Tag Archives: Federal Circuit En Banc

9th Circuit en banc follows others and adopts Octane for Trademark Fee Shifting

In SunEarth, Inc. v . Sun Earth Solar Power Co., (9th Cir. Oct. 24, 2016), the court held that the same interpretation given to the patent act’s fee shifting statute, 35 U.S.C. § 285, applies to the trademark statute, 15 U.S.C. § 1117(a).  The court noted:

Following [Octane], the Third, Fourth, Fifth, and Sixth Circuits have recognized that Octane Fitness changed the standard for fee-shifting under the Lanham Act. Baker v. DeShong, 821 F.3d 620, 621–25 (5th Cir. 2016); Georgia- Pacific Consumer Prods., 781 F.3d at 720–21; Slep-Tone Entm’t Corp. v. Karaoke Kandy Store, Inc., 782 F.3d 313, 317–18 (6th Cir. 2015); Fair Wind Sailing, Inc. v. Dempster, 764 F.3d 303, 313–15 (3d Cir. 2014). Only the Second and Seventh Circuits have applied earlier case law to Lanham Act fee disputes, and both did so without mentioning Octane Fitness or Highmark. Merck Eprova AG v. Gnosis S.p.A., 760 F.3d 247, 265–66 (2d Cir. 2014); Burford v. Accounting Practice Sales, Inc., 786 F.3d 582, 588 (7th Cir. 2015).

My guess is that pretty soon those latter circuits will flip, too.

Partial-Institution Decisions Blessed by En Banc Federal Circuit

SAS v ComplementSoft (Fed. Cir. 2016)

Today, the Federal Circuit denied SAS’s en banc request challenging the USPTO’s approach to partial-institution of inter partes review petitions.  In a substantial number of cases, the PTO only partially agrees with the IPR petition and thus grants a trial on only some of the challenged claims.  In the present case, for instance, SAS’s IPR Petition challenged all of the claims (1-16) found in ComplementSoft’s Patent No. 7,110,936, but the Director (via the Board) instituted review only on claims 1 and 3-10.

The statute seems to side with SAS: The Board “shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner” 35 U.S.C. § 318(a).  However, the appellate panel in this case (following prior precedent) held that “Section 318(a) only requires the Board to address claims as to which review was granted.”

In its petition, SAS wrotes:

Because § 318(a) is clear and unambiguous in requiring a final written decision as to “any patent claim challenged by the petitioner,” the PTO had no authority to adopt a contrary rule authorizing IPRs “to proceed on all or some of the challenged claims,” 37 C.F.R. § 42.108(a). Regardless of efficiency or workload concerns, the PTO’s rulemaking authority “does not include a power to revise clear statutory terms.” Utility Air Regulatory Grp. v. Environmental Protection Agency, 134 S. Ct. 2427, 2446 (2014).

In what appears to be a 10-1 decision, the Federal Circuit has denied SAS’s petition for en banc review.  Although the majority offered no opinion, Judge Newman did offer her dissent (as she did in the original panel decision).




There’s No Such Thing as a Content Based Unconstitutional Condition

I asked my former student Zachary Kasnetz to write this post on his forthcoming article explaining the Federal Circuit’s errors in its en banc Tam decision. A draft version of his article is available online: ssrn.com/abstract=2864016. – DC

By Zachary Kasnetz

I would like to thank Professor Crouch for this opportunity to share my views on the Federal Circuit’s decision in In re Tam, 808 F.3d 1321 (Fed. Cir. 2015) (en banc), in advance of the Missouri Law Review’s publication of my article.  This post discusses some of the arguments I make as to why the court erred in holding Section 2(a) of the Lanham Act facially unconstitutional.

Section 2(a) of the Lanham Act prohibits registration of any mark that “may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute.”  15 U.S.C. 1052(a).  It has long been controversial and commentators have largely  agreed that it is unconstitutional.  See In re Tam, 808 F.3d at 1334 n.4 (citing commentary).  Tam held: (1) Section 2(a) was a content-based and view-point based restriction on speech; (2) it regulated the expressive, not commercial aspects of Tam’s mark; (3) it actually regulated speech; (4) registration was not a subsidy or government speech; and (4) could not pass strict or intermediate scrutiny.  The holding and reasoning are flawed regarding the numbers 1, 2, and 4.[1]

First, the Court reasoned backwards.  First, the court should have decided whether Section 2(a) actually regulated speech at all and then whether it was a government speech or a subsidy.  If the answer to that question was no, then whether Section 2(a) was content and viewpoint-based and whether it impacted the commercial or expressive aspects of Tam’s mark would have been irrelevant.  Government speech and subsidies are not “exempt” from First Amendment scrutiny as the majority claims: they don’t implicate the First Amendment at all because they do not abridge any speech.  See Rust v. Sullivan, 500 U.S. 173, 193 (1991); Pleasant Grove v. Summum, 555 U.S. 460, 467 (2008).

Second, Section 2(a) only impacts the commercial aspects of Tam’s speech because a trademark is “a form of commercial speech and nothing more.”  In re Tam, 808 F.3d at 1376 (Reyna, J., dissenting) (quoting Friedman v. Rogers, 440 U.S. 1 (1979)).  All benefits of registration are commercial in nature, i.e., they make it easier to enforce the mark.  Registration has no impact on Tam’s ability to express any ideas or messages.  Cf. Author’s League of Am. v. Oman, 790 F.2d 220, 223 (2d Cir. 1986).  As Judge Reyna dryly pointed, the majority held that “Mr. Tam’s speech, which disparages those of Asian descent, is valuable political speech that the government may not regulate except to ban its use in commerce by everyone but Mr. Tam.”  Id. at 1378.  There is no First Amendment right to government assistance in preventing others from expressing ideas or views.  Cf. Davenport v. Wash. Educ. Ass’n, 551 U.S. 177, 188-90 (2008).

Therefore, the only basis for the majority’s opinion is the unconstitutional conditions doctrine, under which the government may not condition an important benefit on the surrender of an important constitutional right, even if it could withhold the benefit entirely.  The doctrine is notoriously incoherent and inconsistent in its application.  Tam’s basic holding is that Section 2(a) is an unconstitutional condition because it is a content and viewpoint based regulation/restriction/burden on speech.  But there’s no such thing as a content-based unconstitutional condition.

