HowHow to Read and to Read and Understand Case Understand Case

LawLaw

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OverviewOverview Case LawCase Law

Structure of a DecisionStructure of a Decision

PrecedentPrecedent

Case CitationCase Citation

Practice ExercisesPractice Exercises

What is Case Law?What is Case Law?

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Case LawCase Law

Decisions made by the courts, Decisions made by the courts, i.e.i.e., , judge-made lawjudge-made law

2 functions:2 functions: Interpret Constitution, statutes, and Interpret Constitution, statutes, and

regulations—“put meat on the bones of regulations—“put meat on the bones of the law”the law”

Apply Constitution, statutes, and Apply Constitution, statutes, and regulations to particular factsregulations to particular facts

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Case Law (cont.)Case Law (cont.)(Example)(Example)

Under 35 U.S.C. §112, ¶ 1, “[t]he Under 35 U.S.C. §112, ¶ 1, “[t]he specification shall contain a written specification shall contain a written description of the invention.”description of the invention.”

What does it mean to have a written What does it mean to have a written description of the invention?description of the invention?

Case law tells us.Case law tells us.

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Case Law (cont.)Case Law (cont.)(Example)(Example)

““The ‘written description’ requirement serves a teaching The ‘written description’ requirement serves a teaching function, as a ‘function, as a ‘quid pro quoquid pro quo’ in which the public is given ’ in which the public is given ‘meaningful disclosure in exchange for being excluded ‘meaningful disclosure in exchange for being excluded from practicing the invention for a limited period of time.” from practicing the invention for a limited period of time.” Univ. of Rochester v. G.D. Searle & Co., Inc.,Univ. of Rochester v. G.D. Searle & Co., Inc., 358 F.3d 916, 358 F.3d 916, 922 (Fed. Cir. 2004).922 (Fed. Cir. 2004).

The written description requirement may be satisfied in a The written description requirement may be satisfied in a variety of ways, including: variety of ways, including: (i) a recitation of a representative number of species falling within (i) a recitation of a representative number of species falling within

the scope of the genus, the scope of the genus, Regents of the University of California v. Eli Regents of the University of California v. Eli Lilly & Co.,Lilly & Co., 119 F.3d 1559, 1569 (Fed. Cir. 1997); 119 F.3d 1559, 1569 (Fed. Cir. 1997);

(ii) a recitation of structural features common to members of the (ii) a recitation of structural features common to members of the genus, which features constitute a substantial portion of the genus; genus, which features constitute a substantial portion of the genus; id.id.; and; and

(iii) functional characteristics when coupled with a known or (iii) functional characteristics when coupled with a known or disclosed correlation between structure and function, disclosed correlation between structure and function, Enzo Enzo Biochem, Inc. v. Gen-Probe Inc.,Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 964 (Fed. Cir. 2002). 323 F.3d 956, 964 (Fed. Cir. 2002).

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How Does Case Law Apply to How Does Case Law Apply to Examiners?Examiners?

Case law is often cited by applicants to argue Case law is often cited by applicants to argue against a rejection. When that happens, examiners against a rejection. When that happens, examiners need to understand the cited case law and either: need to understand the cited case law and either: explain why it does not overcome the rejection; orexplain why it does not overcome the rejection; or recognize that the rejection is not correct and withdraw it.recognize that the rejection is not correct and withdraw it.

Case law can be relied upon to support a rejection, Case law can be relied upon to support a rejection, see e.g.see e.g., MPEP § 2144.04, MPEP § 2144.04 Ensure a clear and concise rejectionEnsure a clear and concise rejection Increase chance for affirmance at BoardIncrease chance for affirmance at Board Quicker disposal of caseQuicker disposal of case

Case law may not be necessary to use in all Case law may not be necessary to use in all circumstances, circumstances, i.e.i.e., it is not a , it is not a per seper se rule that case rule that case law is needed to support every rejection.law is needed to support every rejection.

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Options for How Case Law Can Options for How Case Law Can Help Support a RejectionHelp Support a Rejection

Clarify the correct legal standardClarify the correct legal standard

Compare or contrast facts in case law Compare or contrast facts in case law with those in an application and then with those in an application and then apply result and reasoning from case apply result and reasoning from case law to applicationlaw to application

Case law does not apply to the Case law does not apply to the rejectionrejection

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Case LawCase Law(Legal Standard Example)(Legal Standard Example)

Non-patent law example of Non-patent law example of incorrectincorrect legal legal standard:standard: An argument that you cannot be found guilty of An argument that you cannot be found guilty of

murder unless the body has been found.murder unless the body has been found. A body is not required to prove murder, though is A body is not required to prove murder, though is

surely helpful in proving the case.surely helpful in proving the case. Patent law example of Patent law example of incorrectincorrect legal legal

standard:standard: An argument that a showing of obviousness An argument that a showing of obviousness alwaysalways

requires a showing of teaching, suggestion, or requires a showing of teaching, suggestion, or motivation. motivation.

After After KSRKSR, TSM is but one of several ways to , TSM is but one of several ways to support a showing of obviousness.support a showing of obviousness.

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Case LawCase Law(Patent Case Law Analogy/Distinction)(Patent Case Law Analogy/Distinction)

In In Anderson’s-Black RockAnderson’s-Black Rock, the , the claimed invention was a paving claimed invention was a paving machine that included a radiant heat machine that included a radiant heat burner. burner. Paving machines and radiant heat Paving machines and radiant heat

burners were both in the prior art. burners were both in the prior art. Supreme Court held the invention Supreme Court held the invention

obvious because “the radiant-heat obvious because “the radiant-heat burner functioned just as a burner was burner functioned just as a burner was expectedexpected to function; and the paving to function; and the paving machine did the same.”machine did the same.”

