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.
= = =
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))).
= = =
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.
I generally give great deference to Judge Newman’s opinions and always try to read her opinions carefully but have to disagree with her in this particular instance. Most of the examiners now are young, inexperienced, without a legal education, and operating without sufficient supervision since most senior examiners have left the building to work at home where it is cheaper. Back in the day, Judge Newman would be 100% in the right but things have changed dramatically in the Office. Bottom line: it depends on the examiner since primaries are really good but the newbies are clueless. (I was a newbie examiner and hope the Office gets better.)
At the Federal Circuit deference only applies in the direction of patent revocation. In other words decisions must give deference to the narrative that patents are bad. On the other hand if a PTAB judge says a patent is bad, that decision gets deference. On the rare occasion that a PTAB judges says a patent is not bad, that decision does not get deference, because deference to the bad paten narrative takes precedence.
How true that Josh. How true that.
It seems, as a matter of equity (detrimental reliance?), that an applicant should be able to amend claims as per an Examiner’s guidance, without the amendment later being judged to be in violation of 35 USC 112.
As for the “expertise” of Examiners, when I challenge an Examiner’s failure to properly determine the level of ordinary skill, I occasionally get the response from them that they themselves are operating as a person of ordinary skill. When I press for the case law or authority for this, I get crickets. I then inform them that if they are declaring themselves to be a person of ordinary skill, then they have to provide a declaration/affidavit setting forth the basis for their position. Their response: I have to talk to my SPE.
[A]s a matter of equity… an applicant should be able to amend claims as per an Examiner’s guidance, without the amendment later being judged to be in violation of 35 USC 112.
The instance in which a §112 challenge is being raised is an inter partes suit between the patentee and an alleged infringer. As between the two of them, the patentee had an opportunity critically to examine and accept the examiner’s proposed language, while the alleged infringer did not. It seems to me, therefore, that the equities should weigh against the patentee, rather than against the alleged infringer.
If there really is a defect in the claim language, the patentee actually had an opportunity to fix it. The alleged infringer did not. I do not see why we should hold the examiner‘s error (and the patentee’s) against the alleged infringer, when—among these three parties—the alleged infringer is the one least culpable for the defect in the claim language.
The applicant relied on the Examiner to their detriment. It is not equitable to blame the applicant, and the 112 issues should be resolved in favor of an interpretation that preserves the claim.
The applicant relied on the Examiner to their detriment.
More fool them. Caveat emptor.
How far does this principle extend? “The examiner told me this amendment wasn’t obvious in view of the prior art”?
I have had to counsel clients more than once that the amendments suggested by the examiner were problematic, for a variety of reasons.
Same here. Indeed, it seems a bit bizarre to me to hear a patent prosecutor taking the attitude that one ought presumptively to be able to trust an examiner’s judgment. Do you think that way when reading an office action? I know that I do not.
Certainly — but that misses the point here specifically that Office admissions can and should be held against the Office.
To pick up on ipguy’s “reliance” factor — and taking the opportunity to rub Greg’s (Dozen’s) nose in his prior views, the basket of personal property rights that is a patent (and under Oil States reformulation of Public Franchise), at GRANT, there is created FranchisOR/FranchisEE reliance expectations.
NO ONE is saying that a later challenge can NOT be made, but the act of GRANT has to mean something. Quid Pro Quo demands it. The Lockeian nature of turning an inchoate right (of a real person) into a full basket of enforceable legal rights demands it.
If you take the Examiner’s proposed amendment and the patent grants, then you’ve got all the “deference” you deserve. The idea that a baseless worthless amendment proposed by an Examiner can only be challenged under special circumstances or with super heightened evidence is absurd.
“The idea that a baseless worthless amendment proposed by an Examiner can only be challenged under special circumstances or with super heightened evidence is absurd.”
Nice strawman – did you have fun erecting that? Especially as I had just posted something completely different.
“If you take the Examiner’s proposed amendment and the patent grants, then you’ve got all the “deference” you deserve. ”
That’s kind of the point – funny though how you use quotation marks around the word ‘deference’ as if the law were somehow written (by Congress) differently than what it is. Perhaps (yet again) you are letting your feelings (anti-patent as they are) get in the way of posting about the law as it actually is.
The link to the January item is broken – perhaps this was the intended link:
link to patentlyo.com
Therein, the prior exchange between ipguy and myself is worth a reread.
Anon, I found that quote about “reversible error.