A condition’s constitutional permissibility turns on the relationship between the condition and the government program at issue.  See, e.g., USAID v. Alliance for Open Soc’y Int’l, Inc., 133 S. Ct. 2321, 2329 (2013).  The more “germane”, i.e., reasonably related to the goals of program, a condition is, the more likely it is to be constitutional.  See Sullivan, Unconstitutional Conditions, 102 Harv. L. Rev. 1413, 1420-21 (1989).  Any condition on a government benefit or participation in a government program implicating the First Amendment necessarily draws content-based distinctions: the question is whether that distinction is reasonably related to the program’s goals.  According to the majority, the goals of federal trademark law are (1) protecting the rights of mark holders and (2) preventing consumer deception and confusion.  If we accept that this is correct, the constitutionality of Section 2(a) turns on its relation to those goals.  The majority believes it is “completely untethered” those purposes.  In re Tam, 808 F.3d at 1354.  I disagree.

Trademarks allow consumers to quickly identify the source and quality of goods or services.  Therefore, trademark law conditions registration on a mark meeting certain requirements, including that it not be disparaging.  Certain kinds of marks are better at this than others, lying across the spectrum of distinctiveness from arbitrary or fanciful to generic.  Given the massive amount of information bombarding consumers, I argue that marks communicating other information or messages are less effective.  The government has an interest in ensuring that “the stream of commercial information flows cleanly as well as freely.”  Va. Bd. of Pharmacy v. Va. Citizen’s Consumer Council, Inc., 425 U.S. 758, 771–72 (1976)).  Disparaging marks, by definition, communicate more than the source and quality the good or service they attach to.  By denying the benefits of federal registration, Section 2(a) mildly incentivizes the selection of more effective marks.  Thus, it is reasonably related to trademark law’s goals.  Moreover, it only likely affects the choice of marks: it is not trying to “leverage [a government benefit] to regulate speech outside of the program itself.”  USAID v. Alliance for Open Soc’y Int’l, Inc., 133 S. Ct. at 2329 (2013).

Trademark law draws many distinctions between different marks based on their content.  As a far as I know, the constitutionality of the ban on registering trademarks containing “the flag or coat of arms of the United States, or of any State or municipality, or of any foreign nation,” 15 U.S.C. § 1052(b), has never been questioned.  Nor has the ban on those containing “a name, portrait, or signature identifying a particular living individual . . , or the name, signature, or portrait of a deceased President of the United States during the life of his widow, . .”  Id. at § 1052(c).  The government has never been required to show that such marks would actually be confusing or insufficiently distinctive despite the fact that this provision obviously singles out a category of potential trademarks based solely on their content.

Does Section 2(a) Actually Impact Speech?

I am also extremely skeptical that denying registration to disparaging marks actually has a chilling effect on speech.  The majority fears that Section 2(a) chills potential selection of disparaging marks, but the real issue isn’t whether trademark choice is being affected, but whether “ideas or viewpoints” will be suppressed.  Simon & Schuster v. Members of N.Y. State Crime Victims Bd., 502 U.S. 105, 116 (1991).  But trademarks are “commercial speech and nothing more.”  Friedman v. Rogers, 447 U.S. at 562.  Consider Tam.  If he had known that there was a real possibility that he would have been unable to register THE SLANTS because it was disparaging he would have chosen not to create his music or would not have made music intended to express pride in his Asian heritage?  I doubt it and I have not seen any evidence to support such a claim.  Perhaps he would have chosen a different name for his band, but again I’m skeptical.  Thus, Section 2(a) is “exceedingly unlikely” to suppress or chill expression of any ideas and viewpoints.  See Lyng v. Int’l Union, UAW, 485 U.S. 360, 365 (1988).

= = = = =

The author is an Associate at Growe Eisen Karlen Eilerts in St. Louis.  He earned his J.D. from the University of Missouri in May 2016 and his B.A. from the University of Maryland in 2012.

[1] Assuming arguendo, that I am wrong about numbers 1, 2, and 4, I agree that Section 2(a) could not pass strict or intermediate scrutiny.  I also agree that placement on the register does not turn Tam’s purportedly disparaging message into government speech.

Construing Claims as of their Effective Filing Date

A short aside from Dennis Crouch

In Phillips v. AWH, the en banc Federal Circuit included an oddball statement regarding PHOSITA perspective in claim construction.  The court wrote that the focus is on the meaning to PHOSITA “at the time of the invention, i.e., as of the effective filing date of the patent application.”  I call the statement odd because it incorrectly states that the time-of-the-invention is the same as the patent application’s effective-filing-date. The difference can be critical — although word-meaning changes slowly over time, recent invention is an important trigger for rapid definitional change.

Regardless of whether the Phillips statement is correct, going forward for Post-AIA patents, the court should now eliminate “the time of the invention” from its claim construction process.  Under the statute, all of the focus now is on the effective filing date with invention shifted to a mere historic element of the patenting process.

Stepping Back: One problem with any time-of-the-invention analysis is that the traditional legal definition of invention involves a potentially wide temporal expansion.  Remember, invention begins with conception but is not completed until the invention is reduced to practice.  The patent courts added further to this by finding the filing of a patent application to be a constructive reduction to practice that completes the invention process. Because most patent applications are filed prior to a complete reduction to practice, for most patented inventions the time of invention completion is the same as the effective filing date of the patent at issue.


In re Aqua: Ambiguity in the Statute Means Deference to the PTO

In re Aqua (Fed. Cir. 2016)

In its newly filed brief in this pending en banc case, the USPTO sets forth the three statutory provisions of 35 U.S.C. § 316 that are related to amendment practice in an Inter Partes Review (IPR) proceedings: §§ 316(a)(9); (d)(1); and (e). [Aqua Products–PTO brief.] Taking them out of order: Section (d) allows for one motion to amend; Section (a)(9) gives the PTO broad regulatory authority to set the standards and procedures associated with the motion to amend; and finally Section (e) indicates that petitioner has the burden of proving unpatentability. The friction between these sections may not be inherent to the statute, but arose when the PTO created the rule that the patentee must prove patentability of any amended claim before the motion will be allowed. The patentee argues in Aqua that the PTO approach is contrary to § 316(e) while the PTO argues that its approach is allowed by the broad rule-making-authority granted by § 316(a)(9).

