717 Madison Place

According to Wikipedia, Judge Pauline Newman of the Federal Circuit will mark a major milestone next Tuesday June 20th, when she turns 90 years old.  I was planning on posting a congratulatory post next Tuesday; but, it occurs to me that there are many people in the patent community who might want to send Judge Newman a card or note of thanks for her public service.  If you are one of those people, I believe an appropriate address would be:

The Honorable Pauline Newman

United States Court of Appeals for the Federal Circuit

717 Madison Place, N.W.

Washington, D.C. 20439.

You can read more about Judge Newman’s amazing career [here].  One thing seems clear, the secret to a long and productive life must be an open mind about patent eligibility.

(For those of you in big firms, I suspect your competitors will be sending unique flower arrangements.)

With Judge Wallach on the panel in the Federal Circuit’s panel-stacking case, I’m curious if the court will look to other areas of the law, such as courts of military justice, to evaluate the fairness of panel stacking.  In U.S. v. Sullivan, the United States Court of Appeals for the Armed Forces approved of a convening authority’s practice because the selected panelists were fairly selected:

First, there is no appearance of an unfair panel in this

case. Although the convening authority deviated from the

Article 25, UCMJ, criteria by categorically excluding flag

officers from the venire panel, he provided Appellant with a

venire of fellow senior captains who were fully qualified to sit

on a court-martial panel. Indeed, we find no basis to conclude

that the convening authority selected the members on any factors

other than their “age, education, training, experience, length

of service, and judicial temperament.” Article 25(d)(2), UCMJ.

Further, the record provides no indication that these panel

members failed to fully, carefully, and appropriately consider

Appellant’s case in arriving at a verdict and sentence.

Moreover, the convening authority’s motivation in excluding flag

officers from this case was not to stack the panel against

Appellant. Rather, the convening authority relied on his

experience in concluding that the flag officers would not be

available to actually sit on the panel and hear the case.4 United

States v. Gooch, 69 M.J. 353, 358 (C.A.A.F. 2011). Based on these

circumstances, we conclude that there was no appearance of

unfairness.

Notably, the convening authority did not select panel members based on a pre-disposed point of view.

The Federal Circuit resolves its internal splits by going en banc.  The USPTO has a similar provision in that it allows all of its PTAB judges to vote whether a decision should be made precedential.  However, the USPTO has something that the Federal Circuit does not have — if the Director of the USPTO chooses to do so, he or she may enlarge a panel with additional judges in order to reconsider an initial appeal decision.  This would be the equivalent of the Federal Circuit’s Chief Judge enlarging a CAFC panel after an initial decision.  Moreover, the USPTO has notice and comment rule making at its disposal.

The PTO’s new acting Director, Joe Matal, has argued several cases before the Federal Circuit during his time in the Solicitor’s office.  One case that comes to mind is  Apple v. Ameranth, a patent eligibility case.  One sound bite that I like from that case is available here: [Listen].  In that sound bite, Mr. Matal noted that it was the Office’s position that secondary indicia could be used by a patent owner to show patent eligibility.  Implicit in his frank statement is a recognition that secondary indicia go toward resolving factual issues that underlie the patent eligibility analysis.

The PTO’s brief in the Apple v. Ameranth case — available [here] — is also instructive.  Part of that brief argued that the patent challenger had failed to provide factual evidence under step 2 of the Alice test that a claim as a whole was (1) routine and (2) conventional.  Therefore, the patent challenger failed to meet its burden of proving the patent claim to be patent ineligible.

1. The Petitioners Presented No Evidence or Argument that the Claims’ Recited Technology Is Routine and Conventional

Dependent claims 3 and 11 include the additional limitation that “the modified second menu can be linked to a specific customer at a specific table directly from the graphical user interface of” a hand-held or other computing device. A66; A67. Claims 6 through 9 and claims 13 through 16 include the additional limitations that the manual modification of the second menu is implemented via handwriting capture, handwriting recognition and conversion to text, voice capture, or voice recognition and conversion to text. A67.
The Board found that the petitioners failed to meet their burden of showing that these additional limitations require only routine and conventional technology. A42; A43.

Before the Board, Ameranth asserted that the ’733 patent’s dependent claims “include additional and independently unique inventive elements.” A1515. In particular, Ameranth asserted that “linking a particular order to a particular customer at a table was novel then and unique to mobility and wireless handhelds.” A1530. Ameranth also argued that claims 6 through 9 and claims 13 through 16 “recite particular kinds of manual modification,” and quoted statements in the press made by the petitioners that, according to

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Ameranth, confirm the novelty of the recited technologies. A1530. Because Ameranth presented separate arguments for the patentability of these dependent claims, the Board was required to consider them individually rather than treat the independent claims as representative. See Content Extraction and Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1348 (Fed. Cir. 2014).