In Ruiz v. A.B. Chance Co., the Federal Circuit stated:
Some of our cases indicate that the failure to make explicit findings on the level of ordinary skill is not always reversible error. See, e.g., Kloster Speedsteel AB v. Crucible Inc., 793 F.2d 1565, 1574, 230 USPQ 81, 86 (Fed. Cir. 1986); Union Carbide Corp. v. American Can Co., 724 F.2d 1567, 1573, 220 USPQ 584, 589 (Fed. Cir. 1984); Chore-Time Equip., Inc. v. Cumberland Corp., 713 F.2d 774, 779 n.2, 218 USPQ 673, 676 n.2 (Fed. Cir. 1983). However, as we noted in Custom Accessories v. Jeffrey-Allan Indus., 807 F.2d 955 (Fed. Cir. 1986), in those cases, ‘it was not shown that the failure to make a finding or an incorrect finding on level of skill influenced the ultimate conclusion under section 103 and, hence, constituted reversible error.’ Custom Accessories, 807 F.2d at 963, 1 USPQ2d at 1201.
In my view, the Federal Circuit has acknowledged that the failure to make explicit findings on the level of ordinary skill is still reversible error where it is shown that the failure to make a finding or an incorrect finding on level of skill influenced the ultimate conclusion under 35 USC 103. On the implicit determination front, if an Examiner selects references to combine in an obviousness rejection, but fails to determine that the references actually reflect an appropriate level of skill, then the Examiner’s failure to demonstrate that the references reflect an appropriate level of skill influences the ultimate conclusion under 103, and is therefore reversible error (on the basis that reference(s) should not be combined in an obviousness rejection if they do not reflect an appropriate level of skill).
“ where it is shown that the failure to make a finding or an incorrect finding on level of skill influenced the ultimate conclusion under 35 USC 103”
How often does that happen? Client in the ranked shaving cream coupon arts wants to know.
“…if an Examiner… fails to determine that the references actually reflect an appropriate level of skill…”
What would be required to make this determination (i.e., what evidence and reasoning would the examiner have to provide to establish, by a preponderance, that the level of skill was sufficient to establish a reasonable expectation of success for the modification/combination)?
Don’t confuse motivation to combine with skill level determination. They are two separate things.
The USPTO does not want Examiners determining skill level. It’s just another way that Applicants can appeal an obviousness rejection. Instead, the USPTO made the policy decision that Examiners should “implicitly” determine skill level (which can still be appealed if you make the right argument).
The USPTO wrapped itself around Chore-Time Equipment, Inc. v. Cumberland Corp., 713 F.2d 774, 218 USPQ 673 (Fed. Cir. 1983), which provides that if the only facts of record pertaining to the level of skill in the art are found within the prior art of record, the court has held that an invention may be held to have been obvious without a specific finding of a particular level of skill where the prior art itself reflects an appropriate level. See also Okajima v. Bourdeau, 261 F.3d 1350, 1355, 59 USPQ2d 1795, 1797 (Fed. Cir. 2001). However, the USPTO ignores “where the prior art itself reflects an appropriate level”, and Applicants should be demanding that the Examiner demonstrate that the prior art cited reflects an appropriate level of skill. For nearly 4 decades, the USPTO has failed to provide any analysis mechanism by which Examiners can determine whether a particular reference reflects an appropriate level of skill. When faced with the argument, they are like deer staring into the headlights of an oncoming car.
“Don’t confuse motivation to combine with skill level determination.”
I’m not confusing them. My comment had nothing to do with “motivation to combine.”
“They are two separate things.” I’m aware of that. (Insert infinite eyeroll emojis here.)
“For nearly 4 decades, the USPTO has failed to provide any analysis mechanism by which Examiners can determine whether a particular reference reflects an appropriate level of skill.”
I will ask you again, what would be required to make this determination?
You’re talking about the level of skill being sufficient to establish a reasonable expectation of success for the modification/combination. The level of skill sufficient to establish a reasonable expectation of success for the modification/combination remains the level of ordinary skill in the art.
As for what would be required to make this determination, I’d like to hear your thoughts first on how an Examiner can demonstrate that a reference reflects the appropriate (i.e. ordinary) level of skill in the art.
It’s ok for you to admit that you don’t know. What’s not ok is for you to claim it’s reversible error for the examiner not to make the determination and complain that the PTO doesn’t require the examiner to make the determination or train them how to make the determination.