316(a) Regulations. —The Director shall prescribe regulations— (9) setting forth standards and procedures for allowing the patent owner to move to amend the patent under subsection (d).

316(d) Amendment of the Patent.— (1) In general.—During an [IPR], the patent owner may file 1 motion to amend the patent in 1 or more of the following ways:(A) Cancel any challenged patent claim; (B) For each challenged claim, propose a reasonable number of substitute claims.

316(e) Evidentiary Standards.— In an inter partes review instituted under this chapter, the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.

In its brief, the PTO explains that assigning burdens associated with the motion to amend is a “standard” expressly falling within its rulemaking authority and thus must be granted deference by the Federal Circuit on appeal. That portion of the argument appears clearly correct. The difficulty for the PTO comes into play in distinguishing Section 316(e) — its best and first argument is that the provision does not expressly discuss amendments: “For one thing, § 316(e) never mentions amended claims.” The PTO goes on to argue that 316(e)’s implicit focus is on burden’s associated with claims-at-issue and not proposed claims. “§ 316(e) speaks only to the petitioner’s burden of proving the unpatentability of existing claims; it does not specify who has the burden of proving the patentability of new, never-before-examined substitute claims.”

The brief also takes the interesting tack of walking through the amici filings and pointing out that none of them fully agree on the meaning of the supposedly unambiguous Section 316(e).  If the section is seen as ambiguous, then the PTO’s deference level kicks-in once again.

Any amicus brief supporting the USPTO petition will be due by November 2, 2016 with oral arguments set before the entire court on December 9, 2016.


More Reading:


In re Aqua: Amending Claims Post Grant in an IPR

The only pending en banc patent case before the Federal Circuit is In re Aqua Products (Appeal No. 15-1177) involving claim amendments during inter partes review.  The Patent Statute contemplates claim amendments as a possibility but not a right — notably, 35 U.S.C. 316(d) states that “the patent owner may file 1 motion to amend the patent” with additional motions to amend permitted in limited situations.  The scope of amendment is also limited to (A) cancelling challenged claims and (B) proposing “a reasonable number of substitute claims” that do not “enlarge the scope of the claims of the patent or introduce new matter.”

In its implementation regulations, the USPTO interpreted the right to a motion as something much less than a right to amend and required, inter alia, that the patentee provide evidence that any proposed substitute claims be patentable over the known prior art. See Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012–00027, 2013 WL 5947697 (PTAB June 11, 2013).


The short panel opinion in Aqua the Federal Circuit reaffirmed the USPTO’s tightly restrictive approach – following its own prior holdings. See, for example, Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1307−08 (Fed. Cir. 2015).

The underlying case involves a self-propelled robotic swimming pool cleaner that uses an internal pump both as a vacuum cleaner and as the propulsion system.   U.S. Patent No. 8,273,183.  After the IPR was initiated, Aqua moved to amend three of the claims to include the limitations found in the claims that had not been challenged. In particular, the patentee asked to substitute claims 1, 8, and 20 with claims 22-24 respectively.  The new claims included a set of new limitations, including a propulsion “vector limitation” that required a jet stream configured to create a downward vector force rear of the front wheels.  This appeared to be a reasonable request that would move the case toward conclusion, and the PTAB agreed that these new claims satisfied the formal requirements of Section 316(d).   However, the PTAB refused to allow the amendment – holding that the patentee had failed to show that the amended claims were sufficiently beyond the prior art.

In rejecting the amendment motion, the PTAB did not conduct a fully obviousness analysis, but instead focused on the new elements and considered whether the patentee had shown those elements to render the claim valid over the prior art.  Defending that approach on appeal, the Agency has defiantly argued that its rules regarding amendments and its application of those rules are both reasonable and entitled to substantial deference from the Court of Appeals.

Thus, the pending en banc questions focus on this stance:

1) In an IPR, when the patent owner moves to amend claims under 35 U.S.C. § 316(d), may the USPTO require the patent owner to bear the burden of persuasion, or a burden of production, regarding patentability of the amended claims?

2) When the petitioner in an IPR does not challenge the patentability of proposed amended claims or the Board finds the challenge inadequate, may the Board raise a patentability challenge on its own, and if so, where would the burdens lie?

Although prior Federal Circuit cases have supported the PTAB approach, the September 2016 decision in Veritas Tech v. Veeam Software (Fed. Cir. 2016) reversed that trend.  In that case, the court held that the PTAB had acted in an arbitrary and capricious manner by denying the patentee’s motion to amend its challenged claims after failing to discuss each added feature separately.

The top-side briefs have been filed in the case with Amicus support for petitioner:

  • [AquaRehearingBriefPatentee]
  • [AquaRehearingBriefPhRMA] [AquaRehearingBriefCWRU] [AquaRehearingBriefAmiciTop]
  • IPO (Section 316(e) applies here and places the burden of proving a proposition of unpatentability onto the petitioner, not the patentee.)
  • AIPLA (The current amendment practice “does not provide patent owners with the fair and meaningful opportunity to amend claims that Congress envisioned”.)
  • PhRMA (Amendments are very important to patentees)
  • BIO (PTO may not impose any burden of proving patentability in an IPR process. Rather, the focus is on unpatentability – and that burden is upon the petitioner.)
  • Case Western Law Clinic (Although the PTO has rulemaking authority in this area, it exceeds that authority by ceding authority to the administrative patent judges.)
  • Houston IP Law Ass’n (The very small number of successful motions to amend reveals a problem.)

The PTO Brief along with any amicus in support are due over the next two weeks.


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It is Improper to Consider Extra-Record Claim Construction Evidence On Appeal

Apple v. Samsung (Fed. Cir. 2016) (En banc)

Note: This SamsApple case is not the design patent damages case now before the US Supreme Court. Rather, this case involves Apple’s patents covering slide-to-unlock; phone number recognition; and auto spell correction. At the district court, the jury found that three of Apple’s touch-screen patents infringed by Samsung devices (resulting in $119.6 million in damages).  The jury also found one Samsung patent  infringed by Apple, but only awarded less than $200,000 in damages.  In a February 2016 opinion authored by Judge Dyk, the Federal Circuit reversed the jury verdicts – finding two of Apple’s patents invalid as obvious and the other not-infringed.