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Case LawCase Law(Patent Case Law (Patent Case Law AnalogyAnalogy))

Claimed invention is bicycle including a Claimed invention is bicycle including a bell.bell.

By analogy to By analogy to Anderson’s-Black RockAnderson’s-Black Rock, one , one could argue that putting a bell on a could argue that putting a bell on a bicycle would be obvious.bicycle would be obvious.

Bell and bicycle both known.Bell and bicycle both known. Bell would function on a bicycle as Bell would function on a bicycle as

expectedexpected, , just likejust like radiant-heat burner radiant-heat burner functioned as functioned as expectedexpected when included on when included on paving machine.paving machine.

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Case LawCase Law(Patent Case Law (Patent Case Law DistinctionDistinction))

Claimed invention is a battery that combined Claimed invention is a battery that combined various elements from prior art batteries. various elements from prior art batteries.

In contrast to In contrast to Anderson’s Black RockAnderson’s Black Rock, one , one could argue that combination of prior art could argue that combination of prior art elements in claimed battery would not be elements in claimed battery would not be obvious. obvious.

Elements of battery known, like the radiant-Elements of battery known, like the radiant-heat burner and paving machine. heat burner and paving machine.

But, elements functioned together in an But, elements functioned together in an unexpected unexpected way, way, unlikeunlike the radiant-heat the radiant-heat burner on the paving machine, which burner on the paving machine, which functioned as functioned as expected.expected.

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MPEP and Case LawMPEP and Case Law MPEP contains case law that is consistent MPEP contains case law that is consistent

with Office policy.with Office policy.

MPEP is the best source of case law for MPEP is the best source of case law for examiners and should always be consulted examiners and should always be consulted first.first.

But, the MPEP is just a summary; it may But, the MPEP is just a summary; it may be necessary to go beyond the MPEP and be necessary to go beyond the MPEP and read the actual case to fully understand it.read the actual case to fully understand it.

Structure of a Structure of a DecisionDecision

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Why Is the Structure of a Why Is the Structure of a Decision Relevant to Decision Relevant to

Examiners?Examiners? Helps examiners navigate a decision Helps examiners navigate a decision

to more quickly and easily identify to more quickly and easily identify examination tipsexamination tips

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The Dirty Little SecretThe Dirty Little Secret

It may not be necessary to read the entire It may not be necessary to read the entire case to decide whether it is relevant.case to decide whether it is relevant.

Go to specifically the cited text and read it Go to specifically the cited text and read it in context firstin context first

If relevant, then read the other parts of If relevant, then read the other parts of the case that are pertinent to the case that are pertinent to examination. examination. SeeSee slide 23. slide 23.

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In re FultonIn re Fulton

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Case CaptionCase Caption Ex Parte Ex Parte ApplicantApplicant

Case before the BPAICase before the BPAI In re In re ApplicantApplicant

Cases before the court after BPAI decisionCases before the court after BPAI decision A v. BA v. B

Two parties suing each other, Two parties suing each other, e.g.e.g., patent , patent infringement, interference, etc.infringement, interference, etc.

Applicant v. Director of the USPTO Applicant v. Director of the USPTO Someone suing the OfficeSomeone suing the Office

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What Is In a Name?What Is In a Name?(Examples)(Examples)

Ex Parte KubinEx Parte Kubin Kubin v. MonsantoKubin v. Monsanto Kubin v. DudasKubin v. Dudas In re KubinIn re Kubin

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Opinion TypeOpinion Type MajorityMajority

Forms the opinion for the courtForms the opinion for the court Presents the holding and rationale for the courtPresents the holding and rationale for the court

ConcurrenceConcurrence Agrees with ultimate outcome, but for different reasonsAgrees with ultimate outcome, but for different reasons Written by one or more judgesWritten by one or more judges Judge in the majority may also be in concurrence Judge in the majority may also be in concurrence

DissentDissent Disagrees with ultimate outcomeDisagrees with ultimate outcome Written by one or more judgesWritten by one or more judges Dissenting judge is not part of majorityDissenting judge is not part of majority

PluralityPlurality No majority; fractured opinion with multiple judges going No majority; fractured opinion with multiple judges going

different ways for different reasonsdifferent ways for different reasons Happens with appellate court sitting Happens with appellate court sitting en bancen banc or Supreme Court or Supreme Court

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Importance of Opinion Importance of Opinion Type Type

Decision of the court is found in the majority Decision of the court is found in the majority opinionopinion

Any statements in the concurrence or Any statements in the concurrence or dissent are for a single judge only; such dissent are for a single judge only; such statements are not the opinion of the court statements are not the opinion of the court and are not binding on the courtand are not binding on the court If concurrence or dissent is cited, the authoring If concurrence or dissent is cited, the authoring

judge should be mentioned to indicate that the judge should be mentioned to indicate that the cited statement is from that judge and does not cited statement is from that judge and does not represent the view of the courtrepresent the view of the court

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How Do I Know the Opinion How Do I Know the Opinion Type?Type?

(Examples)(Examples) Opinion will show it.Opinion will show it.

