We have one remaining Supreme Court patent case this term: Minerva Surgical Inc. v. Hologic Inc. (Supreme Court 2021) on whether the court will maintain the doctrine of assignor estoppel.
The court has been deciding other interesting cases. Here are a few notes:
- Mahoney Area School Dist. v. B.L.: In this free speech case, the school district punished a high school student for her limited-distribution Snapchat post stating “Fuck school fuck softball fuck cheer fuck everything.” The post was copied and shared with school officials who suspended her from the cheer squad. In its decision, the Supreme Court found that the school overreached in its pursuit of “teaching good manners” since the speech here was “under circumstances where the school did not stand in loco parentis. . . . [and] the school has presented no evidence of any general effort to prevent students from using vulgarity outside the classroom.”
- Van Buren v. US: In this computer-hacking case, the Supreme Court narrowly interpreted the Computer Fraud and Abuse Act in cases involving prohibited “exceeding authorized access.”
- Lange v. California: In this criminal procedure case, an officer flashed his lights at Lange who did not stop but instead to his house, entered his attached garage and began closing the garage door. The Office prevented the garage from closing and then conducted a sobriety test. Lange was over the legal limit and was arrested. The lower courts found no problem with the Officer’s warrantless invasion of the home based upon a categorical rule, but the Supreme Court has vacated — holding that a fleeing suspect does not always permit home invasion. “An officer must consider all the circumstances in a pursuit case to determine whether there is a law enforcement emergency. On many occasions, the officer will have good reason to enter—to prevent imminent harms of violence, destruction of evidence, or escape from the home. But when the officer has time to get a warrant, he must do so—even though the misdemeanant fled.”
- National Collegiate Athletic Assn. v. Alston: In this antitrust case, the Supreme Court found that the NCAA cannot prohibit schools from providing education-related benefits (internships; scholarships; laptops; musical instruments; etc.). The case did not decide the issue of direct payment for playing.
- Fulton v. City of Philadelphia: In this free-exercise-of-religion case, the City of Philadelphia barred Catholic Social Services (CSS) from serving as a private foster care agency because the organization categorically refused to certify any same-sex couples to be foster parents based upon CSS’s religious doctrine regarding marriage. The Supreme Court held that the City’s action violates CSS’s religious freedom.
– DC
Have to wonder if this was even true…
“so I will ask it here to see if those smarter than I am might know the answer.”
… and below — to Greg’s “what I can see” is the pitfalls of only conversing with those that would play patty-cake with you.
Greg is not only easily wrong — his path would be sanctionably wrong.
And yet he continues in error along each of the several corrections that I have posted, and in essence “agrees to disagree in polite fashion” with the unlikely person that attempts to hold his feet to the fire (the erstwhile shifting historical pseudonymed one).
Totally off-topic, but discussion in another thread about the USPTO’s international harmonization efforts made me wonder about something, so I will ask it here to see if those smarter than I am might know the answer.
Imagine that the next USPTO Director promulgates a policy memo along the following lines (for present purposes, assume all necessary notice & comment formalities are observed): “starting on XX December 2021, when an applicant submits a properly grantable PPH petition showing an allowance from the EPO, corresponding U.S. claims shall be allowed without further examination.” In other words, the USPTO in this hypothetical is outsourcing examination to the EPO and saying “if it’s good enough for them, then it’s good enough for us.”
(1) What provisions of U.S. law (please cite statute or case law, as relevant)—if any—make this policy illegal? (2) Who—if anyone—has standing to bring challenge against such a policy?
One does not need a case cite to point out that the Director’s ability to grant a US patent hinges upon a determination of an application under US law, and thus, another Sovereign’s decision under the laws of that Sovereign are not sufficient.
35 usc 131 ?
In my hypo, an examination has been made. The EPO will have examined for utility, novelty, nonobviousness, clarity, and enablement. The USPTO will have examined the claims to determine that they do not extend beyond what the EPO had allowed. One cannot say, in this hypo, that the Director has not caused the application to be examined, so §131 is not violated.
“One cannot say, in this hypo, that the Director has not caused the application to be examined, so §131 is not violated.
