05/21/13

Volume 95, Issue 1


  • Kappos v. Hyatt and the Endangered Right of de novo Judicial Review of Administrative-Agency Decisions in the Wake of the America Invents Act — Charles E. Miller
  • A Critique Of Recent Opinions In Patent Interferences — Charles L. Gholz
  • Deficiencies in the Decision and USPTO Application of Mayo Collaborative Services, dba Mayo Medical Laboratories, et al. v. Prometheus Laboratories, Inc. — Mark A. Litman
  • Who’s In Charge: An Analysis of BPAI Decisions Regarding Section 101 Patentability In light of Bilski and Mayo — J. Taylor Gooch
  • Exploring the Patent Surge: Increased Incentives or Multiplying Motives? — Keith Bentele and Alexander Ibsen

Kappos v. Hyatt and the Endangered Right of de novo Judicial Review of Administrative-Agency Decisions in the Wake of the America Invents Act

By Charles E. Miller

This article is the first in a two-part series on the subject of judicial review of U.S. Patent and Trademark Office decisions in patent cases. The present article analyzes the law and rules governing the admissibility and treatment of new evidence in U.S. district court civil actions against the director of the PTO seeking plenary review of the agency’s decisions affirming examiners’ rejections of patent applications. The second article in the series will critically examine the state-of-affairs with respect to judicial review of PTO decisions in the broader context of the America Invents Act.

When an examiner in the U.S. Patent and Trademark Office (“PTO” or “Agency”) rejects a patent application for reasons stated pursuant to 35 U.S.C. § 132(a), the applicant may appeal to the PTO’s Board of Patent Appeals and Interferences (“Board”) in accordance with 35 U.S.C. § 134(a). If the Board affirms the rejection, then the applicant may seek judicial recourse by civil action against the PTO in federal district court under 35 U.S.C. § 145, in which case either or both parties may present additional evidence on the issue(s). In the event of an adverse district-court judgment, the applicant may appeal to the Federal Circuit under 35 U.S.C. § 141(a), whose decision may in turn be reviewed by the U.S. Supreme Court on petition for a writ of certiorari to the Federal Circuit. When an inventor named Gilbert P. Hyatt applied for a patent on a computer system some of the claims defining his invention were rejected by the examiner for lack of an adequate written description in the application required to support the recited claim elements. Hyatt appealed to the Board, which affirmed the rejection. He then sued the PTO in district court for de novo review of the Board’s decision. The district court sustained the Agency’s objection to Hyatt’s proffer of an evidentiary declaration which the PTO contended could and should have been submitted earlier at the administrative stage (i.e., to the PTO examiner). In so doing, the court was left with the evidence in the administrative record and granted the PTO’s summary judgment motion against Hyatt under the deferential “substantial evidence” standard of review of the PTO’s fact-findings in accordance with the Administrative Procedure Act. On appeal, the Federal Circuit ultimately vacated the summary judgment in an en banc decision holding that any relevant evidence directed to a disputed issue of fact should be admitted when proffered in a Section 145 proceeding, subject only to the limitations in the Federal Rules of Evidence and the Federal Rules of Civil Procedure. Upon the PTO’s petition for certiorari, the U.S. Supreme Court affirmed the Federal Circuit’s decision, and in doing so restated earlier precedent that when new evidence is introduced, the district court must make de novo findings, taking such evidence into account along with the evidence that was previously presented to the Board. However, the district court may, in deciding the weight to be accorded that evidence, take into account the reason(s) why the newly proffered evidence was not presented to the PTO at the administrative stage.

A Critique Of Recent Opinions In Patent Interferences

By Charles L. Gholz

This article covers (1) precedential and interesting non-precedential opinions relating to interferences published in the USPQ since those covered Mr. Gholz’s previous annual critique of interference opinions published at 94 J. PAT. & TRADEMARK OFF. SOC’Y 32 (2012) and (2) precedential and non-precedential but “informative” opinions posted on the BPAI’s website. This article covers interference opinions published in volumes 97-100 of the USPQ2d and opinions posted on the Board of Patent Appeals and Interference’s (BPAI’s) website dated from January 1, 2012 to December 31, 2012.