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Structure of a DecisionStructure of a Decision

All decisions have standard sections, All decisions have standard sections, which are always presented in a which are always presented in a certain ordercertain order

Standard sections are typically Standard sections are typically identified by headings or roman identified by headings or roman numeral dividersnumeral dividers

Some sections are relevant to Some sections are relevant to examiners; others are notexaminers; others are not

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Structure of a Decision Structure of a Decision (cont.)(cont.)

(Parts Relevant to Examiners)(Parts Relevant to Examiners) IntroductionIntroduction FactsFacts Procedural HistoryProcedural History Discussion of IssuesDiscussion of Issues

Issue #1Issue #1 LawLaw Application of law to facts, etc.Application of law to facts, etc.

Issue #2Issue #2 LawLaw Application of law to facts, etc.Application of law to facts, etc.

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Structure of a Decision Structure of a Decision (cont.)(cont.)

(Parts Not Relevant to Examiners)(Parts Not Relevant to Examiners) Jurisdictional StatementJurisdictional Statement One sentence statement explaining the basis for One sentence statement explaining the basis for

the court’s authority to decide the casethe court’s authority to decide the case

Standard of ReviewStandard of Review Test used by court in deciding whether to Test used by court in deciding whether to

interfere with a decision of Board/lower courtinterfere with a decision of Board/lower court

ConclusionConclusion Statement addressing relief sought by Statement addressing relief sought by

plaintiff/appellant plaintiff/appellant ((e.g.e.g., affirm, reverse, affirm-in-part and reverse-in-, affirm, reverse, affirm-in-part and reverse-in-part, or remand)part, or remand)

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IntroductionIntroduction

One sentence summary of who is One sentence summary of who is seeking review and on what issueseeking review and on what issue

One sentence summary of outcome One sentence summary of outcome with short reasonwith short reason

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IntroductionIntroduction((FultonFulton Example) Example)

Appellants Daniel Fulton and James Huang Appellants Daniel Fulton and James Huang appeal from the decision of the U.S. Patent and appeal from the decision of the U.S. Patent and Trademark Office, Board of Patent Appeals and Trademark Office, Board of Patent Appeals and Interferences (“Board”), affirming the Interferences (“Board”), affirming the examiner’s rejection of appellants’ application examiner’s rejection of appellants’ application for a utility patent on grounds that the for a utility patent on grounds that the invention claimed would have been obvious invention claimed would have been obvious under 35 U.S.C. § 103(a). The appeal was under 35 U.S.C. § 103(a). The appeal was submitted for decision without oral argument submitted for decision without oral argument on November 5, 2004. Because the Board’s on November 5, 2004. Because the Board’s finding that the prior art suggested the finding that the prior art suggested the desirability of the combination of shoe sole desirability of the combination of shoe sole limitations claimed in appellants’ patent limitations claimed in appellants’ patent application was supported by substantial application was supported by substantial evidence, we affirm.evidence, we affirm.

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FactsFacts

Technology in disputeTechnology in dispute

ClaimsClaims

Prosecution history — pertinent Prosecution history — pertinent partsparts

Prior artPrior art

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FactsFacts((FultonFulton Example) Example)

On July 24, 1997, appellants filed application number 09/122,198 (the On July 24, 1997, appellants filed application number 09/122,198 (the ’198 application) for a utility patent directed to a shoe sole with ’198 application) for a utility patent directed to a shoe sole with increased traction. Claim 1, the only independent claim at issue, reads:increased traction. Claim 1, the only independent claim at issue, reads:

An improved shoe sole . . . . ’198 application, at 7.An improved shoe sole . . . . ’198 application, at 7.

Three limitations of this claim are at issue, namely the limitations that: Three limitations of this claim are at issue, namely the limitations that: (A) the perimeter of the shoe is mostly open, (B) the projected surfaces, (A) the perimeter of the shoe is mostly open, (B) the projected surfaces, also called studs, are hexagonal in shape, and (C) the hexagonal shapes also called studs, are hexagonal in shape, and (C) the hexagonal shapes be oriented so that opposite edges of the hexagon “face generally in the be oriented so that opposite edges of the hexagon “face generally in the directions of said fore-aft axis.” directions of said fore-aft axis.” Id.Id. A figure from the ’198 application is A figure from the ’198 application is reproduced below, with non-substantive modifications for simplicity of reproduced below, with non-substantive modifications for simplicity of presentation.presentation.

Prior art related to the ’198 application includes U.S. Patent No. Prior art related to the ’198 application includes U.S. Patent No. 3,793,750 (“Bowerman”), U.S. Design Patent No. 281,462 (“Pope”), 3,793,750 (“Bowerman”), U.S. Design Patent No. 281,462 (“Pope”), U.S. Design Patent No. 263,645 (“Mastrantuone”), and United Kingdom U.S. Design Patent No. 263,645 (“Mastrantuone”), and United Kingdom Patent No. 513,375 (“Davies”). Figures from these patents are Patent No. 513,375 (“Davies”). Figures from these patents are reproduced below.reproduced below.

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Procedural HistoryProcedural History

Description of action in lower tribunalDescription of action in lower tribunal

Decision of lower tribunalDecision of lower tribunal

Reasoning of lower tribunalReasoning of lower tribunal Be careful not to confuse reasoning of Be careful not to confuse reasoning of

lower tribunal with that of Court issuing lower tribunal with that of Court issuing the decisionthe decision

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Procedural HistoryProcedural History((FultonFulton Example) Example)

The examiner rejected the ’198 application, The examiner rejected the ’198 application, inter inter alia,alia, on obviousness grounds by considering Pope in on obviousness grounds by considering Pope in light of Bowerman and Davies, and appellants light of Bowerman and Davies, and appellants appealed this rejection to the Board. appealed this rejection to the Board.

