First Rehearing Request Challenging No-Opinion Judgments

by Dennis Crouch

LSI v. FLIR (Fed. Cir. 2017) (request for rehearing) [16-1299-leak-surveys-v-flir_combined-rehg]

In its newly filed petition for rehearing, Leak Surveys has asked the Federal Circuit to withdraw its Judgment Without Opinion. Leak’s Counsel (Donald Puckett) argues:

It is hard to imagine an appeal more unsuitable for affirmance without opinion under Fed. Cir. R. 36 than this one.

The petition makes two primary arguments:

  1. If the Federal Circuit’s judgment is based upon new or alternative grounds not stated by the PTAB, then it must write an opinion.  Although the reason for a judgment without opinion are not directly discernible, the petitioner here suggests that it was likely based upon theories first espoused by the court and respondent at oral arguments — sufficient to form a prima facie conclusion that the judgment relied upon new or alternate grounds.
  2. LSI urges the en banc Court to grant rehearing to decide whether this Court can ever affirm a PTAB IPR decision without opinion. See 35 U.S.C. § 141 (in USPTO appeal, Federal Circuit “shall issue to the Director its mandate and opinion . . .”) (emphasis added). See also Crouch, Wrongly Affirmed Without Opinion, Univ. of Missou. L. Stud. Research Paper No. 2017-02, Forthcoming 52 Wake Forest Law Review ___ (2017) (http://ssrn.com/abstract=2909007).

In offering the first weaker option, LSI gives the court an option in case it “may hesitate to open a floodgate of rehearing requests.”  Of course, there are only about a dozen R.36 decisions that are still within the court’s 30-day deadline for requesting rehearing.  (The Supreme Court has a 90-day deadline).  The stronger approach that I argue for: “LSI presents this argument here to preserve it for further appeal to the U.S.
Supreme Court if necessary.”  [Amicus support due within two weeks]

The underlying appeal center on the validity of Leak’s U.S. Patent No. 8,193,496 and 8,426,813 that cover gas-leak detection equipment and methods using a passive-IR camera and bandpass filter.  The primary issues were claim construction (“leak” and “normal operating conditions”) and motivation to combine in the ultimate obviousness conclusion.   The original brief began as follows:

The IPR proceedings below resulted in the creation of a dense factual record involving 24 declarations and 14 depositions. Almost all witnesses were scientists (many with Ph.D. degrees) having personal knowledge of the petroleum industry’s extensive efforts (and failures) to develop a commercially viable imaging system for detecting hydrocarbon gas leaks in the field. Most of these same witnesses also offered first-hand testimony of [the inventor] David Furry’s own efforts to solve the same technical problem. Several witnesses -top scientists from the largest petroleum companies – described the day in 2004 when Furry showed up at the industry’s “Scan Off” to demonstrate his “Hawk” camera against the industry’s then-best optical leak detection systems. These scientists, having dedicated years of work and countless resources to creating a commercially viable optical leak detection system, testified that they were completely surprised and astonished by the Hawk’s unexpected results. It was immediately apparent that Furry had solved an important technical problem that the petroleum industry had been unable to solve.

leaksurveysmeritsbrief

us08193496-20120605-d00001

 

About Dennis Crouch

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

20 thoughts on “First Rehearing Request Challenging No-Opinion Judgments

  1. In Microsoft Corp. v. Proxyconn Inc., 789 F.3d 1292 (Fed. Cir. 2015) the patent owner appealed the PTAB’s conclusion of obviousness. The patentee succeeded in getting the PTAB’s claim construction vacated (the first time this had ever happened, that the CAFC reversed the PTAB in an IPR). However, what the patentee got was a remand to the PTAB to reconsider in view of the new claim construction.

    The patent owner had argued in its briefs that remand was not legally possible, because the statute sets a two-year maximum time limit on IPRs, and that time had already run by the time the CAFC was considering the case. The CAFC did not even deign to address this argument in its opinion. It just remanded, statutory time limits be hanged.

    I mention this because it indicates that the CAFC is not overly fussy about statutory requirements when a rigorous application of said requirements might inconvenience the CAFC. I would be delighted to see them decide en banc, “gosh, we really do not have the statutory authority to issue Rule 36 judgments in PTO appeals,” but somehow I am not holding my breath waiting for that outcome.

  2. One problem with this case is that it appears [hotlink to the actual IPR decision needed] that the closest prior art may have been a prior PRODUCT. That is not prior art which can even be directly raised in an IPR, nor is an IPR equipped to deal with that kind of prior art. It can only be raised indirectly by published literature about the product, or by admissions by the patent owner.

