Nature Simulation Systems Inc. v. Autodesk, Inc. (Fed. Cir. 2022)
In its January 2022 decision, the Federal Circuit sided with the patentee in this indefiniteness decision. Nature Simulation Sys. Inc. v. Autodesk, Inc., 23 F.4th 1334 (Fed. Cir. 2022). Judge Newman wrote the majority opinion and gave deference to the USPTO examiner. During prosecution, the examiner had suggested a particular amendment that ended up being a bit confusing. Judge Newman concluded that some deference should be given to the examiner in this situation. Judge Dyk dissented and argued that indefiniteness should be decided as a question of law from an objective perspective–not whether the examiner gave the OK. Autodesk then petitioned for rehearing on the question of deference.
In response to the rehearing petition, the panel has issued a new decision continuing to uphold the patent validity, but deleting all reference to examiner deference.
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The following was deleted from the opinion:
Actions by PTO examiners are entitled to appropriate deference as official agency actions, for the examiners are deemed to be experienced in the relevant technology as well as the statutory requirements for patentability:
We presume that an examiner would not introduce an indefinite term into a claim when he/she chooses to amend the claim for the very purpose of putting the application in a condition for allowance.
Tinnus Enters., LLC v. Telebrands Corp., 733 F. App’x 1011, 1020 (Fed. Cir. 2018). See also PowerOasis, Inc. v. TMobile USA, Inc., 522 F.3d 1299, 1304 (Fed. Cir. 2008) (stating that PTO examiners are “assumed to have some expertise in interpreting the references and to be familiar from their work with the level of skill in the art and whose duty it is to issue only valid patents.” (quoting Am. Hoist & Derrick Co. v. Sonra & Sons, Inc., 725 F.2d 1350, 1359 (Fed. Cir. 1984) (overruled on other grounds))).
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I believe that Judge Newman is currently the longest serving federal appellate judge in regular service. She took her oath of office in February 1984 after being nominated by President Reagan and confirmed by the U.S. Senate on a voice vote. She is 95 years old.