Now, in a surprise en banc ruling Friday, the Federal Circuit has chastised the that original panel in this case – writing to:

[A]ffirm our understanding of the appellate function as limited to deciding the issues raised in the appeal by the parties, deciding these issues only on the basis of the record below, and as requiring appropriate deference be applied to review of fact finding.

Zeroing in here, the en banc found that the original panel had improperly considered “extra-record extrinsic evidence to construe a patent claim term.”

Prior to Teva v. Sandoz (and especially prior to Phillips v. AWH) Federal Circuit panels regularly relied upon extra-record evidence such as dictionary definitions in reaching appellate decisions.  In Phillips, the court shifted focus away from dictionary definition toward intrinsic evidence such as the patent document and prosecution history.   Then, in Teva, the Supreme Court held that extrinsic factual conclusions of a district court must be given deference on appeal.  According to the en banc panel here – “After Teva, such fact findings are indisputably the province of the district court.”  With this framework, the en banc majority then offered its holdings:

(1)  the appellate court cannot rely on extra-record extrinsic evidence in the first instance or make factual findings about what such extrinsic evidence suggests about the plain meaning of a claim term in the art at the relevant time or how such extra record evidence may inform our understanding of how the accused device operates

(2) the appellate court is not permitted to reverse fact findings that were not appealed; and

(3) the appellate court is required to review jury fact findings when they are appealed for substantial evidence.

In discussing the obviousness determination, the en banc majority noted that the panel (and en banc dissents) raise important questions, but found those questions must wait for a different case since “no party—at the panel or the petition for rehearing en banc stage—invited this court to consider changing the existing law of obviousness.”

After chastising the original panel, the en banc majority then reaffirmed the jury verdicts – finding them supported by substantial evidence and thus reinstated the verdict for Apple.

The en banc opinion judgment here was 8-4 8-3 with Judge Moore authoring the 7-member majority opinion; Judge Hughes concurring in judgment but without authoring any opinion whatsoever; The original panel members, Chief Judge Prost, Judge Dyk, and Judge Reyna each dissented and each authored their own opinions; and Judge Taranto not participating.

Judge Dyk’s is the most interesting in the way that it reveals some inner-court-workings:

 For the first time in 26 years, this court has taken an obviousness case en banc. See In re Dillon, 919 F.2d 688 (Fed. Cir. 1990) (en banc). Remarkably, the majority has done so without further briefing and argument from the parties, amici, or the government, as has been our almost uniform practice in this court’s en banc decisions. . . .

The present en banc decision will have a significant and immediate impact on the future resolution of obviousness issues. While purporting to apply established circuit law, the majority is in fact making significant changes to the law as articulated by the Supreme Court. Indeed, as Judge Reyna convincingly points out, it is difficult to understand how this case would satisfy the requirements for en banc review if the majority’s purpose were not to clarify the law.

The majority states that it takes this case en banc to correct the original panel’s reliance on extra-record evidence. This could hardly be the reason the majority has granted en banc review, since the panel has continuingly expressed willingness, and indeed desire, to eliminate references to any extra-record evidence because of concerns raised in Apple’s petition for rehearing and because they were unnecessary to the panel opinion. . . . [T]he principles that the majority announces are inconsistent with the Supreme Court’s decisions in KSR, Graham v. John Deere, as well as earlier Supreme Court cases, and will make proof of obviousness far more difficult.

Judge’s Prost and Reyna also agreed that the majority’s application of the law in this case is inconsistent with Supreme Court precedent.

If you made it here, then you you see that there is substantially more to discuss – save that for the next post.


Infringement Complaint Must Provide Factual Allegations at the Claim-Element-by-Claim-Element Level

by Dennis Crouch

Lyda v. CBS (Fed. Cir. 2016)

Although at first glance, Lyda appears as a narrow decision against an individual-inventor plaintiff, the decision is important because it establishes that a patent infringement complaint must provide factual allegations at the claim-element-by-claim-element level in order to avoid a dismissal on the pleadings.  

In a civ-pro focused decision, the court has affirmed the dismissal of Lyda’s infringement case for failure to state a claim – finding that Lyda’s complaint fails to satisfy the Twiqbal pleading standards.[1]  Rule 8 of the Federal Rules of Civil Procedure require a “ a short and plain statement of the claim showing that the pleader is entitled to relief.”[2]  Failure to state a claim is grounds for dismissal under R. 12(b)(6).[3] The Supreme Court gloss requires allegations of sufficient facts to state a plausible claim for relief.  Although statements in the complaint are taken as true, “threadbare recitals of the elements of a cause of action, supported by mere conclusory statements, do not suffice.”[4] “While legal conclusions can provide the framework of a complaint, they must be supported by factual allegations.”

Until recently, Twiqbal was not directly applied to patent complaints because the existence of a bare-bones form infringement complaint (Form 18) that the rules deemed to be sufficient.  Form 18 was eliminated in the December 1, 2015 changes to the rules.  In the present case, the amended complaint was filed prior to the change, but the court held that Form 18 does not apply in this case because Lyda implicitly alleged a claim of joint infringement rather than the standard direct infringement that is the focus of Form 18.[5]

Applying Twiqbal is not easy – although the general rule is that the pleadings must include enough plausible facts that – if taken as true – would lead to a verdict for the plaintiff.  In discussing its application, the Supreme Court noted that it will be “context-specific” requiring both “judicial experience and common sense.”  Applying that approach to patent infringement cases, the court here took the fairly bold stance of requiring that the facts plausibly pled be “sufficient to allow a reasonable inference that all steps of the claimed method are performed.”

Lyda’s case was particularly dismissed because the patentee failed to plead the elements of joint infringement required by Akamai.  The Lyda court writes:

[Under the plaintiffs theory of infringement, the] Amended Complaint must plausibly allege that Defendants exercise the requisite “direction or control” over the performance of the claim steps, such that performance of every step is attributable to Defendants. The Amended Complaint alleges that CBS Interactive controls certain independent contractors who in turn direct and control the “participation” of unnamed third persons to send votes on either their own or borrowed cell phones. Mr. Lyda does not set forth any factual allegations in support of his assertion that CBS Interactive directed or controlled the independent contractors. Nor does the Amended Complaint contain factual allegations relating to how the independent contractors directed or controlled the unnamed third parties. Most importantly, the Amended Complaint does not allege any relationship between the Defendants and the unnamed third parties, who own or borrow cell phones, in a way that the actions of these unnamed third parties should be attributed to Defendants. Rather, the Amended Complaint alleges conclusively and without factual support that CBS directed or controlled the independent contractors who then directed or controlled the unnamed third parties. There are thus no allegations in the Amended Complaint that can form the basis of a reasonable inference that each claim step was performed by or should be attributed to Defendants. The Amended Complaint fails to plausibly plead sufficient facts to ground a joint infringement claim under this court’s Akamai decision and does not satisfy the Iqbal/Twombly pleading standard.

