Circular reasoning in a court opinion … something that exists in something that doesn’t?

Recently, when a good friend of mine asked me to identify an example of a court opinion containing circular reasoning, I cited  In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007).  Nuijten’s facts are simple enough.  An ability to encode additional data into a signal is useful to prevent pirating of copyrighted materials.  For example, publishers of cds and dvds (containing raw signals) can use “watermarks” embedded in the raw signals in the as-sold cd and dvd to authenticate and to protect against pirating.  In Nuijten, the relevant claims on appeal covered the encoded signals themselves, and the issue before the court was whether or not a signal is eligible subject matter per § 101.  The court answered no, notwithstanding the fact that the signals were man-made.

The interesting part of the majority opinion analyzed whether or not each embodiment of the claimed signal is a “manufacture” under § 101.  A “manufacture,” the opinion noted, must be a tangible article or commodity, and that an embodiment of the claimed signal cannot be a “manufacture,” unless the embodiment of the signal comprises a tangible article or commodity.  In other words, if one embodiment within the scope of the claims is not a signal comprising a tangible article or commodity, then the claims cover non-eligible subject matter and would not be patentable per § 101.

Next, and here’s the trick, the opinion concluded that “[some] signals within the scope of the claim do not themselves comprise some tangible article or commodity,” namely, those “signal[s] encoded on an electromagnetic carrier and transmitted through a [perfect] vacuum—a medium that, by definition, is devoid of matter.”  Nuijten at 1356-57.  Yet a perfect vacuum is a theoretical construct, i.e., on this planet, it does not exist.  So, the opinion reasoned that an embodiment of the claimed signal exists in a vacuum that does not exist.  Ouch.

Look, I’m not making fun of the opinion.  What I am saying is something different:  I cannot accept the opinion’s reasoning as proof that “artificiality is insufficient by itself to render something a ‘manufacture.’” Id. at 1356.

Chemical compounds are not LEGO® blocks, notwithstanding MPEP § 2144.09

How many times have you received an Office action in which the examiner urges that a large number of prior art compounds renders obviousness your claimed compounds?  Usually, the examiner just “throws a bunch of prior art compounds against the wall to see what sticks.” But, in my experience, at least some of the prior art compounds are positional isomers of your claimed compounds, and the examiner adopts the LEGO® theory of obviousness, which is rooted in a presumption, i.e., “compounds which are position isomers … are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties” (corroborated, of course, by a citation to your own specification). MPEP § 2144.09.  After citing the presumption, most examiners urge obviousness, never considering what the prior art teaches about making the claimed positional isomer or its testing.  When an examiner does this, the examiner treats chemical compounds like LEGO® blocks.

Well, take it easy on the examiner.  MPEP § 2144.09 still has not been updated to reflect the post KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) doctrine, which kills the LEGO® theory of obviousness.  Under KSR, “it remains necessary to identify some reason that would have led a chemist to modify a known compound in a particular manner to establish prima facie obviousness of a new claimed compound.” Takeda Chem. Indus., Ltd. v. Alphapharm Pty., Ltd., 492 F.3d 1350, 1357 (Fed. Cir. 2007).  As a necessary result, an obviousness argument based on structural similarity between claimed and prior art compounds “clearly depends on a preliminary finding that one of ordinary skill in the art would have selected [the prior art compound] as a lead compound.” Takeda, 492 F.3d at 1359.  So, when the examiner just “throws a bunch of prior art compounds against the wall to see what sticks,” you know how to respond. 
And even if the lead compound turns out to be a positional isomer of your claimed compound, chemical compounds are not LEGO® blocks.  Consider, e.g., PROCTER & GAMBLE COMPANY, v. TEVA PHARM. USA, INC., Slip ops. 2008-1404, -1405, -1406 (Fed. Cir. May 13, 2009), in which a prior art compound did not render its position isomer prima facie obvious, because of unpredictability in the compounds’ properties, synthesizing and testing.  http://www.cafc.uscourts.gov/opinions/08-1404.pdf

In other words, notwithstanding MPEP § 2144.09, resist the LEGO® theory of obviousness, especially when the examiner just “throws a bunch of prior art compounds against the wall to see what sticks.”