In its decision, the Board reversed the examiner’s In its decision, the Board reversed the examiner’s ground for rejection, supplied an alternative ground ground for rejection, supplied an alternative ground for rejection, and remanded. for rejection, and remanded.

After the Board entered its decision, appellants filed After the Board entered its decision, appellants filed a request for rehearing. a request for rehearing.

The panel held this motion for rehearing in abeyance The panel held this motion for rehearing in abeyance while the examiner considered the application on while the examiner considered the application on remand. After reopening prosecution, the examiner remand. After reopening prosecution, the examiner rejected the ’198 application for reasons identical to rejected the ’198 application for reasons identical to those offered by the Board in its first decision . . . .those offered by the Board in its first decision . . . .

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DiscussionDiscussion

IssueIssue Sometimes, court will present the parties’ Sometimes, court will present the parties’

arguments before identifying the legal issue.arguments before identifying the legal issue. Be careful not to confuse parties’ arguments Be careful not to confuse parties’ arguments

with the Court’s decision and reasoningwith the Court’s decision and reasoning

Relevant lawRelevant law

Application of law to facts with decision on Application of law to facts with decision on issue and explanation of reasons for issue and explanation of reasons for decisiondecision

Relevant legal principles, analysis, and Relevant legal principles, analysis, and phraseology will be found herephraseology will be found here

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HoldingHolding

Court’s ultimate legal conclusion on an issueCourt’s ultimate legal conclusion on an issue Under Under thisthis law, with law, with thesethese facts, facts, thisthis

resultresult ““We hold”We hold” Use extreme caution in classifying a Use extreme caution in classifying a

statement by a court as a holdingstatement by a court as a holding Courts use the “hold” sparingly; do the sameCourts use the “hold” sparingly; do the same MPEP usually captures holding for most MPEP usually captures holding for most

casescases

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RationaleRationale(a.k.a., reasoning)(a.k.a., reasoning)

Reasons for the ultimate conclusionReasons for the ultimate conclusion No magic wordsNo magic words E.g.E.g., “We conclude,” “We , “We conclude,” “We

determine,” “We think”determine,” “We think”

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Dicta—It’s DangerousDicta—It’s Dangerous

Dictum (singular): Dicta (plural)Dictum (singular): Dicta (plural) Statement or observation made by a Statement or observation made by a

judge that does not form a necessary part judge that does not form a necessary part of the court’s decision, but is included in of the court’s decision, but is included in the body of the court’s opinionthe body of the court’s opinion

Court said it, but not needed to reach Court said it, but not needed to reach decision decision

Attorneys may cite dicta in arguing Attorneys may cite dicta in arguing against a rejectionagainst a rejection

DICTA IS NOT A HOLDING DICTA IS NOT A HOLDING

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Holding v. DictaHolding v. Dicta(Example)(Example)

In In eBay v. MercExchangeeBay v. MercExchange, 547 U.S. 388 , 547 U.S. 388 (2006), the Supreme Court addressed issue of (2006), the Supreme Court addressed issue of whether patentee MercExchange was entitled whether patentee MercExchange was entitled to a permanent injunction.to a permanent injunction.

Supreme Court observed that the district Supreme Court observed that the district court denied a permanent injunction because court denied a permanent injunction because patentee MercExchange expressed a patentee MercExchange expressed a willingness to license its patents, showing it willingness to license its patents, showing it would not suffer irreparable harm if an would not suffer irreparable harm if an injunction did not issue.injunction did not issue.

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Holding v. Dicta (cont.)Holding v. Dicta (cont.)(Example)(Example)

In the context of reviewing whether willingness to In the context of reviewing whether willingness to license could defeat an injunction, Supreme Court license could defeat an injunction, Supreme Court stated:stated:

““For example, some patent holders, For example, some patent holders, such as university such as university researchers or self-made inventorsresearchers or self-made inventors, might reasonably , might reasonably prefer to license their patents, rather than undertake efforts prefer to license their patents, rather than undertake efforts to secure the financing necessary to bring their works to to secure the financing necessary to bring their works to market themselves. market themselves. Such patent holdersSuch patent holders may be able to may be able to satisfy the traditional four-factor test, and we see no basis for satisfy the traditional four-factor test, and we see no basis for categorically denying them the opportunity to do so.” 547 categorically denying them the opportunity to do so.” 547 U.S. at 393. U.S. at 393.

Statement is dicta because it is not about the private Statement is dicta because it is not about the private parties to the case, but instead concerns university parties to the case, but instead concerns university researchers or self-made inventors as hypothetical researchers or self-made inventors as hypothetical partiesparties

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IssueIssue((FultonFulton Example) Example)

Appellants first argue that the Board’s finding of a Appellants first argue that the Board’s finding of a motivation to combine lacks substantial evidence because motivation to combine lacks substantial evidence because the Board failed to demonstrate that the characteristics the Board failed to demonstrate that the characteristics disclosed in Pope, hexagonal surfaces in a facing disclosed in Pope, hexagonal surfaces in a facing orientation, are preferred over other alternatives orientation, are preferred over other alternatives disclosed in the prior art. disclosed in the prior art.