The district court also denied Lyda leave to amend the complaint a second time. On appeal, the Federal Circuit affirmed that determination – finding that the district court has “broad power to control its own docket.” With the case dismissed, I expect that Lyda can refile and just potentially lose some of the back damages.

= = = = =

[The complaint]

[1] Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007); Ashcroft v. Iqbal, 556 U.S. 662 (2009).

[2] Fed. R. Civ. Pro. R. 8.

[3] Fed. R. Civ. Pro. R. 12(b)(6) (“a party may assert . . . (6) failure to state a claim upon which relief can be granted”).

[4] Iqbal.

[5] See Akamai Techs., Inc. v. Limelight Networks, Inc., 797 F.3d 1020 (Fed. Cir. 2015) (en banc) (requiring that “(1) one party exercises the requisite ‘direction or control’ over the others’ performance or (2) the actors form a joint enterprise such that performance of every step is attributable to the controlling party).

First Amendment Finally Reaches Patent Law

The big news from Intellectual Ventures v. Symantec (Fed. Cir. 2016) is not that the court found IV’s content identification system patents invalid as claiming ineligible subject matter.  (Although that did happen). Rather, the big event is Judge Mayer’s concurring opinion that makes “make two points: (1) patents constricting the essential channels of online communication run afoul of the First Amendment; and (2) claims directed to software implemented on a generic computer are categorically not eligible for patent.”

Read Judge Mayer’s opinion in full:

MAYER, Circuit Judge, concurring.

I agree that all claims on appeal fall outside of 35 U.S.C. § 101. I write separately, however, to make two points: (1) patents constricting the essential channels of online communication run afoul of the First Amendment; and (2) claims directed to software implemented on a generic computer are categorically not eligible for patent.


Lee v. Tam: Supreme Court Takes on the Slants

by Dennis Crouch

In its decision in this trademark registration case, the Federal Circuit found the statutory prohibition against registering “disparaging marks” an unconstitutional governmental regulation of speech in violation of the First Amendment. (En banc decision).  I noted in my December 2015 post that “there would be a good chance for Supreme Court review of the case if the government presses its position.”

The Supreme Court has now granted the USPTO’s petition for writ of certiorari asking:

Whether the disparagement provision of the Lanham Act, 15 U.S.C. 1052(a), which provides that no trademark shall be refused registration on account of its nature unless, inter alia, it “[c]onsists of . . . matter which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute” is facially invalid under the Free Speech Clause of the First Amendment.

In the case, Simon Tam is seeking to register a mark on his band name “The Slants.” The USPTO refused after finding that the mark is disparaging toward individuals of Asian ancestry.

Tam’s responsive brief was unusual in that he agreed that Certiorari should be granted.  The brief also restated and expanded the question presented as follows:

1. Whether the disparagement clause bars the registration of respondent’s trademark.
2. Whether the disparagement clause is contrary to the First Amendment.
3. Whether the disparagement clause is unconstitutionally vague under the First and Fifth Amendments.

While the Federal Circuit majority opinion had agreed that the disparagement clause was contrary to the First Amendment, only a two-judge concurring opinion indicated that the clause is unconstitutionally vague.  Thus, the reframing of the question presented here appears an attempt to offer alternative reasons for affirmance.  The Supreme Court offered no indication as to which question is proper.

Congratulations to Ron Colemen for shepherding this case and Profs Volokh and Banner who apparently wrote the petition response.

“Inherent Disclosure” in Priority Document is Sufficient to Satisfy Written Description Requirement

Yeda Research v. Abbott (Fed. Cir. 2016)

Abbott’s patent broadly covers Tumor Necrosis Factor α binding protein (TBP-II). U.S. Patent No. 5,344,915.  The U.S. application was filed in 1990, but claims priority to two German applications filed in 1989. A would-be anticipatory prior art reference (Engelmann) was published after the priority applications but before the U.S. application – and the parties have agreed that dispute turns on whether the claims get to rely upon the early priority date.

In the preceding interference proceeding, the Board sided with Abbott as did the district court – finding that one of the German applications sufficiently disclosed the invention.  (Yeda’s application was filed nine days after Abbott’s.)

A priority filing is only effective if the claimed invention was sufficiently described in the original filing.  This implementation of the written description requirement requires the invention “be disclosed in a way that clearly allows a person of ordinary skill to recognize that the inventor invented what is claimed and possessed the claimed subject matter at the date of filing.” Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).  In the priority context, failure of written description does not directly invalidate the claims but instead effectively negates the priority claim.  Here, that date is critical because of the intervening prior art.


Abbott’s Claim 1 is directed to the binding protein with “a molecular weight of about 42,000 daltons” and that has at “the N-terminus the amino acid sequence Xaa Thr Pro Tyr Ala Pro Glu Pro Gly Set Thr Cys Arg Leu Arg Glu . . . .”  The problem though is that neither of Abbott’s priority filings expressly disclose the claimed N-terminus sequence.

Abbott was able to overcome the lack of express disclosure with an “inherent disclosure”:

Under the doctrine of inherent disclosure, when a specification describes an invention that has certain undisclosed yet inherent properties, that specification serves as adequate written description to support a subsequent patent application that explicitly recites the invention’s inherent properties.

Slip Opinion at 6 (citing Kennecott).

Here, the priority document described how to make TBP-II, but did not identify the actual sequence as claimed.  On appeal, the Federal Circuit ruled that the original disclosure “inherently discloses the remaining amino acids in the N-terminus sequence” and therefore “serves as adequate written description support for the patent claiming TBP-II.”




Denial of PTAB Amendment: Arbitrary and Capricious

Veritas Tech v. Veeam Software (Fed. Cir. 2016)

In an important decision, the Federal Circuit issued a limited rejection of Inter Partes Review amendment procedure — holding that the PTAB acted in an arbitrary and capricious manner by denying the patentee’s motion to amend its challenged claims.