Absolutely NOT correct.
Not only was the foreign Sovereign’s application examined under the different laws of that foreign Sovereign (mere ‘parallel’ to concepts of anticipation, obviousness and the like are NOT enough), it cannot be stated — correctly — that whatever foreign examination was carried out was in fact carried out DUE to the US Director causing it.
Greg is merely doubling down on his bad hypo.
” One cannot say, in this hypo, that the Director has not caused the application to be examined”
Not sure one can say that the Director has caused the application to be examined.
Two points:
1) As I said above, in the hypo the “properly grantable PPH petition” language of the memo still requires that someone in the USPTO check that the pending US claim scope does not exceed the allowed EP claim scope. That is an “examination,” albeit a rather brief and cursory one. As we all know, however, every day dozens of applications (for better or worse) get notices of allowance after examinations that cannot (even charitably) be characterized as more than “brief and cursory.” In other words, brief and cursory is not obviously a violation of §131.
2) Unless someone can identify a party with standing to challenge the memo described in my hypo, it scarcely matters what laws would be violated by the memo. As we saw in Thryv, Inc. v. Click-to-Call Tech. 140 S. Ct. 1367 (2020), code provisions without judicial review as essentially hortatory, not legally binding.
Comparing claims to claims is not an examination. Pauline, she would disagree with you.
How would she disagree with me? Who would bring the suit to provide Judge Newman the occasion to consider the question?
An accused infringer?
An accused infringer has no standing to sue the USPTO on the grounds that examination was deficient. Syntex (USA) Inc. v. USPTO, 882 F.2d 1570 (Fed. Cir. 1989).
Why would an accused infringer attempt to sue the USPTO?
I missed your “bring the suit.” The patent owner would “bring the suit” that brings the question before Pauline.
Greg is having a bit of run, but also (conveniently) is forgetting that there are two parts (to 35 USC 131):
With emphasis added —
The Director shall cause an examination to be made of the application and the alleged new invention; and if on such examination it appears that the applicant is entitled to a patent under the law, the Director shall issue a patent therefor.
Greg tries to mince that “examination” is a fluid concept, and that somehow the proper PPH petition indicates a satisfactory examination.
He clenched tight his eyes though to how that examination is constrained with (6’s favorite parse) entitlement “under the law.”
As I noted, patents being a Sovereign-centric item, the “under the law” here — for a US patent grant — is US patent law. No amount of PPH (proper petition or otherwise) can allow a different set of Sovereign laws to substitute for US patent law.
The most hilarious thing about this exchange though is the fact that it is my stalker, he who enjoys a Shifty Historical pseudonym penchant, that is taking to task Greg “I Use My Real Name But Block Those Who Are Mean To Me” DeLassus.
Clearly, Greg thinks that he has “set a trap” with the layers of PPH and standing (and look closer at the phrasing of the standing question: he is asking explicitly about an action directly against the USPTO, and NOT as a collateral matter).
The standing issue is an interesting wrinkle, and in view of the actual post here (Non-patent law Supreme Court cases), it should be recognized that the Supreme Court has just this past week rendered a holding in relation to standing.
See:
link to scotusblog.com
And here for the case itself:
link to supremecourt.gov
The patent owner would “bring the suit” that brings the question before [the CAFC].
How would the patent owner have standing to contest a notice of allowance? What is the “harm” here that the CAFC is supposed to redress?
Read the Syntex case that I cited. I will quote its rule for you:
So, let us look at §131. Here it is, in its entirety:
The only thing promised to applicants in this statute is that they receive a patent “if… it appears that the applicant is entitled to a patent.” In a world where the Director announces that she is satisfied that applicant X is entitled to a patent, but refuses to issue the patent, then the applicant has a justiciable right under §131 that a court can enforce. In a world, however, where the Director announces that she is issuing a patent to applicant X after a process that X does not regard as a sufficient examination, there is no justiciable right accruing to X that a court can enforce.