    1. P.S. Well-run companies do keep libraries of authenticatable published service manuals and advertising literature on their prior products for patent-defensive purposes. Presumably its disclosure in the IPR would require either compliance by a patent owner with a disclosure duty, or obtaining a special discovery order from the APJ, assuming that the patent in the IPR had not been sold to a PAE so that the company with that prior art would need a third party subpoena to get it? An interesting issue.

  3. PER CURIAM (Judge Left, Right, and Center, Circuit Judges).

    We AFFIRM today because we see no error in the PTAB’s assessment of the facts and application of the law.

    COSTS

    Taxable costs in favor of Appellee.

    1. My question also. I.e., why would not this [4 above]* be a sufficient “mandate and opinion” to comply with that statutory requirement?

      *Adoption on appeal of the fact findings and legal conclusions below. [If those were made below, even if the appellant disagrees with them.]

    2. I tend to agree, and this should be what the Court puts out instead of “unpublished” or “non-precedential” opinions. If the opinion below is so well explained that the reviewing court agrees with it completely, then this is all that is needed.

      If the reviewing court thinks some tweaks, revisions or overhauls are needed then the opinion with the tweaks, revisions or overhauls must be citable precedent. If the law was so crystal-clear that no new precedent is being made, then the board or court being reviewed would have been much less likely to have its opinion need tweaking, revision or overhauling.

  4. Correct me if I’m wrong but if the ambit of the claim is wide enough to include something obvious then the claim is bad. So if what was claimed was “A camera”, its scope would be wide enough to embrace not only a Furry Hawk but also an Old Lemon. Les, you show me the claim in suit and I assume it embraces the Furry Hawk but that tells me Sod All about whether it also embraces subject matter that was obvious.

    How shall I know that the claim scope is clear of any obvious subject matter?

    1. Max –
      I don’t know what a Furry Hawk is nor an Old Lemon, nor can I verify that a claim to a camera would read on either of them.

      You know as well as I do that obviousness is in the eye of the beholder. I can tell you that getting a U.S. examiner to agree that a claim is not obvious is never easy. In the present case, the testimony (based on the summary provided above) makes it clear (to me at least) that the solution to the problem was not obvious to real people of at least ordinary skill in the art. Since the claims issued, I can only assume they were fairly judged to not be obvious.

      But you know all that too. So, go on then. Spring what ever trap you have set for me.

  5. What part of ” Several witnesses -top scientists from the largest petroleum companies – described the day in 2004 when Furry showed up at the industry’s “Scan Off” to demonstrate his “Hawk” camera against the industry’s then-best optical leak detection systems. These scientists, having dedicated years of work and countless resources to creating a commercially viable optical leak detection system, testified that they were completely surprised and astonished by the Hawk’s unexpected results. It was immediately apparent that Furry had solved an important technical problem that the petroleum industry had been unable to solve.”

    Why does the link to U.S. Patent No. 8,193,496 provided not satisfy your interest in claim language?

    Do you not find to be sufficient summary of the state of the prior art?

  6. Okay, so perhaps what’s worse than an empty Rule 36 Judgment is an “opinion” that only presents one side’s story, contains no discussion of the prior art, and doesn’t provide a representative claim so we could all see what is being fought over.

    Like this particular blog post.

    1. A method of visually detecting a gas leak of any one or more chemicals of a group of predetermined chemicals, the gas leak emanating from a component of a group of components in different locations, the method comprising:
      aiming a passive infrared camera system towards the component, wherein the passive infrared camera system comprises:
      a lens,
      a refrigerated portion defined by the interior of a Dewar flask, the refrigerated portion comprising therein:
      an infrared sensor device; and
      a single filter configuration comprising at least one fixed optical bandpass filter, each filter fixed along an optical path between the lens and the infrared sensor device, wherein at least part of the aggregate pass band for the single filter configuration is within an absorption band for each of the predetermined chemicals and wherein the aggregate pass band for the single filter configuration is at least about 200 nm; and
      a refrigeration system adapted to cool the refrigerated portion, the refrigeration system comprising a closed-cycle Stirling cryocooler;
      filtering an infrared image associated with the area of the gas leak under normal operating and ambient conditions for the component with the at least one optical bandpass filter;
      receiving the filtered infrared image of the gas leak with the infrared sensor device;
      electronically processing the filtered infrared image received by the infrared sensor device to provide a visible image of the gas leak under variable ambient conditions of the area around the leak; and
      visually detecting the leak based on the visible image under the variable ambient conditions.

    2. MM might enjoy this vox piece on mr. trump having a disorder. Anon might as well. Seems some people in the community only consider disorders to be disorders when the person has severe troubles because of it. Other people think that’s the wrong way to look at it, and rather, more often, the disordered people are causing other people problems.

      link to vox.com

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