This argument fails because our case law does not require This argument fails because our case law does not require that a particular combination must be the preferred, or that a particular combination must be the preferred, or the most desirable, combination described in the prior art the most desirable, combination described in the prior art in order to provide motivation for the current invention. in order to provide motivation for the current invention.

‘‘[T]he question is whether there is something in the prior [T]he question is whether there is something in the prior art as a whole to suggest the art as a whole to suggest the desirability,desirability, and thus the and thus the obviousness, of making the combination,’ not whether obviousness, of making the combination,’ not whether there is something in the prior art as a whole to suggest there is something in the prior art as a whole to suggest that the combination is the that the combination is the most desirablemost desirable combination combination available. available. See In re Beattie,See In re Beattie, 974 F.2d at 1311 (internal 974 F.2d at 1311 (internal quotation omitted; emphasis added). A case on point is quotation omitted; emphasis added). A case on point is In In re Gurley,re Gurley, 27 F.3d 551, 552-53 (Fed. Cir. 1994) . . . . 27 F.3d 551, 552-53 (Fed. Cir. 1994) . . . .

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Sources of ConfusionSources of Confusion Syllabus — summary of decisionSyllabus — summary of decision

Don’t cite or quote Don’t cite or quote because not authoredbecause not authoredby the Courtby the Court

Prepared by publisher Prepared by publisher

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Sources of Confusion Sources of Confusion (cont.)(cont.)

Headnotes — summary of decisionHeadnotes — summary of decision

Don’t cite or quote Don’t cite or quote because not authored because not authored by Courtby Court

Prepared by publisherPrepared by publisher

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Remember the Dirty Remember the Dirty Little SecretLittle Secret

It may not be necessary to read the It may not be necessary to read the entire opinion to decide whether a entire opinion to decide whether a case is relevantcase is relevant

Go to specifically cited text and read it Go to specifically cited text and read it in context firstin context first

If relevant, then read the parts of the If relevant, then read the parts of the case pertinent to examinerscase pertinent to examiners

PrecedentPrecedent

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PrecedentPrecedent

A decision of a tribunal, considered A decision of a tribunal, considered to furnish a rule of law for future to furnish a rule of law for future cases with identical or similar facts cases with identical or similar facts

Must be followed if “directly on Must be followed if “directly on point”point”

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Two Components of Two Components of PrecedentPrecedent

Level of Tribunal Issuing DecisionLevel of Tribunal Issuing Decision Form of Decision Issued by the Form of Decision Issued by the

TribunalTribunal

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Level of Tribunal Issuing Level of Tribunal Issuing DecisionDecision

Supreme CourtSupreme Court Highest courtHighest court

Appellate CourtsAppellate Courts Reviewing court (2Reviewing court (2ndnd level) level)

District CourtDistrict Court Trial court (1Trial court (1stst level) level)

BPAIBPAI

Supreme Court

Appellate Courts

District Courts

BPAI

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Form of DecisionForm of Decision

Tribunal can issue a decision as:Tribunal can issue a decision as: BindingBinding Not BindingNot Binding

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Binding v. Non-Binding Binding v. Non-Binding DecisionsDecisions

BindingBinding Precedential (Court and BPAI)Precedential (Court and BPAI)

Decision will add to body of lawDecision will add to body of law All lower tribunals must followAll lower tribunals must follow

Not Binding Not Binding Non-precedential (Court and BPAI)Non-precedential (Court and BPAI)

Decision will not add to body of lawDecision will not add to body of law Binds only the parties Binds only the parties

Informative (BPAI only)Informative (BPAI only) Helps clarify the lawHelps clarify the law Binds only the partiesBinds only the parties

Other (BPAI only)Other (BPAI only) Binds only the partiesBinds only the parties

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What Decisions Are Binding What Decisions Are Binding on Examiners?on Examiners?

Technically, all binding decisions Technically, all binding decisions issued by the BPAI and courtsissued by the BPAI and courts

However, examiners are to follow the However, examiners are to follow the cases cited in the MPEP or those cases cited in the MPEP or those endorsed by Patent Policyendorsed by Patent Policy

If a decision is new or not discussed in If a decision is new or not discussed in the MPEP, consult SPE before citingthe MPEP, consult SPE before citing Why? The Office has to interpret a Why? The Office has to interpret a

decision before applying it to decision before applying it to examination, examination, e.g.e.g., , KSR v. TeleflexKSR v. Teleflex

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How To Know Form of How To Know Form of Decision?Decision?

(Examples)(Examples) Decision will indicate the dispositionDecision will indicate the disposition

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How To Know Form of How To Know Form of Decision?Decision?

(Examples)(Examples)

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Why Is Precedent Why Is Precedent Important?Important? Examiners should only rely on decisions sanctioned Examiners should only rely on decisions sanctioned

for use by the Office to support a rejection. for use by the Office to support a rejection.

If an applicant cites a non-binding decision to argue against If an applicant cites a non-binding decision to argue against a rejection, the examiner need not follow it because it is not a rejection, the examiner need not follow it because it is not binding.binding.

TrickTrick: If the facts of an application under examination are : If the facts of an application under examination are similar to a those in a non-binding decision, the examiner similar to a those in a non-binding decision, the examiner may want to carefully review the reasoning applied by the may want to carefully review the reasoning applied by the tribunal that issued the non-binding decision. tribunal that issued the non-binding decision. If the non-binding decision helps the rejection, then If the non-binding decision helps the rejection, then the the

examiner may use the reasoning, but not cite the examiner may use the reasoning, but not cite the decision. decision.