Section 131 entrusts judgments about the sufficiency of the examination to the Director. Under the terms of §131, the applicant simply does not get a say in the question of whether the examination is sufficient. Therefore the applicant lacks standing to challenge the memo in my hypo, just like an alleged infringer lacks standing to challenge the memo.
Ask oneself this: if there is standing to contest over-easy examination standards at the USPTO, why has no one yet contested the Iancu §101 examination memo? When the PTO opened that memo for public comment, the EFF fairly flooded the notice with comments urging that the proposed examination standards not be adopted. Iancu promulgated them quite regardless, but the EFF have never challenged them in court.
Why not? If a patent applicant has standing to sue the USPTO to demand more rigorous examination, then why does the EFF not simply file a patent application, prosecute it to allowance, and then use the allowance as a vehicle to challenge the Iancu examination materials?
The reason why not is that the patent applicant does not have standing to challenge the rigorousness of examination. That is a matter committed to the Director’s discretion. There is no scope for a court to require the PTO Director to do any more by way of examination than the Director chooses to do.
Huh? You asked “Who would bring the suit to provide Judge Newman the occasion to consider the question?”
If you are looking for a party with “standing,” an accused infringer could file a declaratory judgment action in District Court. But in another scenario, as I said, the patent owner may “bring the suit” that presents the question to Pauline.
Patent Owner files suit for infringement in District Court. Accused infringer responds that the patent is invalid because it was never examined in accordance with 35 usc 131. Accused infringer appeals an adverse judgment of the District Court to the Federal Circuit. By luck of the draw, the case is assigned to a panel that includes Pauline.
And there you have it. Judge Newman considers the question.
A.L.,
There is a bit of nuance to Greg’s question, as he is aiming for standing to challenge the rule directly, as opposed to as a collateral manner.
There is a further interesting wrinkle, based on the fact that the PPH path is not a substantive matter of law, but merely procedural.
See Tafas.
Bottom line is as I first posted. Examination for a US patent must be made for meeting US law.
The mere “meh, I so declare” by the Director is an attempted substantive change, and per (at least) Tafas, is ultra vires, arbitrary (and thus falls under the APA as well), — and critically — any attorney who would act with such a patent to bring suit (for the patent holder) would quickly understand this as it would follow from the mandatory due diligence prior to filing suit.
Such a clear violation of law could bring sanctions against the filing attorney.
P.S.: nice to see your growth.
Patent Owner files suit for infringement in District Court. Accused infringer responds that the patent is invalid because it was never examined in accordance with 35 usc 131. Accused infringer appeals an adverse judgment of the District Court to the Federal Circuit.
I do not think that this is possible.
1) The CAFC reviews judgments, not opinions. Plastic Omnium v. Donghee America, 943 F.3d 929, 938 (Fed. Cir. 2019). By the time the suit you imagine is filed, the patent had already granted, so the USPTO memo is beside the point. Setting aside the PTO memo is neither necessary nor sufficient to hold the patent invalid, so the setting aside of the memo is outside the court’s jurisdiction in deciding the case in front of it.
2) 35 U.S.C. §282(b) defines the grounds of invalidity that can be raised in an infringement suit and “this patent was not properly examined” is not among them. If the patentee’s attorneys are on the ball, they will move to have this particular contention struck from the record as irrelevant. At that point, the issue will not even be in the record for the CAFC to consider on appeal.
As to (1), you inferred, but I did not imply, that defendant challenges a USPTO memo. Defendant challenges validity of a US patent. The judgment of the District Court is that the patent has not been shown to be invalid. That is the judgment reviewed by the Fed. Cir.
As to (2), I agree that the patent “was not properly examined” is not listed as a defense under Section 282. Nor does that Section identify the statutory subject matter prong of Section 101 as a defense, which is why in a District Court infringement suit a patent cannot be shown invalid due lack of statutory subject matter. Wait, what? It can? But what, precisely, is the language in Section 282(b) that says Section 101 can be a defense?
The Section 282(a) presumption of validity is based, in large part, on the presumption that the administrative agency did the job Congress set out for it. The hypo you presented replaces the examination system with less than a registration system. Call it legal realism if you like, but any effect that is contrary to the statutory framework for patents — which includes but is not limited to Section 131 — might be subject to quite a few avenues of court review. I’ve identified one.
