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The Supreme Court heard oral argument in the combined proceedings of Halo Electronics, Inc. v. Pulse Electronics, Inc. et al. and Stryker Corp. et al. v. Zimmer, Inc. et al. last week.  I have broken the argument down into the various speaker segments below:

Mr. Wall on behalf of Petitioners: [Listen]

Mr. Martinez on behalf of United States, as amicus curiae, supporting petitioners: [Listen]

Mr. Phillips on behalf of Respondents: [Listen]

Mr. Wall’s rebuttal:  [Listen].

The transcript is available [here].

In recent years, the Patent Office has implemented training to get examiners to state on the record not only when claim language is understood to invoke 112(f)/112(¶6), but also when close language is understood not to do so.  This results in the curious office actions every now and again where an examiner expressly states that claim language (that does not recite “means”) is not understood to be means plus function language.

Since patent prosecutors typically like to have their cake and eat it, too, the natural thought to go through a prosecutor’s mind is “Well, what if I eventually need that claim to be interpreted as a means plus function claim during litigation in order to preserve validity — I didn’t write the claim with that intention, but I don’t necessarily want to surrender that option during prosecution, if I don’t have to.”

The situation is similar to when an examiner states the reasons why a claim is allowable in a notice of allowance.  The patent prosecutor is happy that the claims have been allowed, but he/she doesn’t particularly want the claims to be colored by the Examiner’s statements.

What many prosecutors have done in regard to the notice of allowance issue is to submit a paper that indicates that the Applicant believes that the claims are allowable because of the claim language as a whole and not necessarily due to any particular feature.  This is done to reduce the possibility that the Applicant could be accused of having agreed to or acquiesced to the Examiner’s view.

I suspect that a similar approach will be taken by prosecutors with respect to the 112 statements, in the future.  Namely, a boilerplate response statement will be fashioned that shows on the record that the Applicant did not acquiesce to the Office’s interpretation.

A good case from 2005 that discusses “acquiescence” is Salazar v. Procter and Gamble, shown below:

Alfred SALAZAR, Plaintiff-Appellant,
v.
PROCTER & GAMBLE COMPANY, Defendant-Appellee.

No. 04-1013.United States Court of Appeals, Federal Circuit.

July 8, 2005.1343*1343 Henry C. Su, Fenwick & West LLP, of Mountain View, California, argued for plaintiff-appellant. With him on the brief were Brenda M. Simon and Kent Kemeny.

Charles J. Faruki, Faruki Ireland & Cox P.L.L., of Dayton, Ohio, argued for defendant-appellee. With him on the brief was Thomas R. Kraemer.

Before RADER, BRYSON, and GAJARSA, Circuit Judges.

Opinion for the court filed by Circuit Judge RADER. Dissenting opinion filed by Circuit Judge BRYSON.

RADER, Circuit Judge.

Alfred Salazar owns U.S. Patent No. 5,535,474 (‘474 patent) for a toothbrush having polishing rods that clean and polish the teeth and stimulator rods that stimulate the gums during brushing. ‘474 patent, Abstract. Salazar, acting pro se,sued Procter & Gamble Co. (Procter & Gamble) for infringement of the ‘474 patent. Procter & Gamble moved for summary judgment because its toothbrushes do not include the “elastic” feature of claim 1, the only independent claim of the ‘474 patent. On September 8, 2003, the district court issued an order construing the “elastic” limitation and granting summary judgment to Procter & Gamble because its products do not infringe literally or under the doctrine of equivalents. Salazar v. Procter & Gamble Co., No. 02-CV-590-C (N.D.Okla. Sept. 8, 2003) (Order). Because the district court erred in using the patent examiner’s Reasons of Allowance to exclude nylon from the scope of the claim term “elastic,” this court vacates the grant of summary judgment and remands.