The entirety of the petitioners’ reply to Ameranth with respect to these dependent claims consisted of two sentences. First, the petitioners asserted that the claims’ additional “elements are, at most, insignificant extra-solution activity that cannot save subject matter from patent ineligibility.” A1619. The petitioners also argued that “‘linking a particular order to a particular customer at a table’ and ‘manual modification’ are classic examples of manual tasks that cannot be rendered patent-eligible merely by performing them with a computer.” Id.

The petitioners’ first sentence is merely a conclusion that is unaccompanied by any evidence or analysis. It did not satisfy the petitioners’ burden of showing that the challenged claims are unpatentable. See 35 U.S.C.
§ 326(e) (“the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence”); Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378-79 (Fed. Cir. 2015).

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The petitioners’ second statement—that the claimed operations could be performed manually, without a computer—is directed only to the first step of the Alice inquiry. See CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011) (noting that “methods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas”). The fact that a process can be executed without a computer, however, does not address the second step of the Alice inquiry: whether the process’s actual implementation on a computer requires nonobvious technologies. All computer technology has been, within living memory, new and unconventional. The fact that it could always implement mental processes has not forever rendered it patent ineligible. See Alice, 134 S. Ct. at 2354 (“an invention is not rendered ineligible for patent simply because it involves an abstract concept”).

The petitioners failed to present any evidence or analysis showing that the technology recited in claims 3, 6-9, 11, and 13-16 is routine and conventional. They failed to make their case under Alice. The Board thus properly determined that they had not met “the[ir] burden of proving a proposition of unpatentability by a preponderance of the evidence.” 35 U.S.C. § 326(e).

2. The Petitioners’ New Arguments Were Never Presented to the Board and Are Now Waived

In this Court, the petitioners present several new arguments that the

technology recited in claims 3, 6-9, 11, and 13-16 is routine and conventional. 38

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The petitioners contend that prior art patents, admissions in the ’733 patent’s specification, and the specification’s lack of a non-prior art enabling disclosure demonstrate that the recited technology is pre-existing and generic. Because none of these arguments was presented below, they are now waived. See Baxter, 678 F.3d at 1362.

These new arguments also suffer from other deficiencies. The petitioners quote passages of the ’733 patent’s specification that they contend contemplate the use of existing technology to implement handwriting and voice capture.
Pet. Br. at 35-36. The petitioners cite a passage that notes, with respect to the handwriting capture illustrated by figure 8, that “the operator screen on the hand-held [device] can capture handwritten information specific to a customer’s requests directly on the touch-sensitive screen.” A60, col.3, ll.58-60. The petitioners also cite a passage that describes how “a server taking a drink order could select from a menu of her hand-held device’s screen ‘Iced Tea,’ and then record the voice message ‘with lemon’ using her hand-held device integral microphone.” A60, col.4, ll.18-22.

These passages simply describe the intended functioning of the claimed invention. They nowhere state that the technology for implementing handwriting and voice capture is pre-existing. In contrast, for example, to the passages of the specification that the Board relied on to establish that graphical

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user interfaces and data synchronization are conventional (A31; A32), nothing in these passages identifies commercially available software that implements the claimed functions.

Moreover, again, these passages from specification were never cited to the Board. The Board’s administrative patent judges “are not like pigs, hunting for truffles buried in the record.” Gross v. Town of Cicero, 619 F.3d 697, 702 (7th Cir. 2010). It is the petitioners who bore the burden of marshalling information to make their case.

The petitioners also contend that nothing in the ’733 patent’s specification describes non-prior art means for implementing handwriting and voice capture or linking customers’ locations to their orders. Pet. Br. at 35-37, 42. They appear to argue that such a gap compels a finding that the recited technology is ineligible.

As discussed in section IV.D.2.b of this brief, supra at pp. 27-30, when the Board’s background knowledge indicates that a recited computer function is conventional and routine, the specification’s failure to describe a non-prior art means for implementing the function can confirm that finding. See, e.g., Internet Patents, 790 F.3d at 1348. The absence of an enabling disclosure, however, does not require the Board to conclude that a recited technology is conventional. A claim may recite eligible subject matter and yet simply fail to

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satisfy the requirements of § 112(a). Claims directed, for example, to a machine for time travel, or to a process for transforming lead into gold, are patent eligible, despite the fact that their accompanying specifications have (so far) failed to describe a means for enabling these inventions. A lack of enablement does not compel a finding that a claim fails Alice’s step two.