I did not imply… that defendant challenges a USPTO memo. Defendant challenges validity of a US patent. The judgment of the District Court is that the patent has not been shown to be invalid. That is the judgment reviewed by the Fed. Cir.
Fair enough. You were responding in more literal earnest than I had understood. Of course you are correct that Judge Newman would be free to say that such an examination is not good enough. My point was that her (imaginary) CAFC panel would have no jurisdictional power to do anything about it. I gather that we agree on both points.
The Section 282(a) presumption of validity is based, in large part, on the presumption that the administrative agency did the job Congress set out for it.
Not really. As Ron Katznelson has shown, the requirement that invalidity be proven by clear & convincing evidence was applicable even back when the U.S. did not have an examination system.
The hypo you presented replaces the examination system with less than a registration system.
Not at all. In my hypo, most applications would proceed exactly as they do now (after all, only a tiny minority of U.S, applicants arrive at the USPTO with an EPO allowance already in hand). Even with the applications that make use of my imaginary PPH petition rule, no claim would get to grant that had not already been passed by an examiner on utility, novelty, obvious, clarity, & enablement grounds.
In other words, this is still definitely an examination system that Iam hypothesizing. The only difference is that the work of examination will have been done (in a few instances) by EPO examiners instead of USPTO examiners.
“My point was that her (imaginary) CAFC panel would have no jurisdictional power to do anything about it.”
Well, first, you will need to rebut or at least respond to the observation that the language of Section 282 does not capture all potential defenses.
Aside from that, I do not know who Ron Katznelson is. I do know who all the deciders are. Those who decide what they can review and what “examination” means.
[Y]ou will need to rebut or at least respond to the observation that the language of Section 282 does not capture all potential defenses… I… know…who decide[s] what they can review and what “examination” means.
Ha! Fair enough. I confess that I consider it absurdly implausible that the CAFC might invent a new §282 defense out of whole cloth as you confabulate. If I am honest, however, my hypo is only slightly less absurdly implausible. Who am I to strain at your mule but pass my camel?
“Who am I to strain at your mule but pass my camel?”
Translation: “I am politely ignoring any point that you have attempted to make.”
Lol – get used to it.
“As we saw in Thryv, Inc. v. Click-to-Call Tech. 140 S. Ct. 1367 (2020), code provisions without judicial review as essentially hortatory, not legally binding.”
Care to unwrap that a little bit?
It’s not as if you haven’t misrepresented case law before…
Still not sure how you think “starting on XX December 2021, when an applicant submits a properly grantable PPH petition showing an allowance from the EPO, corresponding U.S. claims shall be allowed without further examination” satisfies the requirement of section 131 that the Director shall cause an examination of the application to be made. Unless the examination has already begun.
In the hypo the “properly grantable PPH petition” language of the memo still requires that someone in the USPTO check that the pending U.S. claim scope does not exceed the allowed EP claim scope. That is to say, a petitions officer must examine the U.S. claims to confirm that their scope does not exceed the scope of the allowed EP claims. That is an examination that the Director will have caused to be done.
It is it though an examination as required (under the law — and that being US law for the designation of US patent).
Greg insists on trying to treat procedural mechanisms as if they were fully interchangeable with substantive authority (again, see Tafas).
Is the PPH used much? I have always supposed that the differences between USA and RoW are simply so great that few Applicants are content with the same claim set in both territories. And when will that ever change?
Take M+F language, for example. Outside the USA it’s what you go for, when seeking maximum width. And who doesn’t want that, in both territories.
So how much difference, Greg, would it make, in practice, if your imagined Memo comes to pass?
[H]ow much difference… would it make, in practice, if your imagined Memo comes to pass?
Very little, I expect. As I mentioned up-thread, “most applications would proceed exactly as they do now (after all, only a tiny minority of U.S, applicants arrive at the USPTO with an EPO allowance already in hand).” The applications that reach grant on the basis of my imagined policy memo would be an infinitesimal percentage of total U.S. grants, in all likelihood.