Although claim amendments are officially allowed in IPR proceedings, the Patent Trial & Appeal board has a practice of only approving amendments after the patentee shows that the claims as amended are patentable over the references at issue in the case.  As part of this process, the PTAB requires that the patentee discuss each feature added to the claim and “whether the feature was previously known anywhere, in whatever setting, and whether or not the feature was known in combination with any of the other elements in the claim.” Toyota Motor Corp. v. American Vehicular Sciences LLC, IPR2013-00419, slip op. at 4–5 (Paper 32) (PTAB March 7, 2014).

Here, the patentee did not discuss each new feature individually but rather merely stated that the combination of new features were not described in the prior art. And, because the patentee failed to discuss each added feature separately, the PTAB found that the patentee “failed to meet its burden of showing that it is entitled to an award of a patent on a system having those features.”

On appeal, however, the Federal Circuit rejected that analysis — finding it “arbitrary and capricious.” In particular, the court wrote that the discussion of the combination  was not “meaningfully different” from the PTAB’s proposal.

In this case, we fail to see how describing the combination is meaningfully different from describing what is new about the proposed claims, even in comparison to the unamended claims.

This case may have some impact on the pending en banc appeal In re Aqua Products. That appeal addresses the following two questions:

(a) When the patent owner moves to amend its claims under 35 U.S.C. § 316(d), may the PTO require the patent owner to bear the burden of persuasion, or a burden of production, regarding patentability of the amended claims as a condition of allowing them? Which burdens are permitted under 35 U.S.C. § 316(e)?

(b) When the petitioner does not challenge the patentability of a proposed amended claim, or the Board thinks the challenge is inadequate, may the Board sua sponte raise patentability challenges to such a claim? If so, where would the burden of persuasion, or a burden of production, lie?

The Veritas court writes that the PTAB decision here is erroneous regardless of the outcome of Aqua.


En Banc Query: Must the PTO Allow Amendments in IPR Proceedings?

AquaImageby Dennis Crouch

In its original Aqua Products decision, the Federal Circuit upheld the USPTO’s tight limits on amendment practice in IPR proceedings. Under the rules, a patentee has one opportunity to propose amendments or substitute claims. However, the proposal will only be granted if the patentee also demonstrates in the motion that the proposed amendments would make the claims patentable over the known prior art.

In a new order, the Federal Circuit has now granted the appellant’s en banc rehearing request – asking the parties to focus solely on the following questions regarding the burdens:

(a) When the patent owner moves to amend its claims under 35 U.S.C. § 316(d), may the PTO require the patent owner to bear the burden of persuasion, or a burden of production, regarding patentability of the amended claims as a condition of allowing them? Which burdens are permitted under 35 U.S.C. § 316(e)?

(b) When the petitioner does not challenge the patentability of a proposed amended claim, or the Board thinks the challenge is inadequate, may the Board sua sponte raise patentability challenges to such a claim? If so, where would the burden of persuasion, or a burden of production, lie?

En Banc Order.  The court has invited views of amici curiae.  Those briefs will be due October 5, 2016 (unless supporting the PTO’s position and then you get an extra month).  Appellant’s brief will be filed by September 26, 2016. Oral argument are already scheduled for Friday, December 9, 2016 at 10:00 a.m.

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The underlying case involves Aqua Products’ self-propelled robotic pool cleaner that uses an internal pump both as a vacuum cleaner to power the propulsion system.   U.S. Patent No. 8,273,183.  Competitor Zodiac Pool Systems filed for IPR which the PTO instituted as to some of the challenged claims and ultimately issued a final decision that the claims were invalid as obvious over a combination of two prior-art references.

Motion to Amend: In a timely motion, Aqua moved to amend three of the claims to include the limitations found in the non-instituted claims. (In particular, the patentee asked to substitute claims 1, 8, and 20 with claims 22-24 respectively.  The PTAB agreed that these new claims satisfied the formal requirements of Section 316(d), but refused to enter the amendment – finding that the patentee’s motion had failed to show that the substitute claims were distinguishable over the prior art.

The parties (Aqua & Zodiac) settled the underlying infringement case in April 2015 and so Zodiac did not participate in the appeal. However, the USPTO intervened in the case to defend Aqua’s appeal of the PTAB invalidity holding.

The PTO’s position in the case remains defiant.  The Agency argues that its rules regarding amendments and its application of those rules are both reasonable and entitled to substantial deference.

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The Likely Indefiniteness of Coined Terms

by Dennis Crouch

AGIS v. Life360 (Fed. Cir. 2016)

In some ways the case here can be thought of as placing a higher definiteness burden on patentees when relying upon non-industry-standard language such as coined-terms in the claims. This result makes sense to me because coined-terms are most likely to be found at points of novelty within the claim — the points where precision in description is most important. 

The AGIS claims all require a “symbol generator” to track mobile phone user location.   See U.S. Patent Nos. 7,031,728 (claims 3 and 10) and 7,672,681 (claims 5 and 9).  During claim construction, the district court found the term lacked definiteness under 35 U.S.C. 112 ¶ 2 (now 112(b)) and, although it would seemingly be a foregone conclusion, the parties stipulated that the claims were therefore invalid.

On appeal, the Federal Circuit affirmed the indefiniteness finding under its strict means-plus-function approach. The appellate panel first held that the “symbol generator” element should properly be interpreted under 35 U.S.C. 112 ¶ 6 as claiming a means for performing a specified function without reciting (in the claims) the supporting structure.  Under 112 ¶ 6, means-plus-function claim elements are However, the statute requires that MPF claim elements be tightly construed to cover only “the corresponding structure . . . described in the specification and equivalents thereof.”  Further, the Federal Circuit has repeatedly held that MPF claim elements that are not supported by corresponding structure within the specification are indefinite and thus invalid.

Step 1: Traditionally, claim elements intended to be interpreted as means-plus-function elements include the word “means.”  Here, the word ‘means’ was not used – and that leads to the a rebuttable presumption 112 ¶ 6 does not apply.  Prior to 2015, this presumption was seen as a “strong” presumption.  However, in Williamson (2015), the en banc Federal Circuit eliminated the “strong” portion of the presumption and in favor of one that appears easily rebuttable.  Under Williamson, 112 ¶ 6 will apply when the proper construction of the words of the claim fail to provide sufficiently definite structure.  The standard is “whether the words of the claim are understood by person of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.” If not, then 112 ¶ 6 applies.