Finally, the petitioners assert that they did cite a prior-art patent before the Board that they contend demonstrates the conventionality of handwriting capture and conversion, as well as linking an order to a customer’s location.
Pet. Br. at 37-38, 42 (discussing U.S. Patent No. 4,972,496). This patent was cited in the petitioner’s reply before the Board, but only with respect to the independent claims’ broad recitation of “manually modifying” a document on a handheld computer. A1614-1616. It was not cited in the portion of the reply that addresses the dependent claims, nor was it described in the reply as disclosing the conventionality of handwriting recognition or conversion or linking orders to locations. Because this evidence was never cited in relation to the disputed limitations, the argument is now waived. See Baxter, 678 F.3d at 1362.

Perhaps the PTO will revise its patent eligibility guidance under Mr. Matal to require factual evidence by examiners when they assert that a claim as a whole recites routine and conventional activity.  Notably, in the PTO’s Ameranth brief, it states:

You can listen to the entire oral argument [here].

You can review the court’s decision [here].

One of the interesting twists in tomorrow’s oral argument of Nidec Motor Corporation v. Zhongshan Broad Ocean Motor Co. is that Nathan Kelley, the USPTO Solicitor, has entered a notice to argue the case on behalf of the USPTO.  If I am not mistaken, Mr. Kelley was serving as the interim Chief Judge of the PTAB at the time the enlarged panel was ordered.  So, this is a very rare instance, or perhaps totally unprecedented, where the Federal Circuit will be able to ask questions directly of the administrative official who ordered an enlarged Board panel.

I suppose some questions that might come up are:

1)  Why was the original panel enlarged?

2) Did the Commissioner order the enlarged panel and how were those instructions communicated?

3) How were the additional judges selected?  What criteria was used to select the additional judges?

4) Has a vote ever been taken among the PTAB judges as a whole as to whether a self-joinder decision of the  PTAB should be made precedential and what was the outcome of that vote?

5)  Did Colonel Jessup order the code red . . . . wait, we already know the answer to that one.

6)  Is the appellant correct that the decision of In re Alappat, while abrogated in part on other grounds, does not sanction the use of stacked panels?

7)  Why isn’t notice and comment rule making a better vehicle for achieving the Commissioner’s policy, especially with the option of Commissioner directed reexamination still available for an unjoined argument in this case?

The oral argument in Nidec Motor Corporation v. Zhongshan Broad Ocean Motor Co. is scheduled for this Thursday. The more interesting issue in this appeal is whether the USPTO improperly stacked the PTAB re-hearing panel to arrive at a preordained outcome.

The USPTO has intervened in the appeal.  Its brief is presented as the intervenor’s brief.  Also, BIO has filed an amicus brief in the appeal.

The briefs are available below:

Appellant’s brief: [link]

Appellee’s brief: [link]

Intervenor’s brief: [link]

Amicus brief: [link]

Reply brief: [link].

The Federal Circuit’s en banc opinion in In re Alappat is available [here].

The Supreme Court’s Cuozzo v. Lee opinion is available [here].

Those of you in the D.C. area might want to mark your calendars for next Thursday.  The Federal Circuit will be hearing oral argument in one of its panel-stacking cases, Nidec Motor Corporation v. Zhongshan Broad Ocean Motor Co.  I will try to post the briefs and more about the appeal in a future post.

To allow the Commissioner to gerrymander the 1575*1575 composition of the board to insure a preordained result directly conflicts with the concept “that in administrative proceedings of a quasi-judicial character the liberty and property of the citizen shall be protected by the rudimentary requirements of fair play.” [Morgan v. United States, 304 U.S. 1, 58 S.Ct. 773 (1938)] at 14-15, 58 S.Ct. at 775. See also Utica Packing Co. v. Block, 781 F.2d 71, 78 (6th Cir.1986) (decision of the Department of Agriculture reversed because the secretary’s removal of the adjudicating officer who rendered the original decision and assigning a new one to rule on a petition for reconsideration violated due process.) “There is no guarantee of fairness when the one who appoints a judge has the power to remove the judge before the end of proceedings for rendering a decision which displeases the appointer.” 781 F.2d at 78.

In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994)(en banc)(Judge Mayer and Judge Michel’s dissenting opinion).

The recent decision in Atlas Power, LLC v. Commonwealth Edison Co. is curious in that it only shows Judges O’Malley and Hughes as the judges on the decision.  Judge Moore presided over the oral argument.  It is unclear if Judge Moore’s name missing from the decision is just an error or a late recusal without explanation. Usually, the Federal Circuit corrects printing errors relatively quickly.