“…Applicants should be demanding that the Examiner demonstrate that the prior art cited reflects an appropriate level of skill. For nearly 4 decades, the USPTO has failed to provide any analysis mechanism by which Examiners can determine whether a particular reference reflects an appropriate level of skill. When faced with the argument, they are like deer staring into the headlights of an oncoming car.”
I will ask you for a THIRD time, what would be required to make this determination?
Not to speak for ipguy, but I can see where he may have thought that you went on a tangent. Level of skill is for more than just combination, and your answer did appear to stress that term.
I am also pretty sure that ipguy is aware that it is the Graham case that sets out the parameters (as he and I have discussed this in the past).
“…Applicants should be demanding that the Examiner demonstrate that the prior art cited reflects an appropriate level of skill. For nearly 4 decades, the USPTO has failed to provide any analysis mechanism by which Examiners can determine whether a particular reference reflects an appropriate level of skill. When faced with the argument, they are like deer staring into the headlights of an oncoming car.”
I will ask for a FOURTH time, what would be required to make this determination?
How is it not ok is for me to have the position that it’s reversible error for the Examiner not to make the determination? How is it not ok for me to complain that the PTO doesn’t train Examiners how to explicitly make the determination in the wake of their failure to properly implicitly determine skill level? Is it your view that it is ok for Examiners to “implicitly” determine skill level without actually meeting the requirements for doing so? Is it okay with you that just about every obviousness rejection made by an Examiner fails to comply with the required Graham factor of skill level determination?
I’ve set forth detailed information on my position but all you do is quibble. As I said, I’d like to hear your thoughts on how an Examiner can demonstrate that a reference reflects the appropriate (i.e. ordinary) level of skill in the art. For four decades, the USPTO has failed to provide Examiners with any specific analysis to determine the level of ordinary skill. Please share with us how you would approach the determination and, hey, it’s ok for you to admit that you don’t know.
“How is it not ok…”
Because when asked to explain what would be required to make that determination, your answer was, “I’d like to hear your thoughts first.”
“I’ve set forth detailed information on my position…”
Then a quick copy and paste of your “detailed information” in response to my question shouldn’t be that difficult.
“Is it okay with you that just about every obviousness rejection made by an Examiner fails to comply with the required Graham factor of skill level determination?”
I’ve been practicing for 23+ years. I’ve never had a problem with it. I point out the errors in the rejection, whatever they may be. If the reference(s) is not enabling, I argue that. If the rejection fails to provide a reasonable expectation of success, I argue that. Working so far.
“Please share with us how you would approach the determination and, hey, it’s ok for you to admit that you don’t know.”
I don’t know. That’s why I’m asking you. Again, shouldn’t be too much effort to copy and paste all the detailed information you’ve supposedly provided. Of course, if/when you do that, you then need to explain why it matters. (Hint: It doesn’t matter.)
I get it. You think you’ve discovered a genius, fool proof way of overcoming 103 rejections. ‘B-b-but the examiner didn’t determine the level of ordinary skill! And I even DEMANDED that the examiner make the determination that the applied references implicitly reflect the level of skill! Ipso facto, I win!”
The cases you yourself cited upthread make it clear that those are loser arguments. If you want to keep tilting at windmills, hey whatever floats your boat. Go right ahead.
“For four decades, the USPTO has failed to provide Examiners with any specific analysis to determine the level of ordinary skill.” I’ll ask for FIFTH time, what would be required to make this determination? (Copy and paste is your friend.)
Br see,
Now you are just being an arse, seeing as your answer has been provided (as I suggested with the note to the Graham Factors).
Further, your comment of, “ (Hint: It doesn’t matter.)”
Is just asinine. You may be comfortable with other tactics for 23 years, but that does NOT speak to the point at hand that Office
F
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to properly establish a rejection under 35 USC 103 related to the necessary factual findings under the Graham Factors IS a proper practitioner position.
“…seeing as your answer has been provided…”
Haven’t seen any “detailed information” that ipguy claims to have provided.
“… (as I suggested with the note to the Graham Factors).”
So your answer is…see the Graham factors?
Wow. Impressive.
“…that does NOT speak to the point at hand that Office
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to properly establish a rejection under 35 USC 103 related to the necessary factual findings under the Graham Factors IS a proper practitioner position.”