I

Mr. Salazar submitted U.S. Patent Application No. 409,149 (‘149 application) on March 23, 1995, which eventually matured into the ‘474 patent. The ‘474 patent claims a toothbrush with, inter alia, elastic stimulator rods and elastic polishing rods that extend above the bristles of the brush. ‘474 patent, col. 5, I. 30 — col. 6, I. 23. The ‘149 application initially contained an independent claim 1 and five dependent claims. Claim 2 of the ‘149 application depended from claim 1; and claim 3 from claim 2. The examiner rejected claim 1 as obvious over U.S. Patent No. 3,072,944 (issued Jan. 15, 1963) to Clayton (Clayton) in light of U.S. Patent No. 3,103,679 (issued Sept. 17, 1963) to Clemens (Clemens). The examiner objected to claims 2 and 3 as allowable subject matter dependent upon a rejected base claim.

The applicant responded by canceling claims 1-3 and introducing a new claim 7 based on the allowable subject matter of claim 3. The examiner allowed claim 7 without rejection, which issued as claim 1 of the ‘474 patent. In the Notice of Allowance, the examiner made the following remarks in the Examiner’s Statement of Reasons for Allowance:

Claim 7 now incorporates previously held allowable subject matter. . . . Although the patent to Clemens appears to have the recited structure, Clemens’ “rods” 22 are made of nylon, which is not considered “elastic”. Obviously the “rods” of Clemens are flexible, but are not considered to be “elastic” as recited by the claim.

The applicant did not respond to these remarks by the examiner. The ‘474 patent issued with claim 7 renumbered as claim 1.

1344*1344 Mr. Salazar sued Procter & Gamble alleging infringement of certain claims of the ‘474 patent. Procter & Gamble filed a motion for summary judgment of no infringement either literally or under the doctrine of equivalents. Procter & Gamble contended that the stimulator and polishing rods in its products are not “elastic” as required by claim 1. The district court construed the term “elastic” and granted Procter & Gamble’s motion for summary judgment. Order at 5 & 7. Specifically, the district court construed the term “elastic” as “any material other than nylon, capable of returning to an initial state or form after deformation.” Order at 5 (internal quotation and citation omitted).

The district court granted summary judgment of no infringement because Mr. Salazar did not present sufficient evidence to raise an issue of fact about the elasticity of the stimulator and polishing rods in the accused products. Id. at 7. Thus, the district court concluded that the accused products did not fall within the court’s interpretation of the claim term “elastic.” Id. The district court also found that the doctrine of prosecution history estoppel barred Mr. Salazar from asserting infringement of the “elastic” limitation under the doctrine of equivalents. Id. at 6. Mr. Salazar appeals.

II.

A determination of infringement requires a proper interpretation of the scope and meaning of the claim followed by a comparison of the accused product to that claim scope. Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1320 (Fed. Cir.2003); Carroll Touch, Inc. v. Electro Mech. Sys., Inc., 15 F.3d 1573, 1576 (Fed. Cir.1993). In the context of a grant of summary judgment of no infringement, this court reviews the entire infringement inquiry without deference. Omega Eng’g, 334 F.3d at 1320. “Summary judgment is therefore appropriate when there is no genuine issue of material fact or when, drawing all factual inferences in favor of the nonmoving party, no `reasonable jury could return a verdict for the nonmoving party.'” Id. (citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986)).

In construing claims, “[t]his court … considers the prosecution history to determine whether the applicant clearly and unambiguously disclaimed or disavowed any interpretation during prosecution in order to obtain claim allowance.” 3M Innovative Props. Co. v. Avery Dennison Corp., 350 F.3d 1365, 1371 (Fed.Cir. 2003) (internal quotations and alterations omitted); accord Omega Eng’g, 334 F.3d at 1324; Middleton, Inc. v. Minn. Mining & Mfg. Co., 311 F.3d 1384, 1388 (Fed.Cir. 2002); Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed.Cir.1985).

The doctrine of prosecution history estoppel serves to limit the doctrine of equivalents when the applicant makes a narrowing amendment for purposes of patentability, or clearly and unmistakably surrenders subject matter by arguments made to the examiner. See Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.,535 U.S. 722, 736, 122 S.Ct. 1831, 152 L.Ed.2d 944 (2002) (narrowing amendment for purposes of patentability); Eagle Comtronics, Inc. v. Arrow Communication Labs., Inc., 305 F.3d 1303, 1316 (Fed.Cir. 2002) (argument-based estoppel); Elkay Mfg. Co. v. EBCO Mfg. Co., 192 F.3d 973, 979 (Fed.Cir.1999)(argument-based estoppel).