The court’s opinion is available [here].

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Update:  May 21, 2017

Whoops — my “erratum.”  I see from this IPLaw360 article [Link] that it was indeed a late recusal without explanation.

The oral argument is available [here].

Any enterprising Chinese restaurants located near courthouses or law offices around the country might want to add this fortune to some of their cookies:

The oral argument of the day comes from the recently decided Williamson v. Citrix case.  The oral argument focuses on patent eligibility issues.  There were two sound bites that I thought would be of particular interest.  In this sound bite, Judge Moore refers to the old Alappat test that new software makes a new computer each time you run it: [Listen]. And, in this sound bite, Judge Moore notes that nobody would be more fond of turning the Alice decision on its head than she would, just show her the path:  [Listen].

The entire oral argument is available [here].

The court’s Rule 36 judgment is available [here].

The Supreme Court heard oral argument last week in its final IP case of the term, Sandoz, Inc. v. Amgen, Inc.

The questions presented, as laid out in the Solicitor General’s CVSG brief, are:

The recording of the oral argument is available for download or streaming at this [link].

The Docket Report site highlighted the recent summary judgment order in Regents of the University of California v. California Berry Cultivars.  The case offers a trifecta of fun topics:  plant patent infringement, extraterritoriality, and strawberries.  Who doesn’t like strawberries!

The summary judgment order is available [here].

In the recent oral argument of TVIIM v. McAfee, the appellant argued that claims must be construed the same way for purposes of validity as they are for infringement.  The Federal Circuit acknowledged that principle in its opinion.

I thought it would be interesting to list some of the quotations reciting the principle because I think it might play a role in how the court assesses patent eligibility in future cases.  Namely, if certain panels of the Federal Circuit are going to abridge the construction of claims for purposes of a patent eligibility analysis  —  e.g., “collecting information, analyzing it, and displaying certain results of the collection and analysis” are “a familiar class of claims ‘directed to’ a patent-ineligible concept.” See Elec. Power Grp. v. Alstom, 830 F.3d 1350, 1353 (2016) — the court should prepare itself for bold patent litigants to assert equally abridged constructions in the infringement context.

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Claim terms must be construed the same way for the purpose of determining invalidity and infringement. Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1330 (Fed. Cir. 2003).

TVIIM, LLC v. McAFEE, INC., No. 2016-1562 (Fed. Cir. Mar. 21, 2017) (Judge Reyna writing for the court).

It is axiomatic that claims are construed the same way for both invalidity and infringement. W.L. Gore & Assoc., Inc. v. Garlock, Inc., 842 F.2d 1275, 1279, 6 USPQ2d 1277, 1280 (Fed.Cir.1988).

Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1330 (Fed. Cir. 2003) (Judge Michel writing for the court).

Having construed the claims one way for determining their validity, it is axiomatic that the claims must be construed in the same way for infringement. See, e.g., Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1449, 223 USPQ 603, 610 (Fed.Cir.1984). The district court was bound by this court’s interpretation of the term “rate of stretch” as the law of the case in deciding infringement on remand.

W.L. Gore & Assoc., Inc. v. Garlock, Inc., 842 F.2d 1275, 1279 (Fed.Cir.1988) (Judge Rich writing for the court).

Regardless of how patent claims may be arrived at during the vicissitudes of prosecution, the invention patented is no more and no less than what the finally issued claims, as construed by the court, define; and they must be construed in the identical way for both infringement and validity. That Roeder may have once thought he could get a claim allowed on the broad idea of merely using two lines of adhesive, or that his attorney may have made the attempt without success, is not determinative of what he finally succeeded in patenting as his invention. The court must consider, on the obviousness issue, only what was granted, not the unsuccessful — and not unusual — attempts at overreaching in the early stages of the patent application prosecution.

Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1449 (Fed.Cir.1984) (Judge Rich writing for the court).

Having construed the claims one way for determining validity, it is axiomatic that the claims must be construed in the same way for infringement.

SmithKline Diagnostics, Inc. v. Helena Laboratories Corp., 859 F. 2d 878 (Fed. Cir. 1988) (Judge Nies writing for the court).

Bristol stated its view in response to requests for admission that the claims of each patent would be infringed without a showing of an objective response in every patient. Bristol cannot have an expression be limiting in this context and non-limiting in another. W.L. Gore Assocs., Inc. v. Garlock, Inc., 842 F.2d 1275, 1279, 6 USPQ2d 1277, 1280-81 (Fed.Cir.1988) (“Having construed the claims one way for determining their validity, it is axiomatic that the claims must be construed in the same way for infringement.”). We therefore affirm the district court’s interpretation of “antineoplastically effective amount” as non-limiting.

Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368 (Fed. Cir. 2001) (Judge Lourie writing for the court).

As above indicated, the district court held in its opinion after the first trial that none of the prior art “showed a combination of one fixed and several free floating sprockets, whether mounted on a keyed round shaft or on a square shaft,” and that “it was a known principle . . . that a square shaft could be substituted for a keyed round shaft,” and that “variations on the non-round shaft have been around for years in one application or another,” and that “[T]he essence of patent ‘341 is the need to maintain a positive drive relationship between the sprocket and the belt” in light of expansion caused by temperature fluctuations. Thus, the court, in considering the validity issue, interpreted the claim as drawn to fixed and free floating sprockets on a non-round shaft, without regard to the particular cross sectional shape of the non-round shaft. “Having construed the claims one way for determining their validity, it is axiomatic that the claims must be construed in the same way for infringement.” W.L. Gore & Assoc., Inc. v. Garlock, Inc., 842 F.2d 1275, 1279, 6 USPQ2d 1277, 1280 (Fed.Cir.1988). Here, the district court committed legal error in interpreting claim 1 differently for infringement, i.e., as though it were limited to use of a square or other regular polygonal shaft (“The inventiveness in 341 was putting together the square shaft or other regular polygonal shaft, which gives you a very positive drive mechanism, putting that together with fixing one sprocket and letting others float.”).

Laitram Corp. v. Cambridge Wire Cloth Co., 863 F.2d 855, 9 U.S.P.Q.2d 1289 (Fed. Cir. 1988) (Chief Judge Markey writing for the court).

The USPTO issued a new Quick Reference Sheet yesterday on its patent eligibility page.  The new eligibility quick reference guide is available here:

• Decisions holding claims eligible and identifying abstract ideas (quick reference sheet updated April 26, 2017)NEW

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I was researching an issue in the Chisum treatise the other day and stumbled upon the Coe v. U.S., 84 F.2d 240 (D.C. Cir. 1936) case.  I thought it might be of historical interest to some.  It was a rare use of a writ of mandamus to require the Patent Office to take action — in the Coe case that action was entry of an amendment.

________________________________________________________________

COE, Commissioner of Patents,
v.
UNITED STATES ex rel. REMINGTON RAND, Inc.

No. 6607.United States Court of Appeals for the District of Columbia.

Decided April 27, 1936.241*241 R. F. Whitehead, of Washington, D. C., for appellant.

Charles M. Thomas, of Washington, D. C., and S. E. Darby, Jr., of New York City, for appellee.

Before MARTIN, Chief Justice, and ROBB, VAN ORSDEL, GRONER, and STEPHENS, Associate Justices.

VAN ORSDEL, Associate Justice.

The Commissioner of Patents appeals from an order of the Supreme Court of the District of Columbia granting appellee’s petition for a writ of mandamus directing the Commissioner to enter and consider a certain amendment filed on September 20, 1934 to a pending application for patent of one Lasker, serial No. 681,333, filed December 18, 1923 and assigned to the appellee, Remington Rand, Inc.

It appears that, during the period in which the Lasker application was pending in the Patent Office, eight different official actions were had, in five of which new art was cited by the Primary Examiner. It may be assumed that the delay in the consideration of this case by the Patent Office was due to these numerous actions.

After his application was allowed, applicant copied claims from a patent which had been issued to Lake and Storey on September 9, 1930. The Primary Examiner held that Lasker’s application supported certain of the claims, and accordingly, by direction of the Commissioner, an interference was declared involving the Lake and Storey patent. Lake and Storey moved to dissolve the interference, urging the failure of Lasker’s application to support the interference issues. The Examiner of Interferences granted the motion to dissolve, thereby reversing the decision of the Primary Examiner. Lasker then appealed to the Board of Appeals, which affirmed the decision of the Examiner of Interferences, and dissolved the interference.

This operated to restore the Lasker application to the Primary Examiner, where its prosecution was resumed. Upon further hearing the Primary Examiner rejected all claims involved in the interference, including the claims which had been previously allowed to Lasker. Lasker promptly filed an amendment to his application, traversing the new ground of rejection. The amendment included not only matter taken from prior art patents, which had been used as cross-references in the Lasker application as filed, but also additional claims tending to avoid the new ground of rejection found by the Examiner.

The Examiner refused to enter and consider the amendment, although the prosecution of the application was still pending; that is, the case had the status of a regularly pending application. Thereafter the Commissioner refused to enter the amendment, and it is urged that, since no appeal lies from his refusal, the remedy is by mandamus to compel him to order the Examiner to enter and consider the amendment.

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