Here, the court noted that the term “symbol generator” was a term coined for the purposes of the patent and thus, cannot be said to be already known to one of skill in the art. As such, the court fell-back on its textual analysis – finding that “the combination of the terms [symbol and generator] as used in the context of the relevant claim language suggests that it is simply an abstraction that describes the function being performed (i.e., the generation of symbols) [and]  by itself, does not identify a structure by its function.”  Of interest, at this stage, the court did not delve into the question of whether the specification had properly defined the term.  I believe that omission was a result of the fact that the specification did not so define the term (as discussed below).

Step 2: Once a term is defined as Means-Plus-Function, the court must then look to the specification to determine whether corresponding structure is available to define the term. Here, because the symbol generator is a computer implemented function, the court requires disclosure of an algorithm for performing the function. Here, that algorithm was not provided. Quoting Aristocrat Tech, the court wrote: “A patentee cannot claim a means for performing a specific function and subsequently disclose a ‘general purpose computer as the structure designed to perform that function” because this “amounts to pure functional claiming.'”

Coined Terms and Circular Reasoning: Looking at the specifications, the only mention of the term “symbol generator” was found in one of the two specifications and that specification stated only that “The CPU also includes a symbol generator for creating touch screen display symbols discussed herein.”

Because MPF analysis involves circular reasoning, it is difficult to know what the result would have been if the specification had sufficiently and particularly defined the symbol generator as an algorithmic module.  That structural definition certainly would have been enough to satisfy structure requirement of 112 ¶ 6.  However, if it was sufficient to satisfy 112 ¶ 6, then it likely would have been sufficient to ensure that the proper construction of the term was non-MPF.  This leads to the conclusion that, at least for coined-terms, the whole game is won or lost at step 1 from above.



Supreme Court Challenge to ITC’s Broad Authority

by Dennis Crouch

DBN (formerly DeLorme) v. US International Trade Commission (Supreme Court 2016)

In addition to district court infringement litigation, U.S. law offers a second avenue for patent enforcement – the United States International Trade Commission (USITC).  In today’s free-trade environment, the USITC’s role is somewhat counter — protecting of U.S. industry.  A substantial portion of USITC work involves enforcement actions to prohibit importation into the U.S. of “articles that … infringe a valid and enforceable” patent. See 19 U.S.C. 1337.

Despite the statutory language “articles that . . . infringe”, in Suprema an en banc Federal Circuit held that the USITC has the power to block importation based upon an inducement theory of infringement — even if the imported products themselves are not infringing. (6 – 4 en banc decision)

In a well written petition, DBN has challenged the holding of Suprema – asking “Whether the International Trade Commission’s jurisdiction over the importation of ‘articles that … infringe a valid and enforceable’ patent extends to articles that do not infringe any patent.”

The case also involves an interesting separation of powers issue — although the USITC found the patent enforceable, a district court found the patent invalid.  DBN terms this a “zombie patent” penalty.  In the case, the ITC first issued the exclusion order and the patent was later found invalid.  In that interim, DBN violated the exclusion order and the ITC assessed a $6 million contempt penalty that is being challenged in the second question presented: “Whether the Federal Circuit erred in affirming the Commission’s assessment of civil penalties for the domestic infringement of a patent that has been finally adjudicated to be invalid.”

USITC Procedure sets up the USITC as the party prosecuting the case rather than the patentee. As such, the agency is the named respondent and will be represented by the Solicitor’s Office. I expect that the patentee BriarTek will also weigh-in.  The patent at issue is U.S. Patent No. 7,991,380 and covers an emergency satellite communication system.  The asserted claims were found invalid as anticipated and/or obvious.  That holding was then affirmed on appeal by the Federal Circuit.

Sales Activity: MedCo, Helsinn, and the AIA

by Dennis Crouch

In The Medicines Co. v. Hospira an en banc Federal Circuit confirmed the validity of MedCo’s Angiomax product-by-process patent claims over an on-sale challenge. More than one-year before filing the patent application, MedCo had hired a third-party supplier to provide three batches of the drug using an embodiment of the claimed processes.  The question was whether this ‘supply contract’ constituted a commercial offer for sale sufficient to trigger the on-sale bar of Section 102(b) (pre-AIA).   In the appeal, the Federal Circuit held that the supply contract was “for performing services” rather than a triggering sale.  “[A] contract manufacturer’s sale to the inventor of manufacturing services where neither the title to the embodiments nor the right to market the same passes to the supplier does not constitute an invalidating sale.”

The en banc MedCo opinion focuses on a pre-AIA patent, but it seems clear to me that the limits here are equally applicable to post-AIA patents.  Of course, many (including the USPTO and DOJ) argue that this type of activity would also be disqualified as on-sale because it was done under cover of secrecy rather than publicly.

In the pending case of Helsinn v. Teva is set to answer the AIA question – whether under the AIA “on sale” activity is limited to activity that is “available to the public.” In a new filing, the accused infringer (Teva) has looked to distinguish the MedCo — noting that “[u]nlike the MedCo. contract, where the patent-holder paid another party to manufacture its drug, the distribution contract [in Helsinn] was an offer for sale.”  The letter-of-authority goes on to point the court to the language on MedCo supporting the Metallizing Engineering policy:

MedCo. also reaffirmed multiple precedents finding “confidential transactions to be patent invalidating sales under §102(b).” Although a transaction’s “confidential nature … weighs against the conclusion that [it was] commercial,” it remains “a condition upon an inventor’s right to a patent that he shall not exploit his discovery competitively after it is ready for patenting.” (quoting Metallizing Eng’g). That is what Helsinn did here.

Oral arguments have not been scheduled in the case, but I expect that it will be scheduled for early Autumn 2016. While the Helsinn case is not yet en banc, it has drawn significant amicus interest.

Of these positions, the former would make it easier to invalidate patents and the latter would make it more difficult.  If the Overrule-Metallizing-Engineering position prevails, I expect that the “on sale” question become an evolutionary vestige and the whole prior art focus of 102(a) will be on whether purported prior art was sufficiently “available to the public.”