I was simply interested in exploring how much “harmonization” the USPTO could do (if minded so to do) all on its own, present initiative, without additional Congressional action. Based on the answers I have seen so far, I conclude that the USPTO could—right now, with no additional Congressional action—essentially harmonize entirely with every jurisdiction with whom we have existing PPH treaties in place. I gather, however, that the consensus view is that I am 100% wrong about that.
Greg, indeed. But what we see currently is Strongman Government simply enacting some provision or other and in effect challenging the establishment with an insouciant “If you don’tlike it, what are you going to do about it, then?” Consider, Trump. Johnson, Orban in Hungary, Erdoyan in Turkey, not to mention Xi in China and both the present and immediate past-President of the EPO.
So perhaps your idea is not so outlandish as everybody here thinks.
Here, we have those thing called checks and balances.
For an on-point demonstration, I invite you to re-read (because I know that you have been around and read in the original timeframe) Tafas.
And please stop coddling Greg with politeness – you are just not doing him any favors.
I don’t think the various PPH’s are used a lot. They are used some. And from what I read/hear/see they are effective as the allowance rates of applications that use one of the PPH’s are higher than the overall allowance rate of regularly examined U.S. applications. I suspect that is because PTO management has made it clear it wants the PPH’s to be used and to be successful, so the usual game playing first class tickets on the RCE express nonsense that goes on in regular examination is tamped down.
As for the examination the applications in the PPH’s get, it is as far as I can tell according to Rule 104. It goes beyond just checking that the claims in the US “correspond” to the allowed claims from the other jurisdiction. As Rule 104 is the implementing regulation of section 131, I just can’t see how a simple check to make sure the claims are the same would satisfy the requirement that the Director cause an examination of the application to be made.
As for how much harmonization the USPTO can do, I don’t think it can do much. Yes, it would “improve” examination if the examiners considered the prior art from the corresponding ROW applications, but they should be doing that anyway without the need for lots of “negotiations” amongst the patent offices.
I think that one angle that Greg wants to see IS a “One World Order” global patent (and I chalk that up to Greg’s ‘Big Pharma’ predilections.
However, there is no such thing, and no matter the treaties of comity, patents are — and remain — a Sovereign Centric item.
To obtain a US patent, examination must be under US patent law.
As for the examination the applications in the PPH’s get, it… goes beyond just checking that the claims in the US “correspond” to the allowed claims from the other jurisdiction.
Definitely. Under the rules that exist in reality and not in my imaginary scenario, PPH applications get examined with all the same rigor (which—depending on the examiner in question—may not be all that rigorous) as any other application. That is why I had to posit the imaginary PTO memo to make the question intelligible.
As Rule 104 is the implementing regulation of section 131, I just can’t see how a simple check to make sure the claims are the same would satisfy the requirement that the Director cause an examination of the application to be made.
Section 131 is binding on the PTO, but Rule 104 is not. The PTO made Rule 104, and they can (so long as the APA niceties are observed) unmake it. The only constraint is that however they modify Rule 104 still has to comply with §131. I have not yet seen anything on this thread that convinces me that the change to Rule 104 implicit in the imaginary memo would run afoul of any construction of §131 that a competent tribunal might give it.
“The PTO made Rule 104, and they can (so long as the APA niceties are observed) unmake it. ”
Do you have a cite for the ability to unmake? Or do you mean another round of notice and comment rulemaking to rescind? If so, why would they do that?
In my hypo, I specifically provided that the necessary notice-&-comment formalities be observed, so—yes, a round of notice-&-comment is contemplated.
As for why one might wish to modify Rule 104, this is a very fair question. It is not obviously a productive use of resources to have a U.S. examiner examine for novelty/obviousness/utility/clarity/enablement, and an EP examiner conduct a largely reduplicative examination of the same invention, and a Chinese examiner (etc. and so forth)…
Rather than waste those resources on reduplicative scrutiny of the same facets of patenting, it would make sense to have jurisdictions with high quality examination systems trust each other’s work products. That is to say, it would be a more effective/efficient system if an EP (or JP, or KR, or CA) allowance could be redeemed in the USPTO for a US allowance (of the same claims).