If the case hurts the rejection, then the examiner may If the case hurts the rejection, then the examiner may want to withdraw the rejection or attempt to distinguish want to withdraw the rejection or attempt to distinguish away the away the non-binding decision non-binding decision without citing or discussing itwithout citing or discussing it..

Case CitationsCase Citations

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Why Are Case Citations Why Are Case Citations Important to Examiners?Important to Examiners?

Gives the address for how to find a Gives the address for how to find a casecase

Identifies the specific pages in the Identifies the specific pages in the case where relevant case where relevant facts/holding/rationale is foundfacts/holding/rationale is found

Akin to citation format for scientific Akin to citation format for scientific journal articlesjournal articles

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Where to Find a Case?Where to Find a Case? Opinions are published in two places:Opinions are published in two places:

Books called “reporters”Books called “reporters” Electronic databases (Electronic databases (e.g.e.g., BNA , BNA

publishes USPQ)publishes USPQ)

USPQ electronic databaseUSPQ electronic database Used by USPTOUsed by USPTO SearchableSearchable

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Citation ConventionCitation Convention Basic case citation format:Basic case citation format:

Case Name, Volume Number, Source, Page Case Name, Volume Number, Source, Page Number Where Case Begins (Court Issuing Number Where Case Begins (Court Issuing Decision, Date of Decision).Decision, Date of Decision).

Case name is either underlined or italicizedCase name is either underlined or italicized Examples:Examples:

Reporter:Reporter: In re Fulton In re Fulton, 391 F.3d 1195 (Fed. , 391 F.3d 1195 (Fed. Cir. 2004).Cir. 2004).

BNA:BNA: In re Fulton In re Fulton, 73 USPQ 2d 1141 (Fed. Cir. , 73 USPQ 2d 1141 (Fed. Cir. 2004).2004).

Both (parallel citation):Both (parallel citation): In re Fulton In re Fulton, 391 F.3d , 391 F.3d 1195, 73 USPQ 2d 1141 (Fed. Cir. 2004). 1195, 73 USPQ 2d 1141 (Fed. Cir. 2004).

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Citation Convention Citation Convention (cont.)(cont.)

Pinpoint citation — exact page number in a case Pinpoint citation — exact page number in a case where cited text or statement can be foundwhere cited text or statement can be found Case Name, Volume Number, Source, Page Number Case Name, Volume Number, Source, Page Number

Where Case Begins, Where Case Begins, Page Number Where Material of Page Number Where Material of Interest FoundInterest Found (Court Issuing Decision, Date of (Court Issuing Decision, Date of Decision)Decision)

Examples:Examples: Reporter:Reporter: In re Fulton In re Fulton, 391 F.3d 1195, , 391 F.3d 1195, 1199-12001199-1200 (Fed. Cir. (Fed. Cir.

2004).2004). BNA:BNA: In re Fulton In re Fulton, 73 USPQ 2d 1141, , 73 USPQ 2d 1141, 1144-451144-45 (Fed. Cir. (Fed. Cir.

2004).2004). Both (parallel citation):Both (parallel citation): In re Fulton In re Fulton, 391 F.3d 1195, , 391 F.3d 1195, 1199-1199-

1200, 1200, 73 USPQ 2d 1141, 73 USPQ 2d 1141, 1144-451144-45 (Fed. Cir. 2004). (Fed. Cir. 2004).

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Short Form CitationShort Form Citation After the first full citation to a case, After the first full citation to a case,

can use the “short form” for a citation can use the “short form” for a citation Case name is shortenedCase name is shortened Citation is shortenedCitation is shortened Shortened Case Name, Volume Number, Shortened Case Name, Volume Number,

Source at Page Number Where Material Source at Page Number Where Material of Interest Found.of Interest Found.

Examples:Examples: Reporter:Reporter: Fulton Fulton, 391 F.3d at, 391 F.3d at 1199-120.1199-120. BNA:BNA: Fulton Fulton, 73 USPQ 2d at 1144-45., 73 USPQ 2d at 1144-45. Both (parallel citation):Both (parallel citation): Fulton Fulton, 391 F.3d at, 391 F.3d at

1199-1200, 73 USPQ 2d at 1144-45.1199-1200, 73 USPQ 2d at 1144-45.

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Id.Id. Id.Id. is a shorthand way of providing a case is a shorthand way of providing a case

citation by referencing the immediately citation by referencing the immediately preceding citation.preceding citation.

Id.Id. is used when the citation is identical to the is used when the citation is identical to the prior citation.prior citation.

If page number where material of interest is If page number where material of interest is found is the same, citation is: found is the same, citation is: Id.Id.

If page number where material of interest is If page number where material of interest is found is different, citatation is: found is different, citatation is: Id.Id. at ___ at ___ where the “____” is the page number where where the “____” is the page number where material is found.material is found.

Id. is either underlined or italicized.Id. is either underlined or italicized.

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Id.Id. (cont.) (cont.)

Examples:Examples: The written description requirement may be The written description requirement may be

satisfied by a recitation of a representative satisfied by a recitation of a representative number of species falling within the scope number of species falling within the scope of the genus. of the genus. Regents of the University of Regents of the University of California v. Eli Lilly & Co.,California v. Eli Lilly & Co., 119 F.3d 1559, 119 F.3d 1559, 1569 (Fed. Cir. 1997). It may also be 1569 (Fed. Cir. 1997). It may also be satisfied by a recitation of structural satisfied by a recitation of structural features common to members of the genus, features common to members of the genus, which features constitute a substantial which features constitute a substantial portion of the genus. portion of the genus. Id.Id.

