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Do Courts Still Owe Deference to The Actions of USPTO Examiners?

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Invariably, a defense to a lawsuit alleging patent infringement is invalidity of the patent for failing to comply with one or more provisions of the Patent Act, Title 35, United States Code. The most frequently asserted defenses include lack of novelty, obviousness, and violations of the written description or enablement requirements. During examination of patent applications, U.S. Patent and Trademark Office (“USPTO”) examiners are required to make numerous decisions and choices, and take many actions, that ultimately result in granting of U.S. patents. Most, if not all, of those choices and actions implicate the same provisions of the Patent Act that support an accused infringer’s patent invalidity defense.


The U.S. Court of Appeals for the Federal Circuit (“CAFC”) recently revised a previously issued opinion to delete all references to the notion that the particular choices and actions of the USPTO examiner who examined and allowed the patent-in-suit are owed some degree of deference by the district court presiding over litigation on the issue of patent validity. Does this signal a general retreat from the concept of examiner deference?

In a January 2022 2-1 split decision, a three-judge panel of the CAFC reversed a district court’s ruling that the claims of two patents were invalid on the ground of claim indefiniteness.[1] The claim limitation in question, which formed the basis of the invalidity challenge, had been added to the claims by the USPTO examiner during prosecution of the applications, for the purpose of putting the claim in condition for allowance. In that January 2022 opinion, the court said: “Actions by PTO examiners are entitled to appropriate deference as official agency actions, for the examiners are deemed to be experienced in the relevant technology as well as the statutory requirements for patentability: ‘We presume that an examiner would not introduce an indefinite term into a claim when he/she chooses to amend the claim for the very purpose of putting the application in a condition for allowance.’”[2]

Circuit Judge Dyk dissented from the decision, stating that the “fact that a patent examiner introduced the indefinite language does not absolve the claims from the requirements of 35 U.S.C. § 112.” Continuing, he explained that “the test for definiteness is whether the claims ‘inform those skilled in the art about the scope of the invention with reasonable certainty,” …, not whether the claim language was added by a patent examiner or was not indefinite to the examiner.” Upon seeing Circuit Judge Dyk’s comment, Autodesk (the patent challenger) petitioned for rehearing on the question of examiner deference.  Specifically, the question presented was: should any deference be given to patent examiner actions or statements when determining the defense of invalidity on the basis of claim indefiniteness?

On October 17, 2022, the same three-judge panel issued a modified opinion reaching the same conclusion, i.e., that the district court erred when it invalidated the claims on the basis of claim indefiniteness, but the court deleted the above-quoted language regarding examiner deference from the opinion.[3]

Has the CAFC’s retraction signaled an end to the general concept of examiner deference? Unlikely. Under current statutory provisions and previous court rulings, a degree of examiner deference is inescapable. First and foremost, Section 282 of the Patent Act clearly and unambiguously states that “a patent shall be presumed valid.”  For many decades courts have interpreted this to mean that the USPTO’s patentability determination receives significant deference because a challenger must prove invalidity by clear and convincing evidence in court litigation.

A rationale behind this statutory provision is that a government agency (the USPTO) has found claims of issued patents to be patentable. USPTO examiners are presumed to have expertise in reviewing patent applications, applying the relevant statutory and regulatory requirements, and deciding whether the USPTO should grant patents on those applications. The CAFC has previously said that the presumption of validity is “based in part on the expertise of the patent examiners presumed to have done their jobs.”[4] Accordingly, a challenger must meet a high burden of proof to invalidate a patent granted by a USPTO examiner.

However, the CAFC’s modification of its Nature Simulation opinion may indicate that the court is unwilling or at least hesitant to further expand the notion of examiner deference. On the other hand, the two-judge majority may have simply felt that there was no need to rely on any concept of examiner deference, and thus deleted it from the opinion. Still, there are other CAFC decisions in which the court has refused to apply deference to acts that an examiner either took or did not take during prosecution when considering patent validity in a litigation setting.  For example, the court rejected a patentee’s argument that deference to an examiner’s consideration of declarations should apply when litigating an infringement action unless the challenger introduces new evidence. The court reasoned that “[n]o decision of the Supreme Court or this court has ever suggested that there is an added burden to overcome PTO findings in district court infringement proceedings.”[5]

 

 

[1] Nature Simulation Sys. Inc. v. Autodesk, Inc., 23 F.4th 1334 (Fed. Cir. 2022).  

[2] Id., at 1343.

[3] Nature Simulation Sys. Inc. v. Autodesk, Inc., No. 2020-2257, 2022 WL 10196714 (Fed. Cir. Oct. 17, 2022).  

[4]  Brooktree Corp. v. Advanced Micro Devices, Inc., 977 F.2d 1555, 1574 (Fed. Cir. 1992).

[5]  Novo Nordisk A/S v. Caraco Pharmaceutical Laboratories, Ltd., 719 F.3d 1346, 1357, 107 U.S.P.Q.2d 1210 (Fed. Cir. 2013)