Allowance Quotients: Sean’s take on the GAO report on the USPTO

Allowance rates and abandonment rates per applications filed during the FY2008 (Originally published October 2008)

Notice the decrease number of patents that issued in FY2008 compared with FY2007.  Notice the Issued Quotient decreased from 39.4% in FY2007 to 36.4% in FY2008.

Pendency: Sean’s take on the FY2008 GAO report on the USPTO

Pendency is longest in GAU 2600 and GAU 2100  (Originally published October 2008)

Percent changes from FY2007 to FY2008 (negative number indicates faster than FY2007)

The average first action and total pendency times are slower in FY2008 than FY2007.  GAU1600 dramatically increased its time to first action.  Only GAU2100 decreased its overall pendency. 

Inter Parte Cases: Sean’s take on the 2008 GAOReport on the USPTO

Inter parte Contested Cases at the Board (Originally published October 2008)

            In FY2008, the Board disposed of 74 cases but picked up 126 new cases.  Crunching the numbers, you could see that the number of pending inter parte cases in FY2008, decreased by 13.3%.  

Cases pending as of 9/30/07                                                               60

Cases pending as of 9/30/08                                                               52

                                    Net decrease:                                                  13.3%

It may look like good news, but if the same trend continues (74 cases terminated, 126 new cases), then FY2009 year may have a net decrease in work for our inter parte folks. 

Ex Parte Contested Cases: Sean’s take on the 2008 GAO Report on the USPTO

Ex parte Contested Cases at the Board (Originally published October 2008)

·                     In FY2009, expect a longer period of time for the Board to decide your appeals.  (Yes, I know a bunch of APJs were hired in FY2008.  It’s just my gut reaction after seeing the numbers.)  The number of pending appeals in FY2008 increased 157%.  

Ex parte cases Appeals                                                                      

Cases pending as of 9/30/07                                                               2511   

Cases pending as of 9/30/08                                                               3956

                                                                        Net Increase                157      %

·                     If, and it’s a very, big “if,” randomized central limits were achieved in your sampling, then you would expect to win a reversal in 1 of 4 appeals to the Board.  The Board Decided 4,940 cases (up from FY2007 in which the board decided 3,485 cases).  23.9% of cases are reversed. 

Affirmed                                                                     2790     56.5%

Affirmed-in-Part                                                          669      13.5%

Reversed                                                                    1179     23.9%

Dismissed/Withdrawn                                                    95        1.9%

Remanded                                                                   207      4.2%

                                                                                  4940     100% total

Gloom, despair, a disavowal issue for me….a lesson in application drafting

EPISTAR CORPORATION v. INTERNATIONAL TRADE COMMISSION, slip op. 2007-1457
(Fed. Cir. May 22, 2009)

The United States International Trade Commission (“ITC”) found that Epistar Corporation (“Epistar”) infringed U.S. Patent No. 5,008,718 (“the ’718 patent”). In its appeal, Epistar urged, among other things, an error to the ITC’s interpretation of the claim term “transparent window layer,” because the inventors disavowed the use of indium-tin-oxide (“ITO”).  Cf. Omega Eng’g v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003).  As in all disavowal cases, an understanding of the technology helps understand the argument.

The relevant technology embraces a light-emitted-diode (LED).  LEDs in the prior art generally comprise a substrate, active layers, a bottom electrical contact on the substrate, and a top opaque electrical contact on the top active layer.  Prior-art LEDs have the problem of current crowding, in which the current originating from the top opaque electrical contact would not spread transversely through the active layers, and, as a result, the prior-art LED would not be as efficient as possible. 

The asserted ‘718 patent stated that the prior art also included LEDs in which the top opaque electrical contact was replaced with a transparent ITO contact, but that replacement was less than satisfactory.  As a satisfactory solution, the ‘718 patent disclosed and claimed an LED made by inserting a “transparent window layer,” made from a semiconductor having defined physical properties, between the top active layer and the top electrical contact.  A “transparent window layer” made from ITO has the defined physical properties.