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What Citation Convention What Citation Convention Do Tribunals Use? Do Tribunals Use?

MPEP normally uses parellel citation MPEP normally uses parellel citation to reporter book and USPQ.to reporter book and USPQ.

BPAI decisions normally use USPQ BPAI decisions normally use USPQ citation.citation.

Court decisions use only reporter Court decisions use only reporter book citation.book citation.

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How Applicants Will Cite How Applicants Will Cite Cases to Examiners?Cases to Examiners?

Probably using reporter book citation and Probably using reporter book citation and maybe USPQ citation.maybe USPQ citation.

If applicant gives only the reporter book If applicant gives only the reporter book citation, an examiner can use the case name citation, an examiner can use the case name to find the case. An examiner does not have to find the case. An examiner does not have to have a USPQ citation to find the case.to have a USPQ citation to find the case.

If applicant gives a list of cases for a If applicant gives a list of cases for a proposition, review the cases beginning proposition, review the cases beginning with the first one cited. It usually is the with the first one cited. It usually is the most relevant. most relevant.

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How Examiners Should Cite How Examiners Should Cite Cases to Applicants?Cases to Applicants?

Use USPQ citationUse USPQ citation

If reporter book citation is available, consider giving it If reporter book citation is available, consider giving it too. Reporter book citation form may or may not too. Reporter book citation form may or may not appear in MPEP. appear in MPEP.

Examiners likely will not have access to reporter Examiners likely will not have access to reporter books.books.

Once an examiner provides the citation for a case, the Once an examiner provides the citation for a case, the examiner need not repeat the cite each time the case examiner need not repeat the cite each time the case is mentioned. Instead, the examiner should give the is mentioned. Instead, the examiner should give the case name and a page number for where the cited case name and a page number for where the cited material can be found to enable the applicant to material can be found to enable the applicant to quickly find the material. quickly find the material. Analogous to short cites for journal article or patent.Analogous to short cites for journal article or patent.

Questions?Questions?

AppendicesAppendices

Appendix 1: Appendix 1: Finding Case LawFinding Case Law

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How Examiners Find How Examiners Find Case LawCase Law

Two steps to finding case law:Two steps to finding case law: Step 1: Consult MPEP (possibly stop Step 1: Consult MPEP (possibly stop

there)there) Step 2: Find the case in USPQ Step 2: Find the case in USPQ

database (court decisions) or on BPAI database (court decisions) or on BPAI websitewebsite

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MPEPMPEP

Cases are discussed in the MPEP by relevant Cases are discussed in the MPEP by relevant topicstopics

Gives a summary of the case and usually the Gives a summary of the case and usually the holdingholding

Reliance on the case has been endorsed by Reliance on the case has been endorsed by Patent Policy for the stated propositionPatent Policy for the stated proposition

Use MPEP Insight in Examiner’s Toolkit to Use MPEP Insight in Examiner’s Toolkit to find a particular casefind a particular case

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MPEP (cont.) MPEP (cont.)

If the discussion of a case in the If the discussion of a case in the MPEP gives sufficient information MPEP gives sufficient information about a case, then stop with the about a case, then stop with the MPEP discussion of the caseMPEP discussion of the case

But, if you need to read the case, But, if you need to read the case, then use USPQ database to find itthen use USPQ database to find it

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USPQ DatabaseUSPQ Database

USPQ websiteUSPQ website http://iplaw.bna.com/iplw/ http://iplaw.bna.com/iplw/ Easy to useEasy to use

4 Ways4 Ways By citationBy citation By case name—often needed because applicants By case name—often needed because applicants

may not provide USPQ cite; applicants typically may not provide USPQ cite; applicants typically use reporter book citeuse reporter book cite

By word searchingBy word searching By topical indexBy topical index

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Using USPQ to Find Case Using USPQ to Find Case LawLaw

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Case by CitationCase by Citation

Step 1: Step 1:

Step 2: Step 2:

Step 3: Step 3:

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Case by Citation (cont.)Case by Citation (cont.)

Step 4: Step 4:

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Case by Name Case by Name

Step 1:Step 1:

Step 2: Step 2:

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Case by Name (cont.)Case by Name (cont.)

Step 3: Step 3:

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Case by Name (cont.)Case by Name (cont.)

Step 4: Step 4:

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Word Searching Word Searching OperatorsOperators

Used to connect search terms and Used to connect search terms and establish hierarchy for searchestablish hierarchy for search

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Word Searching Using Word Searching Using Legal TermsLegal Terms

Step 1: Step 1:

Step 2: Step 2:

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Word Searching Using Legal Word Searching Using Legal Terms (cont.)Terms (cont.)

Step 3: Step 3:

80

Word Searching Using Legal Word Searching Using Legal Terms (cont.)Terms (cont.)

Step 4: Step 4:

81

Word Searching Using Science Word Searching Using Science TermsTerms

Step 1: Step 1:

Step 2: Step 2:

82

Word Searching Using Science Word Searching Using Science Terms (cont.)Terms (cont.)

Step 3: Step 3:

83

Word Searching Using Science Word Searching Using Science Terms (cont.)Terms (cont.)

Step 4: Step 4:

84

Case by Topical IndexCase by Topical Index

Step 1: Step 1:

Step 2: Step 2:

85

Case by Topical Index Case by Topical Index (cont.)(cont.)

