Fresh From the Bench: Recent Patent Cases From the Federal Circuit
Memorylink – The Circuit affirms the granting of summary judgment on contract and patent infringement claims and the dismissal of tort claims based on the running of the statute of limitations.
DDR – The panel affirms denial of JMOL as to noninfringement and invalidity of a ‘399 patent, but reverses the denial of JMOL as to anticipation with respect to a '572 patent. Judge Chen writes the most in depth discussion of Alice v. CLS Bank we've seen from the Circuit, upholding patentability and providing some guidance as to the drafting of patent-eligible claims, with Judge Mayer dissenting.
Japanese Foundation ─ The panel reverses the district court, finding that the PTO did not act arbitrarily or capriciously, or abuse its discretion in declining to use its inherent authority to withdraw a terminal disclaimer that the Foundation's attorney filed in accordance with the PTO's regulations.
Memorylink Corp. v. Motorola Solutions, Inc. and Motorola Mobility, Inc. , Fed. Cir. Case No. 2014-1186 (December 5, 2014)
In 1997 Strandwitz and Kniskern approached Motorola, seeking to jointly develop a handheld camera device that could wirelessly transmit and receive video signals. By early 1998, they had constructed prototypes with wireless radio boards and technical information from Motorola, and Strandwitz formed Memorylink specifically for that venture. After the first successful demonstration at Motorola's offices in January 1998, Strandwitz sent a letter to Motorola in which he agreed that any patents would be jointly owned by Motorola and Memorylink and that Motorola should head up the patent investigation. Strandwitz then sent Motorola a document entitled "Wireless Multimedia Core Technology Overview for Patent Review". After reviewing that document, Motorola's attorney Dunlop sent a letter to Strandwitz in April of 1998, which described the features to be focused on for patent applications and stated the attorney's understanding that the inventors were Strandwitz, Kniskern, and two of Motorola's employees, Schulz and Wyckoff. The letter asked Strandwitz and Kniskern to "let the attorney know if they disagreed with this determination of inventorship." A proposed patent filing agreement was enclosed, which "contemplated taking advantage of Motorola's patent department for preparation and filing of patent applications." Attached to the proposed agreement was a copy of the Technology Overview, with what the Dunlop letter explained were deletions relating to areas in which Motorola was previously involved and thus in which it could not enter into agreements that might result in joint ownership of intellectual property. At this time the four inventors also signed an invention disclosure.
In June 1998, the four designated inventors signed an assignment transferring their rights to both Motorola and Memorylink. The assignment begins with the statement, "for and in consideration of the sum of One Dollar to us in hand paid, and other good and valuable consideration, the receipt of which is hereby acknowledged." The inventors also signed a declaration, which Motorola filed once the assignment was executed. The ‘352 patent, which lists Strandwitz, Kniskern, Schulz, and Wyckoff as inventors, issued in February 2003.
In December 1998 Memorylink retained patent counsel to review the Memory Link/Motorola relationship and assess the existing Memory Link agreements. That counsel filed a divisional patent application in January 2003, which listed the same four inventors. However, when Memorylink conducted an external investigation in November 2007, it was advised by an unaffiliated attorney that Schulz and Wyckoff were not proper coinventors.
Memorylink filed suit against Motorola in June 2008, alleging patent infringement and various torts sounding in fraud, and seeking a declaration that the assignment was void for lack of consideration. In response, Motorola moved to dismiss the Complaint, arguing that the tort claims were barred by the five-year statute of limitations. The district court rejected Memorylink's argument that its claims did not accrue until the inventorship problem was discovered, and dismissed most of the claims. The court reasoned that because Memorylink insisted that Motorola's employees contributed nothing to the idea, Memorylink should have known that they were not co-inventors when the assignment was signed in 1998, and therefore its claims were untimely. However, the court revived some claims upon reconsideration a few months later. In particular, the court chose to revive the claim of lack of consideration for the assignment as a contract claim and therefore not time-barred, despite being originally pleaded as a fraud claim.
Motorola moved for summary judgment on the remaining claims, asserting that there was consideration to support the assignment and it therefore could not be liable for infringement as a co-owner of the patent. The district court found that the assignment unambiguously stated that one dollar, as well as other good and valuable consideration, was received as consideration. Because Memorylink eschewed reliance on parol evidence, the court rejected the arguments as to the inadequacy of the consideration. The court also found that Schulz and Wyckoff transferred their ownership interests in the patent, which is what Memorylink argued was the intended consideration. And, if parol evidence were considered, the court found that Memorylink intended for patent prosecution representation, which was indisputably provided, to be part of the bargain. The court therefore concluded that there was no genuine issue of material fact, and granted summary judgment in Motorola's favor on the contract claim. Because the assignment was valid, Motorola was a joint owner of the '352 patent and could not be liable for infringement. Thus, the court also granted summary judgment of noninfringement to Motorola.
The panel first addresses the summary judgment on the issue of consideration, and agrees with Motorola that there is no genuine issue of material fact that consideration existed since the assignment explicitly acknowledges consideration for the sale, assignment, and transfer of rights. If extrinsic evidence is not considered to determine the intended consideration, as Memorylink urges, then the "four corners" of the agreement quite clearly contain recitals of consideration. The use of boilerplate does not make the stated consideration invalid or nonexistent. Alternatively, if extrinsic evidence is considered, then the court held that other intended consideration could be found from exchanges between Motorola and Memorylink.