Any patent numbers you want to post where you successfully overcame a 103 by arguing the examiner failed to resolve the level of ordinary skill on the record, or that the examiner failed to make a determination that the applied references reflect the level of ordinary skill in the art would be welcome. Otherwise you should STEFU.
“Wow. Impressive.”
Now I know that you are being an arse.
The have asked once and ipguy has asked twice, and all that you can do is offer an empty snarky reply?
If you think that there is something else (more/different/better) for the point at hand, by all means share.
But if you want to let your ego make you believe that whatever practice you have provides the limits of legal arguments, then you are just not doing it right.
As for numbers, I am not going to check for hard numbers, but easily I have had more than a dozen cases advance in the last year for at least the point at hand (examiner not answering the substance of my arguments about not making a prima facie case because of the point at hand.
Breeze,
Ad hominem attacks on ipguy doesn’t win you any points with me or anyone else. ipguy’s been posting on skill level for a long time here and has been consistent about skill level determination being long overlooked by patent attorneys for rebutting obviousness rejections. As far as I know, ipguy’s never claimed to have made any new discovery about skill level, just that examiners have been getting away with not determining skill level.
How about you post patent numbers where you successfully overcome a 103? Go ahead. Out yourself. I’m sure anon would love a crack at critiquing your prosecution skills, or lack thereof.
So why don’t you go ahead and explain how you think examiners should approach the determination of ordinary skill level. If you can’t, stop acting like a punk.
PPO – I hear you, but I have exactly zero interest in any “outing” of anyone.
Breeze should be able to “man up” without being outed.
anon and PPO,
Thank you for your supportive comments. Indeed, all I have done is point out what the law requires, and that the USPTO/Examiners have been able to get away without explicitly determining the level of ordinary skill, and getting away without properly implicitly determining the level of ordinary skill.
“Indeed, all I have done is point out what the law requires,…”
Uh, no. As the cases you yourself cited, the examiner is not required to determine the level of skill in the art to make a rejection under 103. So the law doesn’t require that. And when asked how the examiner would determine that the references reflect the level of ordinary skill in the art, your answer was…what?
And you’ve claimed, “I’ve set forth detailed information on my position…” but when asked to provide that “detailed information you haven’t.
So are you going to provide the “detailed information” on your position or not?
(I know you’re not, but I’m giving you an opportunity to at least try to prove you’re not just blowing smoke.)
“Uh, no.”
Uh, yes. Now feel free to get in the last word. Based on your prior posts, I know how important that is to you.
If you want the last word, simply copy and paste the “detailed information” you claim to have.
Pretty simple.
Now feel free to get in the last word asking me to go first.
I know how important that is to you.
Lol – way to NOT man-up there Breeze.
Maybe we should update your moniker to Passing Gas, as all that you provide for your vaunted “23+ years of experience” is some rather Cra ppy mirror games.
It is “pretty simple” that the Graham Factors (“Wow. Impressive.” as they are) set the foundation of fact finding, and it is well known that to establish a proper prima facie case, the fact-finder (the examiner) MUST meet that “wow. impressive.” threshold.
As I noted – you are free to ‘do your own thing.’ But for you to play the arse and pretend that other tactics are not valid because you may not be aware of them only highlights your being the arse.
But you be you. I will be suitably impressed whatever your choice.
Billy, this site’s saddest and loneliest troll, chiming in.
Heckuva job.
“Billy”….?
Could this be a fingerprint?
Let’s see, only one single commentator has ever used the term, “Billy.”
– Check
Unsubstantiated ego
– Check
Thinks his way is the only way
– Check
Posts to criticize, with no actual patent knowledge
– Check
When called out, resorts to baseless ad hominem (Wow. Impressive. Indeed)
– Check
Malcolm’s problem with a that no matter his initial intentions on “being restrained,” he simply lacks emotional control and sooner or later ‘slips’ back into his (short) list of baseless narratives.
It is rather humorous that he (again) goes to s0 ck pupp ets and is busted doing so. Passing Gas and P00py Diaper — the telltale signs are unavoidable.
I can see the tiny hamster wheel you have for a brain spinning furiously.
Hilarious.
I busted you for your “s U ckie” use
– like I did here on this blog many years ago
– like I did on the PatentDocs blog
– like I did again on this blog when you returned from your just-over-a-year hiatus,
And ^^^ that is all you got?
(no wonder you shy away from substantive legal discussions)
“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.””
Since the office now requires an examiner to do only 5 actions (not applications) in a technology before considering them fully qualified in that entire technology, this assumption of expertise is absolutely not warranted.