The first and only time the examiner discussed the “elastic” limitation was in the Examiner’s Statement of Reasons for Allowance. The examiner did not at any time reject a claim of the ‘149 application containing the “elastic” limitation as anticipated 1345*1345 or obvious in view of the prior art. Other than the remarks in the Examiner’s Statement of Reasons for Allowance, the prosecution history does not contain any discussion of the “elastic” limitation by either the examiner or the applicant. Nonetheless, the district court excluded nylon from the scope of “elastic.” Order at 5. Specifically, the district court found that the remarks in the Examiner’s Statement of Reasons for Allowance “amended the claim specifically to exclude nylon from the definition of `elastic.'” Id. Thus, this appeal requires this court to decide whether unilateral statements of an examiner in stating reasons for allowance can create a clear and unambiguous disavowal of claim scope and give rise to prosecution history estoppel.

The regulations in force during the prosecution of the ‘149 application state:

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Over the weekend, I was looking through my copy of Gregory Stobbs’ excellent book “Software Patents.”  In Appendix A (at least in my old copy of the book) he has a copy of the proceedings from 1994 of the “Public Hearing on Use of the Patent System to Protect Software-Related Inventions.”

It is interesting to look back at the comments as well as the companies represented and the folks who made the comments.  The transcripts of the proceedings are available [here] and [here].

Judge Nina Wang is one of the few patent litigators to have ascended to the federal judiciary.  She serves as a US magistrate judge here in Denver, CO.  You can read one of her recent recommendations on patent eligibility issues from Brain Synergy Institute, LLC v. Ultrathera Technologies, Inc. [here].

Judge Sri Srinivasan of the D.C. Circuit has been mentioned as a front-runner to fill Justice Scalia’s seat on the Supreme Court.  Judge Srinivasan and Federal Circuit Judge Richard Taranto were advocates on opposite sides of the case Hynix Semiconductor, Inc., et al. v. Rambus Inc., 645 F.3d 1336 (Fed. Cir. 2011), before they took seats on their respective courts.   You can listen to that oral argument here: [Listen].

FYI, it appears that the USPTO’s patent eligibility guidance page was updated today with this material:

• Abstract Idea Workshop II Materials (For use with the July 2015 Update Appendix 1:  Examples – July 30, 2015) (February 2016)NEW
  • Slides
  • Handout (includes background and claims for the examples)
  • Worksheet Example 21, claim 1
  • Worksheet Example 21, claim 2
  • Worksheet Example 23, claim 3
  • Worksheet Example 23, claim 4

You might recall that in Ex Parte Poisson the PTAB reversed an examiner who had not provided evidence that a claim recited a purported abstract idea.  Namely, in Ex Parte Poisson, the PTAB wrote:

The Public Pair site shows that the patent application was subsequently allowed without any further argument from the Office:

The patent issued as US Patent 9,114,310.

In the most recent round of comments submitted with respect to the 101 guidelines, many groups and individuals call for a requirement that an examiner support an assertion of an abstract idea with evidence. [Link]

The circuit riders of the Federal Circuit will hit the trail for Washington & Lee University this March, where a session of oral arguments will be held. Washington and Lee University is located in Lexington, VA, just west of the Appalachian trail. The announcement from the Federal Circuit web site states:

THE FEDERAL CIRCUIT TO SIT AT WASHINGTON & LEE UNIVERSITY SCHOOL OF LAW, WEDNESDAY, MARCH 23, 2016

Pursuant to 28 U.S.C. § 48, a panel of the Federal Circuit Court of Appeals will hear oral arguments at Washington & Lee University School of Law in Lexington, Virginia, on Wednesday, March 23, 2016. Oral arguments will begin at 10 a.m. in the Millhiser Moot Court Room. In accordance with routine practice, the names of the panel judges will not be released prior to the morning of scheduled arguments. Additional information will be available on the Court’s website at the Arguments/Upcoming Arguments tab.

Back in 1994, the year I began practicing patent law, the Federal Circuit dealt with the contentious issue of “panel stacking” by the Commissioner in the case of In re Alappat.  The en banc Federal Circuit approved of the panel stacking practice in that decision.