Yet Epistar latched on the ‘718 patent’s statement that ITO was an unsatisfactory top electrical-contact, and it urged that the inventors of the ‘718 patent disavowed ITO from the ambit of–yes, you guessed it–the transparent window layer, because, according to Epistar, “the very purpose of the ’718 patent was to address problems with . . . the use of lTO.”  The ITC disagreed, and the CAFC held that the ITC did not err, because the claims and specification of the ’718 patent consistently treated these two structures (“transparent window layer” and the top electrical contact) as separate and distinct elements.

Why would anyone explain this case of no disavowel?  When disparaging the prior art, a patent applicant raises potential litigation issues that a patentee may or may not win in court.  But, win-or-lose, the patentee will surely have to pay someone like me to litigate the issue.

Inter parte Reexam: Sean’s take on the 2008 GAO Report on the USPTO

 Inter parte reexaminations (Originally published October 2008)

·                     In FY2008, there was a 133% increase ((#year 2-#year 1)/#year 1+1)*100% in the number of inter parte requests made since FY2007.

·                     Examiners are granting requests >90% of the time, and in FY2008, nearly ~95% were granted by the examiner.  Only a small fraction of requests (5.3%) was denied.

·                     Known Litigations were identified in nearly 77% of the requests.

·                     Most requests are in the Electrical art units.

Ex Parte Reexam: Sean’s take on the 2008 GAO Report on the USPTO

The GAO 2008 report on the USPTO is on the USPTO Website (http://www.uspto.gov).  It’s a very long document and you could look at it if you want. 

After studying the data, I have formulated a few observations about ex parte and inter parte reexaminations, ex parte and inter parte Contested Cases at the Board, and pendency per art unit. See Future postings.

Ex parte reexaminations (Originally published October 2008)

·                     Third parties are using ex parte reexamination now more than in recent years.  In FY2008, nearly 87% of requests were filed by third parties.

·                     Notice the large increase (((#year 2-#year 1)/#year 1+1)*100%) in the total number of requests filed, i.e., about 125%.

 ·                     Examiners are granting requests >92% of the time.  Only a handful of requests were denied.

·                     The number of ex parte reexaminations known to be in litigation has been steadily increasing to 369 in FY2007 but falling this year to 316 in FY2008.

·                     The Electrical group art units take advantage of reexamination much more than either the chemical or the mechanical art units. 

When Ohm’s Law Applies

LINEAR TECH. CORP. v. INTERNATIONAL TRADE COMMISSION, Slip op. 2008-1117, -1165, (Fed. Cir. May 21, 2009)

                Linear Technology Corporation (“Linear”) filed a complaint with the United States International Trade Commission (“the ITC”) under section 337 of the Tariff Act of 1930, 19 U.S.C. § 1337(a)(1)(B), alleging that Advanced Analogic Technologies, Inc. (“AATI”) imported and/or sold for importation electronic voltage regulators that infringe U.S. Pat. No. 6,580,258 (“the ’258 patent”). For example, claim 35 of the ‘258 patent claims a “circuit for controlling a switching voltage regulator…comprising … a circuit for monitoring the current to the load….”  The term, “monitoring the current to the load,” generated the most interesting issue of Linear’s appeal to the CAFC urging that, among other things, the ITC erred in finding that certain AATI imported voltage regulators do not infringe claim 35.

                During its claim interpretation of the term “monitoring the current to the load,” the ITC, even though the claim did not recite limiting language, effectively excluded “monitoring voltage” from the ambit of this element.  Yet most first year physics students know that current and voltage are related by Ohm’s Law (V=IR & I=V/R).  In other words, due to Ohm’s law, one can monitor current by monitoring voltage and vise versa.  Furthermore, the ’258 patent expressly contemplated monitoring current by using a voltage across a resister. For these reasons, the CAFC reversed and remanded to the ITC for determining infringement under the correct claim interpretation. http://www.cafc.uscourts.gov/opinions/08-1117.pdf

                In short, the ITC fell into a trap for the unwary.  When Ohm’s law applies, monitoring current may be done in three ways (V=IR, I=V/R, & R=V/I).  Similarly, when another law applies to two or more related observables, e.g., the ideal gas law (PV=nRT), monitoring one observable may be achieved in multiple ways.  Now you know.