Federal Circuit Pre-AIA “On Sale” Bar to UCC Level Offers

In The Medicines Company v. Hospira, Inc., App. No. 14-1469 (Fed. Cir. 2016) (en banc), the Federal Circuit has ruled that an invention claimed as a “product-by-process” is only “on sale” if “the subject of a commercial sale or offer for sale . . . that bears the general hallmarks of a sale pursuant to Section 2-106 of the Uniform Commercial Code.”

Read the Case: MedCo


Supreme Court Patent Report: End of 2015 Term

by Dennis Crouch

The Supreme Court has completed its patent law business for the 2015 term and will re-open decision making in September 2016.  Briefing and new filings will, however, continue throughout the summer.

Two Decisions: The Supreme Court has decided its two major patent cases – Halo/Stryker and Cuozzo.  In Halo, the court re-opened the door to more treble-damage awards for willful patent infringement.  The decision rejects the objective-recklessness standard of Seagate (Fed. Cir. 2007)(en banc) and instead places substantial discretion in the hands of district court judges for determining the appropriate sactions “egregious infringement behavior.”  In Cuozzo, the court affirmed the Federal Circuit’s pro-PTO decision.  The decisions confirms the PTO’s authority construe claims according to their broadest-reasonable-construction (BRI) even during post-issuance review proceedings and also confirms the Federal Circuit ruling that the PTO’s initiation of an inter partes review (IPR) proceeding is not appealable (even after final decision).  A major caveat of this appealability issue is that the court limited its holding to run-of-the-mill IPR patent issues.  The court did not determine when other issues arising from institution, such as constitutional due process challenges, might be appealable.

Both decisions are important. Halo adds at least a gentle breeze to the would-be patent infringement armada.  I heard many discussions of pendulum’s swinging in the days following the case, although I would not go quite so far.  Cuozzo was a full affirmance of the PTO position and will operate to continue to raise the statute and importance of the agency.

Three Pending Cases Set the Stage for Next Term: With the certiorari writ grant in Life Tech v. Promega, we now have three patent cases set for review and judgment next term.  The issue in Life Tech is fairly narrow and involves export of of a component of a patented invention for combination in a would-be-infringing manner abroad.  The statute requires export of a “substantial portion of the components” and the question in the case is whether export of one component can legally constitute that “substantial portion.”  In the case, the component (Taq) is a commodity but is also an admitted critical aspect of the invention.  Life Tech may be most interesting for those generally interested in international U.S. law (i.e., extraterritorial application of U.S. law).  The other two pending cases are Samsung v. Apple (special damages in design patent cases) and SCA Hygiene (laches defense in patent cases).

None of these three pending cases are overwhelmingly important in the grand scheme of the patent system, although Samsung is fundamental to the sub-genre of design patents.  This week, the Supreme Court denied certiorari in Sequenom v. Ariosa – a case that some thought might serve to rationalize patent eligibility doctrine in a way that favors patentees.  For now, the Mayo, Alice, _____ trilogy remains open-ended. This leaves the Federal Circuit in its nadir.

Following Cuozzo, the only AIA post-issue review cases still ongoing are Cooper and MCM.  These cases raise US Constitutional issues that were expressly not decided in Cuozzo.  Briefing is ongoing in MCM and one scenario is that the court will sit on Cooper and then grant/deny the pair together.  A new petition was filed by Trading Technologies just before Cuozzo was released – the case focuses on a mandamus (rather than appeal) of a CBM institution decision for a patent covering a GUI tool. (Full disclosure – while in practice I represented TT and litigated the patent at issue).  Of minor interest, the court issued a GVR order (Grant-Vacate-Remand) in Click-to-Call Tech. v. Oracle Corp (15-1014) with instructions to the Federal Circuit to reconsider its prior decision in light of the recently decided Cuozzo Speed Technologies, LLC v. Lee, 579 U. S. ___ (2016).  It will be interesting to see whether the patentee can develop a new hook for the Federal Circuit.

The end-of-term clean sweep leaves only two-more briefed-cases with potential for certiorari: Impression Prod. v. Lexmark Int’l. (post-sale restrictions); and Sandoz v. Amgen (BPCIA patent dance).  In both cases the court called for the views of the Solicitor General (CVSG). DOJ briefs should be filed around the end of the year – although the election may shift some of the timing.  SG Donald Verrilli has stepped down with former deputy Ian Gershengorn now serving as Acting SG.

The big list:


End of the Road for Ethicon’s Anti-Delegation Argument?

by Dennis Crouch

In a 10-1 decision, the Federal Circuit has rejected Ethicon’s petition for en banc rehearing on the question of  whether the USPTO Director improperly delegated IPR institution decisionmaking. Ethicon will likely petition the Supreme Court for its views.  The case raises interesting, but ones that I expect will ultimately fail.  Chief Judge Prost likely held the decision release to await the Cuozzo affirmance that implicitly supports the court’s ruling here.

Inter Partes Reviews (IPRs) can be broken down into a two step process. At the institution stage, the Patent Office Director is tasked with determining whether to institute the proceeding. 35 U.S.C. § 314. Once instituted, the Patent Trial and Appeal Board (PTAB) holds trial and makes a final determination of merits. 35 U.S.C. § 316(c).  Despite the statutory separation, the Director has delegated the entire procedure to the PTAB – including the institution decision.  In its failed petition, Ethicon questioned this delegation – asking: “Does the Patent Act permit the [PTAB] to make inter partes review institution decisions?”

The decision in Cuozzo does not directly address the challenge issues here, but the court’s loose language does suggest that it would side with the Federal Circuit.  In particular, the court repeatedly refers to actions by the “Patent Office” regarding institution and other decision rather than using the statutory language “Director.”  Although not as consistent, the court also repeatedly refers to actions by the PTAB as by the “Patent Office.”  In his dissent, Judge Alito addresses the issue directly and without criticism, although failing to note that Director Lee is a woman:

The Director of the Patent Office has delegated his authority to institute inter partes review to the Patent Trial and Appeal Board (Board), which also conducts and decides the inter partes review. See 37 CFR §§42.4(a), 42.108 (2015); 35 U. S. C. §§316(c), 318(a). I therefore use the term “Patent Office” to refer to the Director, the Board, and the Patent Office generally, as the case may be.

Alito dissent at footnote 2.