With the recent influx of PTAB decisions interpreting new provisions of the AIA, especially IPR provisions, there have been occasions when an initial PTAB decision has been replaced by a decision by an expanded panel on rehearing.  Thus, the issue of “panel stacking” will most likely be an increasing topic of discussion in the future.  Moreover, the issue has been raised by the likes of Judge Taranto as recently as last month during the Yissum oral argument.  With that as background, I thought it might be of interest to post Judge Mayer’s dissent on the legality of panel stacking from the In re Alappat decision:

MAYER, Circuit Judge, with whom MICHEL, Circuit Judge, joins, dissenting.

I do not agree that we have jurisdiction over this appeal. The Commissioner exceeded his statutory authority in convening a new, expanded panel to reconsider the board’s original decision in Alappat’s appeal from the examiner. Because the Commissioner’s acts were not in accordance with law, the reconsideration decision cannot be a “decision of the Board of Patent Appeals and Interferences” within the meaning of 28 U.S.C. § 1295(4)(A) (1988), and this court has no jurisdiction to address the merits of the appeal. See In re Bose Corp., 772 F.2d 866, 869, 227 USPQ 1, 3 (Fed.Cir.1985) (an improperly constituted board may not render a valid decision over which this court may exercise its review jurisdiction). As the Supreme Court has said, “A court-martial [for which we may substitute “board”] is the creature of statute, and, as a body or tribunal, it must be convened and constituted in entire conformity with the provisions of the statute, or else it is without jurisdiction.” McClaughry v. Deming, 186 U.S. 49, 62, 22 S.Ct. 786, 791, 46 L.Ed. 1049 (1902).

The Patent Act provides that “[o]nly the Board of Patent Appeals and Interferences has the authority to grant rehearings.” 35 U.S.C. § 7(b) (1988). The Solicitor argues that the statute is ambiguous, that it is unclear what the composition of the “Board” must be for the “Board” to “grant rehearings” or to actually rehear an appeal. Therefore, this court should defer to the Commissioner’s interpretation of the meaning of this clause of section 7.

However, the Solicitor presents conflicting impressions of the board and its role. On one hand, he argues that the board is not an independent body, but is simply an extension of the former power of the Commissioner to 1572*1572 directly hear appeals from decisions of primary examiners. The board is an alternative avenue through which the Commissioner may make “policy” decisions, of which as head of the Patent Office, he is the final arbiter. This being the case, the Commissioner has broad discretionary authority to designate, or redesignate, panels to keep the board from rendering decisions contrary to his policy. Therefore, the “Board” that either grants rehearings or rehears appeals is whatever collection of members the Commissioner chooses to designate at any stage of the proceeding before a final decision is entered.

On the other hand, the Solicitor analogizes the board to a court. He says it regularly sits in panels of three, but is capable, as is this court, of sitting in expanded panels if certain criteria are met. He also compares the board to the Court of Appeals for the Ninth Circuit and its ability to sit en banc with less than the entire court. See 28 U.S.C. § 46(c) (1988); 9th Cir. Rule 35-3. The board also has this option, argues the Solicitor, and the use of limited “en banc” is discretionary with the Commissioner.

The Commissioner cannot have it both ways. Either the board is a quasi-judicial body, deciding each case by applying existing law to the facts before it, or the board is simply an extension of the Commissioner’s office, making decisions on the basis of policy.