Deficiencies in the Decision and USPTO Application of Mayo Collaborative Services, dba Mayo Medical Laboratories, et al. V. Prometheus Laboratories, Inc.

By Mark A. Litman

The decision in Mayo Collaborative Services, DBA Mayo Medical Laboratories, et al. v. Prometheus Laboratories, Inc., (132 S.Ct. 1289; 566 US---, 2012) fails in both 1) evaluating the underlying technology and factual background of the technology reviewed in the decision and 2) in providing any meaningful standards or guidelines to differentiate patentable and unpatentable subject matter as a law of nature according to the requirements of 35 USC 101. The decision related to patent process claims that included limitations relating to a phenomenon of specific and variable metabolic responses of individual patients to specific levels of administration of a single chemical species (6-thioguanine). The decision identified those limitations in the process claims within an ambiguous and assumed concept of “Law of Nature.” The assumption was a fatal definitional error. That error created a vacuum within which future process claims are to be interpreted with respect to 35 U.S.C. 101 as a law of nature. The application of that erroneous interpretation distorts any possible standardized application of the “law of nature” prohibition towards U.S. Patent Claims.

Who’s In Charge: An Analysis of BPAI Decisions Regarding Section 101 Patentability In light of Bilski and Mayo

by J. Taylor Gooch

When a patent applicant applies for a patent, there is a governing assumption that if the patent examiner wrongly finds an applicant’s patent unpatentable, the patent applicant may cure the error by appealing to the Board of Patent Appeals and Interferences (BPAI), the administrative appeals board within the United States Patent and Trademark Office (USPTO). However, this assumption presupposes that the BPAI correctly applies Supreme Court and Federal Circuit patentability doctrine, a false presumption. The BPAI’s misapplication of the patentability doctrine by the BPAI is further exacerbated by the fact that no appeals have been taken from BPAI regarding this issue to the Federal Circuit, making the BPAI the de facto final arbiter for patent applications. This article analyzes the current fluctuations within the field of process patents, a result of two major Supreme Court decisions (Bilski v. Kappos (2010) and Mayo v. Prometheus Laboratories, Inc. (2012)) and a multitude of contradictory Federal Circuit cases, and examines whether the BPAI’s analytical approach is responsive to these doctrinal fluctuations. The article finds that the BPAI’s analysis of process patent applications has, in direct contradiction to Supreme Court and Federal Circuit doctrine, (1) excluded patent applications solely because they contain the phrase “computer readable medium,” (2) remained reliant upon the Machine or Transformation Test, (3) created a new “mental processes” test, and (4) analyzed non-process patent application claims as processes. The BPAI’s divergence from Supreme Court doctrine forces patent applicants to contend with two separate sets of patent requirements, those imposed by the Supreme Court and enforced within the federal judicial system, and those imposed by the BPAI and enforced during the patent application process.

Exploring the Patent Surge: Increased Incentives or Multiplying Motives?

By Keith Bentele and Alexander Ibsen

Most existing studies of the recent global patent surge suggest that this development is of American origin. Various legal changes from the 1980s onwards in the United States have been identified as responsible for making the American legal climate friendlier to patent holders, which in turn has spurred more applications. The few studies investigating the historical trend of patenting behavior suffer from two major shortcomings: 1. they exclusively deal with developments in the United States, and 2. they pay little attention to the commercial behavior of applicants. A largely distinct body of research has documented changing strategic reliance on patents in certain industries. This article assesses both sets of arguments using data from the Norwegian patent office. The Norwegian patent system is unique in that its institutions have remained virtually unchanged for decades while the country’s small but consistently strong market has attracted inventors from all over the world. By constructing a new measure of ‘failed’ patents, we find a substantial growth in short-lived patents across nation of origin and industries. We argue that the patent surge should therefore be understood as a product of two sets of developments: a proliferation of non-traditional commercial uses of the patent system experienced globally, and developments unique to the U.S. judiciary driving disproportionate growth in American applications.

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