“As with Killian, the Smith claims have nothing to do with ‘comprehending’ anything, the issue never appears in the PTAB decision or any brief before the Federal Circuit, and Appellant Smith never had an opportunity to be heard on the ‘comprehending’ theory of ‘abstract’.”
Last June, Gene Quinn published an iconic article, “Yu v. Apple Settles It: The CAFC is Suffering from a Prolonged Version of Alice in Wonderland Syndrome,” in which Mr. Quinn evokes Lewis Carrol’s White Queen, “who was known to have sometimes ‘believed six impossible things before breakfast’” to describe the ridiculous nature of the Yu. v. Apple decision. To Judge Taranto’s credit, the Yu v. Apple decision is a remarkable read, so long as one knows nothing of photography and nineteenth century art history. However, in less than three months after Yu. V. Apple, the Federal Circuit would progress from mere fiction to fantasy / science fiction in both the In re Killian case (in which the author served as counsel for Killian) and the more recent case of In re Jason Smith, Appeal 22-1310 (Fed. Cir. Aug. 9, 2022), in which Judges Lourie, Dyk, and Hughes rejected Smith’s claims in an act that is aptly described as “jumping the shark.”
A Remarkable Departure from the Record
In particular, the Smith panel declined to uphold the Patent Trial and Appeal Board’s (PTAB’s) theory of “abstract,” while quoting In re Killian to explain the abstract idea of “collection of information, comprehending the meaning of that collected information, and indication of the results, all on a generic computer network operating in its normal, expected manner” (emphasis added).
The first problem with this “comprehending” theory is that the claims in Killian were rejected by the PTAB as directed to the alleged abstract idea of providing social security benefits combined with the long defunct (at least by the Supreme Court) mental steps theory of patent eligibility. Finding an error in the PTAB’s mental steps theory, Judge Chen sua sponte changed the theory of rejection in Killian by asserting this “comprehending” theory of abstract. However, the Killian claims have nothing to do with “comprehending” anything, and the term “comprehend” (or any variation or derivative) never appears in the PTAB decision or any brief before the Federal Circuit. This new theory of rejection represents a remarkable departure from the record before the Federal Circuit.
The second problem with the Smith decision is that the Smith Panel decided, sua sponte, to change the theory of rejection by asserting the same nonsensical “comprehending” theory invented by the Killian Panel, despite the fact that the PTAB held the “abstract idea” of the Smith claims as related to “organizing business or sales activity.” As with Killian, the Smith claims have nothing to do with “comprehending” anything, the issue never appears in the PTAB decision or any brief before the Federal Circuit, and Appellant Smith never had an opportunity to be heard on the “comprehending” theory of abstract.
These decisions against Killian and Smith are back-to-back violations of both due process of law and the Administrative Procedure Act (APA), whereby the Federal Circuit spontaneously invented a new theory of “abstract” based on things that never happened in Killian, then applied this new theory to things that never happened in Smith to come to a conclusion of patent ineligibility having no basis in anything that ever happened at the USPTO or before the Federal Circuit.
A Failure to Comprehend
However, one can be too enthralled by these most recent constitutional violations by the Federal Circuit to appreciate the true absurdity of the Federal Circuit’s latest favorite theory of abstract. That is, forgetting that Killian and Smith have nothing to do with “comprehending” anything, the Federal Circuit’s latest legal fiction reflects a disturbing lack of understanding about how conventional computer networks operate. Specifically, “generic computer networks operating in a normal, expected manner” don’t “comprehend” things any more than a hammer does! The frightening thing about this absurd theory of rejection: One Federal Circuit judge in each of Smith and Killian had to write it down while at least two other Federal Circuit judges said, “Yeah, that seems right.”
Check the Precedent
Thus, the Federal Circuit not only expects the patent community to believe in impossible things but is now trying to sell science fiction in a manner that is prejudicial to Smith and a violation of binding judicial precedent from the Supreme Court that has been in place for over 60 years. See Burlington Truck Lines, Inc. v. United States, 371 U.S. 156, 168 (1962) (holding that courts are “powerless to affirm the administrative action by substituting what it considers to be a more adequate or proper basis.”); Securities & Exchange Comm’n v. Chenery Corp., 332 U. S. 194, 332 U. S. 196 (1947) (holding that a reviewing court must judge the propriety of an agency action solely by the grounds invoked by the agency, and that “[i]f those grounds are inadequate or improper, the court is powerless to affirm the administrative action); Motor Vehicle Mfrs. Assn. v. State Farm, 463 U.S. 29 (1983) (a reviewing court “may not supply a reasoned basis for the agency’s action that the agency itself has not given”); and Gonzalez v. Thomas, 547 U.S. 183 (2006) (“A court of appeals `is not generally empowered to conduct a de novo inquiry into the matter being reviewed and to reach its own conclusions based on such an inquiry’”).
While Federal Circuit quislings might cite In re Comiskey, which interprets Chenery as meaning that the “Supreme Court made clear that a reviewing court can (and should) affirm an agency decision on a legal ground not relied on by the agency if there is no issue of fact, policy, or agency expertise,” Berkheimer, Alice Corp., Mayo and Bilski all recognize that whether something is “well-known, routine, and conventional” under step one of Alice/Mayo is an issue of fact. Further, Comiskey cannot be reconciled with the “de novo inquiry” language of Gonzalez and as well as Title 5 U.S.C. § 706(2)(A), which requires the Federal Circuit to “hold unlawful and set aside agency action, findings, and conclusions found to be . . . arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law.” Further, the Comiskey rule does not allow an aggrieved party an opportunity to be heard on the Federal Circuit’s new grounds of rejection no matter how speculative the new grounds are, no matter how removed from the factual record the new grounds are, or even how distantly removed from the laws of physics and common sense the new grounds are. The Comiskey rule stands for nothing but an opportunity to commit injustice under color of law. See Singleton v. Wulff, 428 U.S. 106, 121 (1976), where the Supreme Court cautioned that injustice is “more likely to be caused than avoided by deciding the issue without petitioner’s having had an opportunity to be heard.”
Hanging On at All Costs
The lesson of Smith is as follows: At least half of Federal Circuit judges have no interest in clarifying patent eligibility and will evoke the most impossible of fictions and scatterbrained legal theories to hang on to the capricious judicial veto that is Alice/Mayo.
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