27 thoughts on “Patent PTAB Precedent 1998-2021

  1. 8

    Such a special treat it is . . . to watch the ebb and flow of the cancers of innovation over the years . . .

    (thanks for the excellent video Dennis)

  2. 7

    Wow, why is KSR so frequently cited ? I’m surprised, I mean, KSR wasn’t all that loaded with nuggets. Is it b/c of the “finite number of known solutions” clause ?

    1. 7.1

      more likely the “obvious to try” (shallow) reasoning.

      One thing about KSR that IS overlooked is the statement of (emphasis added), “Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, for patents combining previously known elements, deprive prior inventions of their value or utility.”

      This tends to be taken ONLY in an anti-patent sense, whereas it could — and likely should – be taken as augmenting the power of earlier patents, perhaps through a stronger Doctrine of Equivalence position.

      1. 7.1.1

        Well, its outta my league, b/c even lil ole me can see that it takes a superduper jurist to be able to predict inventions which would occur” in the ordinary course without real innovation.” Clearly, the author of that one has an elevated sense of clairvoyance to be able to prophesize what inventions would have just occured (presumably by a breathing human in the future, person unknown, place unknown). haha, it admits of hinsight, b/c the jurist who wrote that is hinting that they can determine what would have otherwise occured, but for that pesky inventor who filed a spec.

        “obvious to try”… added nothing.

        “Combining previoulsy known elements”…… haha, every invention is a combination including that which was previously known. I’d be curious what was in their head when the notion that “a subsequent invention can deprive prior inventions of their value or utility” , ha ha ha. Ok, I can see it where one invents a new method of petro cracking, which renders existing refineries to have less value, compared to the new development (hypothetically, use HF as catalyst, or whatever). Yea, it is painful when a huge capex is made, then some inventor comes along and renders the plant to have less value. Kinda like, when Henry Ford put the horse and carriage makers out of business. Its the American way, boo-hoo to the big guys, they just can’t take the pain of having anyone else to one-up them.

        I sense these folks’ posterity is going to suffer in the future (emulating their clairvoyance myself) , particularly when we need creative problem solvers, for future serious problems we’ll be facing. But, voila, the inventors are GONE baby, they treated them too poorly. Karma !!

      2. 7.1.2

        But I’m also a huge fan of the “new function” test. I think when a new combination of previously-known elements is capable of a function not taught in the prior art, it is strong indicia of Invention. (combine glycerine with HNO3, the new function being able to blow holes in mountains (Hoosack Tunnel, & cet.). In KSR, I didn’t see any new function.

  3. 6

    Dennis, if KSR is now the leading citation of the PTAB, has it ever been applied in any DESIGN patent case? [As far as I am aware the Fed. Cir. has never either cited or distinguished that Sup. Ct. controlling 103 decision in any of its design patent or patent application appeal decisions, even though the identical statute applies.]

    1. 6.1

      Maybe you have answered this before, Paul, but does your penchant desire to (perhaps woodenly) apply ALL Case Law include the case law of 35 USC 101?

      Why or why not – has it been made explicit that 35 USC 101 does not fall within 35 USC 171 (or perhaps excused through 37 CFR 1.151)?

      I ask — before I embark (yet again) on calling on the typical resident design patent experts to disabuse you of your gallant alternative energy source through the atmosphere hunt.

      1. 6.1.1

        This also may interest our resident denier of patent law terrain, vis a vis MPEP form paragraph ¶ 15.42: Visual Characteristics (emphasis added)

        The design for an article consists of the visual characteristics or aspect displayed by the article. It is the appearance presented by the article which creates an impression through the eye upon the mind of the observer.

  4. 5

    For some of us who predate the social media era, watching complex information like this video is too difficult. It’s over before we can see what is happening. Which was what happened in my case.

  5. 3

    Keller and Merck. When considering the facts at issue, the two most miscited (non-101) cases by the PTAB. Merck and Keller laid fallow for 20 years old before they came out of nowhere to make the list in 2008. They stood aside (like every other non-101 cases) when the eligibility decisions hit, but they are starting to creep back up again.

    I noticed Jung made its way in there at the end. That is another case that is badly-applied by the PTAB. Keller, Merck, and Jung all involve special sets of facts that are almost never found in the appeals in which these cases are cited by the PTAB. It is as if the APJs never read the original decisions.

    1. 3.1

      I agree Wt — and for as much as the APJ’s feel willing to employ ‘pincites’ without regard to context, examiners (often — FAR too often) do not even recognize the concept of context, nor how to actually apply case law to a new set of facts of a given examination.