I think the statute is unambiguous and that it unarguably vests the power to grant rehearings in the board itself, free from undue interference by the Commissioner. The patent board is not the “alter ego” of the Commissioner; it is an adjudicative body which functions independently and has its own separate and distinct authority. See Animal Legal Defense Fund v. Quigg, 932 F.2d 920, 928, 18 USPQ2d 1677, 1684 (Fed. Cir.1991). The Commissioner may only influence a decision when he sits as a voting member of the board and in this role he serves as any other member. Id. at 929 n. 10, 18 USPQ2d at 1684 n. 10. It is on this assumption that this court has routinely reviewed patentability decisions of the board on the same basis as it does those of a court. See, e.g., In re King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed.Cir.1986) (“Our review of a finding of anticipation [a fact question] is the same whether it was made by the board or by a district court.”); compare In re Bond, 910 F.2d 831, 833, 15 USPQ2d 1566, 1567 (Fed.Cir.1990) (anticipation is a question of fact for the board reviewed under the clearly erroneous standard), with Lindemann Maschinenfabrik Gmbh v. American Hoist & Derrick Co., 730 F.2d 1452, 1458, 221 USPQ 481, 485 (Fed.Cir.1984)(applying same clearly erroneous standard to district court’s finding of anticipation); and In re McCarthy, 763 F.2d 411, 412, 226 USPQ 99, 100 (Fed.Cir.1985)(obviousness is reviewed for legal correctness without deference to the board’s determinations), with Gardner v. TEC Systems, Inc., 725 F.2d 1338, 1344, 220 USPQ 777, 782 (Fed.Cir.1984) (district court’s conclusion on obviousness “is one of law and subject to full and independent review in this court.”).

The role of the board is also readily apparent from the history of the Patent Office. The Office’s primary task is to answer questions on the patentability of inventions. The Commissioner has the authority to promulgate regulations consistent with the patent laws to aid the efficient operation of the Office. 35 U.S.C. § 6(a) (1988); see Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1425, 7 USPQ2d 1152, 1154 (Fed.Cir.1988). The Patent Office also has the responsibility to make individual determinations on patentability by examining particular applications. 35 U.S.C. § 131 (1988). Originally, these functions were colocated in the Office of the Commissioner, who had the authority to “administer” the Office as well as to act as the final stage of decision on individual applications by hearing appeals directly from the examiners. See M. Blommer, The Board of Patent Appeals and Interferences, 1992 AIPLA Bulletin 188 (October, 1992); P.J. Federico, The Board of Appeals 1861-1961, 43 J.Pat.Off.Soc’y 691 (1961) (summarizing the history of the board from its inception). Growth in the number of applications 1573*1573 and correspondingly of appeals, made it necessary to give the Commissioner help in hearing appeals. In 1861 the Board of Appeals was created, and the Commissioner was given the task of hearing appeals from this board’s decisions. 1992 AIPLA Bulletin at 190.

The Act of March 2, 1927, set up the division of authority in the Patent Office essentially as it exists today by abolishing the appeal to the Commissioner and delegating the task of hearing appeals solely to the newly expanded board. The Commissioner was made a member of the board along with the First Assistant Commissioner, the Assistant Commissioner and the examiners-in-chief. SeePub.L. No. 69-690, 44 Stat. 1335 (1927). The act separated the administrative function of running the Patent Office assigned to the Commissioner, from the adjudicatory function of deciding individual cases of patentability, delegated to the board. This division was retained in the 1952 Patent Act. See 35 U.S.C. §§ 6 and 7. The additional requirement that “examiners-in-chief shall be persons of competent legal knowledge and scientific ability” suggests the board is to render its decisions on legal and scientific bases independent of administrative and policy concerns. See id. § 7(a).

The independent character of the board comports with the arrangement of other adjudicatory bodies in the executive branch. For example, Congress has created agency boards of contract appeals and given them the authority to rule on disputes arising out of contracts between the government and private parties. 41 U.S.C. § 607 (1988). These boards preside over cases in which contract rights of private individuals and entities are directly pitted against the interests of the government. Likewise the patent appeals board resolves conflicts between individuals seeking exclusive rights to inventions and the government’s interest in promoting free exchange of technology. Both the board of patent appeals and the contract appeals boards function under similar grants of authority that, at least facially, are not limited by the authority of the head of the agency. Both bodies are in some sense, “designated” by their agency head, but this does not mean their decisions may be limited or controlled by that official. Historical and statutory notes explaining the authority of the boards of contract appeals state that the boards act independently, “not as a representative of the agency, since the agency is contesting the contractor’s entitlement to relief.” 41 U.S.C.A. § 607 notes; see also United States v. General Dynamics Corp., 828 F.2d 1356, 1364 (9th Cir.1987) (the “ASBCA is intended to be independent of the Department of Defense,” and its function is “strictly quasi-judicial”). By virtue of its similar function and statutory authority, the patent appeals board cannot be viewed as a “representative of the agency” because the Patent Office, through the examiner, also contests the entitlement of the applicant by arguing for rejection of the patent application.