Step 3: Step 3:

Step 4: Step 4:

86

Case by Topical Index Case by Topical Index (cont.)(cont.)

Step 5: Step 5:

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BPAI DecisionsBPAI Decisions Step 1: Step 1:

http://www.uspto.gov/web/offices/dcohttp://www.uspto.gov/web/offices/dcom/bpai/index.htmlm/bpai/index.html

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BPAI Decisions (cont.)BPAI Decisions (cont.)

Step 2: Precedential DecisionsStep 2: Precedential Decisions

89

BPAI Decisions (cont.)BPAI Decisions (cont.)

Step 2: Informative DecisionsStep 2: Informative Decisions

90

BPAI Decisions (cont.)BPAI Decisions (cont.)

Step 2: Other DecisionsStep 2: Other Decisions

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Additional ResourcesAdditional Resources

For more detailed information on For more detailed information on finding case law, see handouts:finding case law, see handouts: Searching BPAI and Court Decisions; Searching BPAI and Court Decisions;

andand Citation Searching—MPEP Insight and Citation Searching—MPEP Insight and

USPQ Online—Guided SearchUSPQ Online—Guided Search

Appendix 2: Appendix 2: GlossaryGlossary

(entries appear in alphabetical order)(entries appear in alphabetical order)

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Abuse of DiscretionAbuse of Discretion

Extreme deferenceExtreme deference

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Applicant v. AppellantApplicant v. Appellant

Applicant applies for a patent by Applicant applies for a patent by filing an application with the Office.filing an application with the Office.

Appellant is the term used for an Appellant is the term used for an applicant who appeals a final applicant who appeals a final rejection to the Board and possibly rejection to the Board and possibly then on to a court. then on to a court.

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AppelleeAppellee

Appellee is the term for a party who Appellee is the term for a party who is adverse to an appellant. is adverse to an appellant. SeeSee slide slide 133.133.

Before the Board, an examiner is not Before the Board, an examiner is not an Appellee.an Appellee.

Before the Federal Circuit, the Before the Federal Circuit, the Office is the Appellee when an Office is the Appellee when an Applicant-Appellant appeals an Applicant-Appellant appeals an adverse Board decision.adverse Board decision.

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Authoring JudgeAuthoring Judge

Opinions for the court are either (i) Opinions for the court are either (i) authored by a judge or (ii) issued per authored by a judge or (ii) issued per curiamcuriam

Authoring judge is listed on face of Authoring judge is listed on face of opinion, but he/she is writing for the opinion, but he/she is writing for the courtcourt

Mistake to say “Judge Smith’s Mistake to say “Judge Smith’s opinion”opinion”

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Clearly ErroneousClearly Erroneous

For factualFor factual issues – as long as the issues – as long as the findings of fact are plausible, they findings of fact are plausible, they will not be overturnedwill not be overturned

Does the reviewing judge have a Does the reviewing judge have a “definite and firm conviction” that “definite and firm conviction” that an error has been made?an error has been made?

Limited deferenceLimited deference

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Declaration v. AffidavitDeclaration v. Affidavit

Declaration is a statement of fact Declaration is a statement of fact signed by an affiant, but signed by an affiant, but not made not made under oathunder oath. .

Affidavit is a sworn statement of fact Affidavit is a sworn statement of fact signed by an affiant signed by an affiant under oathunder oath. .

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De NovoDe Novo Means “anew” or “a second time”Means “anew” or “a second time” For questions For questions of law of law No deference to lower courtNo deference to lower court

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En BancEn Banc

Means “in full court”Means “in full court” Means that all judges of the court sit Means that all judges of the court sit

together to hear a casetogether to hear a case Supreme Court always sits Supreme Court always sits en bancen banc Federal Circuit sits Federal Circuit sits en bancen banc only only

rarely for important casesrarely for important cases

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Per CuriamPer Curiam

Means “by the Court”Means “by the Court” Court decides to issue the decision in Court decides to issue the decision in per per

curiamcuriam form when obviously decision was form when obviously decision was written by one of the judgeswritten by one of the judges

Usually a short opinion; may address Usually a short opinion; may address controversial subject matter with which controversial subject matter with which no judge wants to particularly associate no judge wants to particularly associate his/her name as authorhis/her name as author E.g., E.g., Bush v. GoreBush v. Gore, 531 U.S. 98 (2000) is most , 531 U.S. 98 (2000) is most

famous famous per curiamper curiam decision of Supreme Court. decision of Supreme Court.

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Prima FaciePrima Facie

Means “on its first appearance” or “by Means “on its first appearance” or “by first instance”first instance”

The party that has the burden of proof The party that has the burden of proof must make a must make a prima facieprima facie case case essential to its case, essential to its case, e.g.e.g., , unpatentability of a claimed inventionunpatentability of a claimed invention

If an Examiner fails to present a If an Examiner fails to present a prima prima faciefacie case to support a rejection, then case to support a rejection, then the Applicant does not need to rebut.the Applicant does not need to rebut.

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RedactionRedaction

Obscure or remove text from a Obscure or remove text from a document prior to release of the document prior to release of the documentdocument

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Substantial EvidenceSubstantial Evidence

For factual issuesFor factual issues Requires evidence that a reasonable Requires evidence that a reasonable

mind might accept as adequate to mind might accept as adequate to support to the finding support to the finding

Very deferentialVery deferential