I wondered to what extent the USPTO could pursue that vision already (i.e., without further congressional action). That is why I posed the question. Obviously the question has no imminent practical significance (unless Pres. Biden should honor me with a nomination to the vacancy in the Director’s office).
There was a time the Office was updating the rules and proposed striking Rule 104 because it is entirely directed to internal operating procedures. The villagers holding the stakes — the “stakeholders” — would have none of that. I fear your hypo would be still-born.
“There was a time the Office was updating the rules…”
LOL – as already noted, there was ALSO a time the Office attempted a power grab to change substantive rules and was rebuked by the courts.
While my shifting historical pseudonym friend appears to not recognize Katznelson, he most assuredly remembers Tafas (at least one would earnestly hope).
[Y]our hypo would be still-born.
Almost certainly, yes. That is the fun of a hypo—it is not constrained by political realities. I expect, however, that you are correct that my hypo will never actually be enacted.
There was a time the Office was updating the rules and proposed striking Rule 104…
Once again, just to be clear, my hypo is nothing like striking Rule 104. Even in a (wildly improbable) world in which my hypo were real, the overwhelming majority of applications would still be examined under the usual Rule 104 path.
“it is not constrained by political realities.”
Or in the instant case of Greg’s meandering, not constrained by legal realities either.
“The only constraint is that however they modify Rule 104 still has to comply with §131”
This is (and remains) pregnant with the implications that dooms Greg’s little hypo.
A US patent must conform to US patent law.
There simply is no such thing as a “World” equivalent (on the points of substantive examination).
How about this little nugget from Cedar Point Nursery v. Hassid which seems like it should be relevant to the topic of this blog:
“The right to exclude is “one of the most treasured” rights of property ownership. …According to Blackstone, the very idea of property entails “that sole and despotic dominion which one man claims and exercises over the external things of the world, in total exclusion of the right of any other individual in the universe.” 2 W. Blackstone, Commentaries on the Laws of England 2 (1766). In less exuberant terms, we have stated that the right to exclude is “universally held to be a fundamental element of the property right,” and is “one of the most essential sticks in the bundle of rights that are commonly characterized as property.” … Given the central importance to property ownership of the right to exclude, it comes as little surprise that the Court has long treated government-authorized physical invasions as takings requiring just compensation.”
Nice – and love the reference to “sticks in the bundle of rights.”
Yea; when I read, “sticks in the bundle of rights.” you came to mind.
I am still absorbing this case, but the crux here pivots on
Regulatory versus per se
link to thenation.com
For the case itself:
link to supremecourt.gov
OT – but related to the general view of “control” of PTAB judges (and how such already extant control was NOT a good thing):
at LAW360 (paywall)
PTAB Judges’ Bonus Structure Draws Scrutiny In New Report
Patent Trial and Appeal Board judges saw their average bonuses increase when they instituted patent reviews and decrease when they denied them, according to a new report looking at data during fiscal year 2016 that has sparked opposition from the U.S. Patent and Trademark Office.
Thanks. Another well researched and documented — and eye-opening — report by Ron.
As well as yet another indictment of the Death Squad PTAB.
Judges? Far from. Innovation executioners.
The NCAA better get ahead of it, because their days of free labor are clearly over soon. If they are clever, they will find ways for bodies other than their members to pick up the tab.
Another one that seems ripe to fall is the minimum age requirement for going pro….particularly in the NFL where there isn’t a European option.
Yes, this was ‘agreed to’ via collective bargaining, but it solely affects people who are *not* union members.
Interestingly enough, a family member just took that non-existent European option….
At 18-20 yro? That is, pre-draft eligible??
ah, sorry no – my bad. He’s 22, and was draft eligible. I was thinking more of the fact that there IS an American football option in Europe.
“Yes, this was ‘agreed to’ via collective bargaining, but it solely affects people who are *not* union members.”
Doesn’t matter. It was collectively bargained. Remember Maurice Clarett?
Yes not being able to play in the NFL for those prime years always seemed wrong to me.
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