, and in fact, the worse the PTAB decision, the less your chances because they won’t do anything to embarrass the PTAB judiciary which has exploded in numbers… I’m curious what your stats suggest about number of written opinions by year, my gut tells me its been declining steadily

    1. they won’t do anything to embarrass the PTAB judiciary

      They also try not to embarass appellants who come to them with procedural grievances in an attempt to resurrect the worst garbage that any patent system ever had to deal with.

    2. Which makes more sense:

      Some wacky conspiracy theory about the CAFC serving at the whim of the USPTO?

      Or that because SCOTUS has torn up so many patent-related CAFC opinions in the past few years, the CAFC is now afraid to say anything, lest they accidentally create some erroneous standard?

      1. because SCOTUS has torn up so many patent-related CAFC opinions in the past few years, the CAFC is now afraid to say anything, lest they accidentally create some erroneous standard?

        Or the third possibility: there isn’t much to say because most of the appeals are borderline frivolous and the CAFC has closer cases to think about.

        Spend some time and listen to the oral arguments. You’ll be amazed at the stuff people spend money on.

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