Raymond T. Chen
How Judge Chen rules, drawn from 42 signed orders. Every observation links to the order it came from.
How Judge Chen decides
Patterns drawn from this judge's own signed orders. Every observation links to the order it came from.
What persuades
In obviousness he holds a lone prior-art reference to a demanding standard: where a single reference is the only evidence of obviousness, it must actually enable a skilled artisan to make the claimed invention. A reference whose performance parameters depend on materials that do not exist is legally non-enabling and cannot, by itself, render a claim obvious.
“If a skilled artisan cannot make Knip's engine, a skilled artisan necessarily cannot optimize its power density.”
He reads statutes as written and will not let a judge-made doctrine override a clear statutory grant: obviousness-type double patenting, an equitable doctrine, cannot cut off a patent-term extension that Congress validly authorized by statute.
“We agree and accordingly affirm.”
Method claims may require an implicit sequence even without words such as 'before' or 'after' when the claim's grammar and functional logic make one step depend on another.
“implicit ordering exists when there are inherent logical dependencies or functional relationships between the recited steps of a method claim.”
A patent owner can retain constitutional standing after a license when it keeps a meaningful exclusionary right to sue that the licensee cannot unilaterally nullify.
“Plaintiff retained an exclusionary right sufficient for Article III standing, namely the non-illusory right to sue Zydex in the United States.”
Procedural preferences
He holds parties to raising their arguments before the tribunal below. A claim-construction theory never presented to the examiner or the reviewing board is forfeited on appeal, because the iterative examination process puts the burden on the applicant to offer a saving construction in the first instance.
“Whereas forfeiture is the failure to make the timely assertion of a right, waiver is the ‘intentional relinquishment or abandonment of a known right.’”
But he draws the forfeiture line with care. A party does not forfeit an argument for appellate review merely by declining to re-raise it in an optional request for rehearing before the agency, because that step is not required to preserve the point.
“We thus hold that a party's choice to not re-raise an argument in the party's request for rehearing to the Board does not, in and of itself, forfeit the argument for review by this court.”
Challenges to agency rules must confront the limits of judicial review when the disputed choices concern program design and policy rather than unlawful statutory interpretation.
“many of the arguments raised involve agency policymaking choices that are beyond this court's purview”
In T-Mobile, Chen looked past the patent setting to the claim actually pleaded and transferred a state-law settlement dispute because contract interpretation did not necessarily require resolution of a substantial patent-law question.
“A patent law question is not a ‘necessary element’ of the breach of contract claim, which might well succeed on the theory that the term is being used in this contract in its ordinary-language sense as applied to the plain formal results of the EPR process.”
Cautions
He requires more than possibility to support an inherency finding. A review board cannot hold a claim obvious by assuming a prior-art reference necessarily contains an unstated feature when the reference discloses other, more plausible ways of operating; a mere possibility that the feature is present is not substantial evidence.
“While it is possible that Woodhill's system utilizes an unstated Binary Object Identifier lookup table to locate binary objects of a previous version of a file that is going to be restored (column 17 of Woodhill), mere possibility is not enough.”
He guards against narrowing claims beyond what the specification supports. Absent clear disclaimer or disavowal, a court should not read a limitation into a claim term that would exclude embodiments the specification discloses: doing so is reversible error.
“We normally do not interpret claim terms in a way that excludes embodiments disclosed in the specification—we only do so amidst clear disclaimer or disavowal.”
Signed rulings
A grounded sample of orders signed by this judge, with the verbatim dispositive language.
“For the preceding reasons, we affirm the decision of the Board.”
“Because we conclude the estoppel provision of § 317(b) did not prohibit the PTO from maintaining the reexamination of the '772 patent's claims and the Board's construction of the dual download feature is consistent with the broadest reasonable interpretation, we affirm the Board's decision.”
“We vacate and remand the Board's finding that KEI's mark EARNHARDT COLLECTION for furniture and custom construction of homes is not primarily merely a surname.”
“We agree and accordingly affirm.”
“Accordingly, we affirm the Claims Court's decision finding that no implied-in-fact contract exists.”
“We therefore reverse the Board's finding of obviousness over Woodhill in view of Stefik.”
“Because the single sentence in the August 1984 letter, as a purported explicit denial, cannot meet the notice requirements of § 3.103, we reverse the Veterans Court decision.”
“For the reasons stated above, we reverse the district court's judgment as a matter of law with respect to the asserted claims of the '275 patent.”
“We have considered Mr. Ravin's remaining arguments, but we find them unpersuasive. Accordingly, we affirm the decision of the Veterans Court.”
“the appeal from the final judgment of the Veterans Court is AFFIRMED”
“For the reasons stated above, we affirm the district court's claim constructions and ruling at summary judgment of noninfringement as to the ED2M/ED3 pile tip.”
“For the reasons stated, we affirm the Board's decision upholding the rejection of claims 1-9, 11, 14-17, 19, and 20 of the '765 application.”
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