Wow.
Five actions? That explains a lot.
Ben’s missive (particularly the wh1ning tone) is yet another example of internal Office issues being presented AS IF those external to the Office needs (somehow) to correct them.
Please live forever, judge Newman. As for you, judge Dyk, you can retire any time, preferably today.
Please live forever, judge Newman.
Amen!
Concur with your opinion of Judge Newman. She has been right on so many opinions for so many years it is amazing.
Deleting a reference to application examiner deference in a revised Fed Cir. decision on the legal issue of indefiniteness makes sense. But it reminds me of a Fed. Cir. decision some years ago that had to be revised because the opinion implied that all APJs were not attorneys.
Implied that not all APJs are attorneys. That was Michel’s Gechter v. Davidson.
Strange that the Casetext database contains the unrevised version. “Many Board members, now known as ‘Administrative Patent Judges,’ are experienced former senior examiners. Although the majority of the Administrative Patent Judges are not attorneys . . . .”
Yes, it was shocking that those Fed. Cir. judges did not know that the administrative tribunals they were regularly taking appeals from were all attorneys. Thanks for the Michel’s Gechter v. Davidson cite.
Thank you, my friend with the shifting historical pseudonyms.
(more to follow).
Thank you, my friend with the shifting historical pseudonyms.
(more to follow).
This:
https
://casetext.com/case/gechter-v-davidson
Specifically:
“If we did not require the Board to adhere to the same level of specificity in explicit fact findings and legal conclusions to support an anticipation finding, appellate review of the very same claim might produce disparate results, depending simply on which tribunal decided the issue. See Leuders, slip op. at 18-19 (“clear error” standard of review should apply to Board fact findings in order to maintain consistency with standard of review for district court fact findings). Our holding avoids this kind of disparity.
Nor does the standard we apply today exceed that applied to many other administrative tribunals. “It is well established that agencies have a duty to provide reviewing courts with a sufficient explanation for their decisions so that those decisions may be judged against the relevant statutory standards, and that failure to provide such an explanation is grounds for striking down the action.” Mullins v. United States Dep’t of Energy, 50 F.3d 990, 992 (Fed. Cir. 1995) (citing SEC v. Chenery Corp., 318 U.S. 80, 94 (1943)).Furthermore, we assume the Board’s ability to set forth fact findings and conclusions of law at the level of specificity equal to that required by Rule 52(a). Many Board members, now known as “Administrative Patent Judges,” are experienced former senior examiners. Although the majority of the Administrative Patent Judges are not attorneys, due to their technical expertise as well as their opinion writing experience as administrative judges, they are more than capable of providing the adequate fact finding required by our cases reviewing the PTO Board, and also called for regarding other tribunals in Rule 52(a) and administrative law decisions. Moreover, in the past we have required administrative judges of other boards to set forth adequate findings of fact to support their decisions. See, e.g., RMI, Inc. v. United States, 800 F.2d 246, 250 (Fed. Cir. 1986) (decision vacated and remanded to the Armed Services Board of Contract Appeals because of inadequate findings of fact).”
Gechter v. Davidson, 116 F.3d 1454, 1459 (Fed. Cir. 1997)
Does not support Paul’s errant assertion of a parallel “implication.”
This prior case was noting that the Board should have known better.
We should be encouraging Shifty when he makes a good contribution, not merely “glad-handling” and doubling down on an error (without bothering to read the provided reference).
I will take it from the crickets from both my pal and Paul that my points carry.
> 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
If by “regular service” you mean a judge who hasn’t assumed senior status, this is probably a true statement. But Newman isn’t even close to being the longest currently-serving federal appellate judge; there are several current senior circuit judges on the regional circuits who have been hearing cases since the 1970s. Alfred Newman, for example, continues to hear cases and has been a judge on the Ninth Circuit since 1971.
What sets Newman apart is that she never assumed “senior” status, which she would have qualified for decades ago. This would have resulted in no change to her compensation but a dramatic reduction in her caseload. The fact that Newman is 95 years old but retains the caseload of a an active (non-senior) circuit judge is remarkable.
Nice catch. I’m still glad that Dennis added that, and especially her age of 95, because I took a class that Judge Newman partially taught in the mid 90’s. In my youth, I perceived her as old at that time. I am amazed and glad she still retails a full caseload, as her patent-savvy disposition helps balance out the less-patent-savvy judges.
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