      1. 3.1.1

        examiners (often — FAR too often) do not even recognize the concept of context, nor how to actually apply case law to a new set of facts of a given examination
        The vast majority of examiners don’t have a legal degree so they have some excuse. However, MPEP 2144 gives the some guidance with the following statement:
        When considering obviousness, Office personnel are cautioned against treating any line of reasoning as a per se rule. … Office personnel may invoke legal precedent as a source of supporting rationale when warranted and appropriately supported. See MPEP § 2144.04.
        This from MPEP 2144.04:
        As discussed in MPEP § 2144, if the facts in a prior legal decision are sufficiently similar to those in an application under examination, the examiner may use the rationale used by the court.
        In other words, the facts (i.e., what you describe as “context”) must be similar.

        APJs, however, do not get the same leeway that an examiner does. They SHOULD know better because they are an attorney who went to law school. Generally, I find APJs are far worse than examiners. In suspect many of them just cut and paste from the work product of other APJs without doing the necessary work (i.e., comparing the facts/context). What would stop this would be negative consequences for them doing so. However, an APJ is not going to get sanctioned by a court. If an attorney, before a district court judge, miscited some of these cases like many APJs do, there would be he-ll to pay. APJs, however, are insulated in a way that their (bad) actions rarely have (negative) consequences.


          Generally, I find APJs are far worse than examiners.

          Interesting. We work in very different art fields, to be sure, so I do not have a lot of occasion to read PTAB opinions that are most likely to interest you. I am routinely struck, however, by the high quality of the work done by the APJs whose work product I have occasion to read. These people routinely do an excellent job of applying the law to facts.

          If I had to articulate a gripe about the PTAB opinions that I read, it would be that the APJs seem to have a finger on the scale for the examiner at fact finding. That is to say, if the record contains a mix of evidence—some for the applicant, some against—you can fairly count on the PTAB to give more credit to the evidence on which the examiner relies, even when that evidence is objectively weaker (less statistical power in the studies, published in lower ranked journals, etc) than the applicant’s evidence. Once you arrive at a set of fact-findings, however, I generally find that the PTABs application of law to facts is fairly impeccable.

          Evidently this is just another instance where the AU 1600 & 1700s seems a world apart from the rest of the USPTO.


            I am routinely struck, however, by the high quality of the work done by the APJs whose work product I have occasion to read. These people routinely do an excellent job of applying the law to facts.
            IPRs or ex parte? It makes a difference.

            it would be that the APJs seem to have a finger on the scale for the examiner at fact finding
            Examiners find facts? My experience is that examiner’s make conclusions based upon facts that they (very frequently) don’t share. Regardless, the Board always errs on the side of the Examiner — even when the do make facts.

            All that being said, I don’t worry about the facts too much. If the facts are even close, you probably shouldn’t be appealing anyway unless it is a bet-the-company type of application and you really need broad claim scope. What I worry about is all of the conclusions of law that are made in which the APJs make up the facts the underlie the conclusion of law and/or the misapply the law.

            Evidently this is just another instance where the AU 1600 & 1700s seems a world apart from the rest of the USPTO.
            It is a TOTALLY DIFFERENT WORLD. The inventions are very different. Things are claimed differently. What works there doesn’t necessarily work elsewhere. The level of skill of the parties involved is different. It is probably more so 1600 than 1700 since some of 1700 overlaps with more physical (as opposed to purely chemical and biological) inventions.

            Even amongst the other tech centers, there is a wide variation. Examination in TC 2800 is much better than 2100, which is much better than 3600.


              IPRs or ex parte?

              Both. I am routinely impressed by the high quality of work product in both IPR and ex parte appeals to the PTAB in my line.

      2. 3.1.2

        And let us not forget that Examiners, as instructed by PTO Management, ignore new precedent (e.g., In re SurgiSil) until instructed otherwise.


          no progress then on your attempts to have the Office address that (very) on-point issue then, eh?

          Looking forward to your notice of when the Office DOES do their job.


            At this point, I’m not holding my breath. You’d think the PTO Management would be okay with very clear cut law, as opposed to the mess that is Section 101 law…..BUT NOOOOOO! (John Belushi tribute).

    1. 2.1

      There’s a literal playback speed button at the bottom right side.


      “What you “heard” is what people have expressed as their feelings.”

      Um we’re talking about intent. Their obvious intent is to file an outrageously broad claim, and then work their way through prosecution, or else have a nice lottery ticket (or both). That’s the “strategy” being employed. That’s not “feeeeeeelings”. It’s literal strategy.

      1. 2.1.1

        Thanks 6 – I played it quickly on my portable device and missed the “settings” icon.

        As to your other assertion – let’s NOT play ‘thread creep’ and have the conversation bleed into this thread. At a minimum then, maybe put a hyperlink to the discussion that we are having on that other thread.


            Meh, it may be Count Filtered, but even “….” Comments can be added to (just go up to the last instance that offers a “comment to” option)

  6. 1

    What was going on during that brief interval where Graham was the leading case?

    1. 1.1

      Seems to be just before KSR happened and there was a lot of bellyaching about citing to graham re 103’s. I might be wrong about that, but seems likely.

Comments are closed.