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Molly Kocialski was recently sworn-in as the director of the Denver Patent Office.  Director Kocialski was most recently in-house at Oracle.

I always enjoy reading Michael Risch’s posts over at the Written Description blog.  He has another interesting post titled “Do patents help startups?”  Here’s the Link.

If you’re a patent prosecutor trying to refresh your memory on how to do an Express Mail filing this day before Christmas, you might be looking for some background noise.  The Morsa v. FACEBOOK oral argument would be a great choice as it contains an interesting discussion of 101 issues.  I’ll post some more comments about the oral argument later; but, here is the link for today: [Link].  The outcome of the case was a Rule 36 Judgment.

Given the perceived increase in Rule 36 judgments issued by the Federal Circuit, the large number of pending appeals at the PTAB, and the increasing importance of intellectual property to the US economy, I wonder if the Federal Circuit has taken any steps to request an additional judgeship?

January 7, 2016 Update:

The following list from the uscourts.gov site shows how the various circuits have expanded over the years:

District of Columbia

• 1893 : Three judgeships created. – 52 Cong. Ch. 74, February 9, 1893.
• 1930 : Two additional judgeships created. – 71 Cong. Ch. 538, June 19, 1930.
• 1938 : One additional judgeship created. – 75 Cong. Ch. 290, May 31, 1938.
• 1949 : Three additional judgeships created. – 81 Cong. Ch. 387, August 3, 1949.
• 1978 : Two additional judgeships created. – Pub. L. No. 95-486, October 20, 1978.
• 1984 : One additional judgeship created. – Pub. L. No. 98-353, July 10, 1984.
• 2008 : One judgeship was transferred to the Ninth Circuit – Pub. L. No. 110-177, January 7, 2008.

Total Judgeships – 11

First Circuit

• 1801 : Three circuit judgeships created. – 6 Cong. Ch. 4, February 13, 1801.
• 1802 : Act of February 13, 1801 repealed. Circuit judgeships abolished. – 7 Cong. Ch. 31, April 29, 1802.
• 1869 : One circuit judgeship created. – 41 Cong. Ch. 22, April 10, 1869.
• 1891 : Circuit Court of Appeals established. One additional judgeship created. – 51 Cong. Ch. 517, March 3, 1891.
• 1905 : One additional judgeship created. – 58 Cong. Ch. 51, January 21, 1905.
• 1978 : One additional judgeship created. – Pub. L. No. 95-486, October 20, 1978.
• 1984 : Two additional judgeships created. – Pub. L. No. 98-353, July 10, 1984.

Total Judgeships – 6

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I know there is a lot of interest among the patent bar with respect to the  joinder issue in IPR’s.

The Federal Circuit heard oral argument today in Yissum Research Development Co. v. Sony Corporation.  You can listen to the oral argument: [here].

During the oral argument, Judge Taranto asked about what he labeled as “panel stacking.” [Listen]  I assume he is referring to matters such as Target Corp. v. Destination Maternity Corp. [Read] and Zhongshan et al. v. Nidec [Read], where the PTAB reheard and reversed three judge panels with an expanded seven judge panel and a five judge panel, respectively, despite vigorous dissents.

Judge Moore had harsh words for an advocate recently during an oral argument.  It probably serves as a lesson to all advocates, even Supreme Court advocates, not to adopt too dismissive of a tone with respect to an opposing side’s position during oral argument.

The exchange between Judge Moore and the advocate went as follows:

Judge Moore:  I don’t understand your point.  You’re going too fast and you need to . . .

Advocate:  I . . . I apologize your Honor.

Judge Moore:  Stop.  Don’t interrupt me.  You’re going too fast and you need to divorce from this argument any more characterizations which are not welcome about like his new favorite figure, his new this.  Don’t do that, Mr. **********.  You’re better than that.  Don’t do it.  Go ahead, keep going.

If I were to rank the top three judges of the Federal Circuit least likely to endure arguments that they perceive to be rude, it would be:
1)  Judge Plager

2)  Judge Wallach

3)  Judge Moore.