Memorylink's arguments about mistake and unfairness are also unconvincing. Summary judgment was reversed in a prior Illinois case because the defendants were claiming mutual mistake of law by the parties in entering the contract, not a lack of consideration. However, Memorylink did not attempt to pursue its claim under a theory of mutual mistake; instead, it chose to allege that Motorola knew the inventorship determination was wrong. The only reasonable inference from the facts alleged would be that Motorola was not mistaken as to inventorship, which precludes any basis for finding a mutual mistake. Moreover, the panel does not find the consideration to be so insufficient as to shock its conscience.
The panel then turns to the dismissal of the tort claims. The Illinois statute of limitations for fraud is five years. The discovery rule delays the start of the clock until the plaintiff knew or should have known of the injury. Memorylink argues that mere knowledge of the facts underlying a claim is insufficient to start the statute of limitations clock; rather, the claim should not accrue until those facts lead to the conclusion that a legal claim exists. Because of the fiduciary duty owed to it by Motorola's attorney, Memorylink maintains that it had no reason to question the improper inventorship determination and thus could not have concluded that any of the tort claims existed before its external investigation in 2007.
The panel holds that the court properly dismissed the tort claims because Memorylink knew all the facts necessary to assert its claims, and therefore its causes of action accrued, more than five years before it filed suit. Memorylink alleged that as of April 1998, although neither Schulz nor Wyckoff had contributed or done anything towards the conception of the Invention, Motorola had asserted that all four people were co-inventors. The Dunlop letter provided a prime opportunity for Strandwitz and Kniskern to question that inventorship determination, yet they failed to do so. Memorylink had additional occasions in 1998 at which to inquire about or challenge the issue of inventorship, including the signing of the invention disclosure, the assignment, and the inventor declaration for the patent application. Even accepting the Complaint's allegations as true, the panel agrees with the court that Memorylink should have concluded that a legal claim existed based on Schulz and Wyckoff having contributed nothing to the conception of the invention yet being included as co-inventors on documents relating to the invention. Memorylink did not later learn of any new and significant facts underlying the tort claims to warrant tolling the statute of limitations.
Memorylink's arguments about the timing of and the fiduciary duties owed from the attorney—client relationship are also unpersuasive. Even if Motorola's attorney had not explained inventorship, assignment, or joint ownership, Strandwitz and Kniskern were aware of that when they signed the assignment. Moreover, Memorylink obtained independent counsel soon thereafter, and thus reasonably should have discovered any legal claims it had well before the statute had run. Instead, it failed to challenge the inventorship determination until June 2008. The court therefore did not err in dismissing the various tort claims as untimely.
DDR Holdings, LLC v. Hotels.com,National Leisure Group, Inc, Digital River, Inc., et al., Fed. Cir. Case No. 2013-1505 (December 5, 2014)
The ‘572 and ‘399 patents are directed to systems and methods of generating a composite web page that combines certain visual elements of a "host" website with content of a third-party merchant. For example, the generated composite web page may combine the logo, background color, and fonts of the host website with product information from the merchant. Prior art systems allowed third-party merchants to lure the host website's visitor traffic away from the host website because visitors would be taken to the third-party merchant's website when they clicked on the merchant's advertisement on the host site. The patents-in-suit discloses a system that provides a solution to this problem (for the host) by creating a new web page that permits a website visitor, in a sense, to be in two places at the same time.
Anticipation, indefiniteness, infringement and prejudgment interest
The panel holds that Digital River's prior art Secure Sales System satisfies the claimed "look and feel" limitation, and thus anticipates the claims of the ‘572 patent. The rejection of a § 112 ¶ 2 challenge is affirmed, noting that the term "look and feel" is adequately explained in the specification. Substantial evidence supports the jury's infringement verdict, and defendant's argument that DDR should not be entitled to prejudgment interest because it is a non-practicing entity is rejected. But the most interesting part of the case deals with the challenge to validity of the ‘399 patent under § 101.
Patentable subject matter under § 101
Since the ‘572 patent is invalid as being anticipated, the panel focuses its patentable subject matter analysis on the ‘399 patent. After discussing Alice and other Supreme Court and Circuit cases, the majority, per Judge Chen, concludes that the asserted claims clear the § 101 hurdle.
The panel first notes that it will review the district court's determination of patent eligibility § 101 de novo. In Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012), the Supreme Court set forth an analytical framework under § 101 to distinguish patents that claim patent-ineligible laws of nature, natural phenomena, and abstract ideas—or add too little to such underlying ineligible subject matter—from those that claim patent-eligible applications of those concepts. First, given the nature of the invention in this case, the panel will determine whether the claims at issue are directed to a patent-ineligible abstract idea. Alice Corp. v. CLS Bank Inc., 134 S. Ct. 2347 (2014). If so, it will then consider the elements of each claim—both individually and as an ordered combination—to determine whether the additional elements transform the nature of the claim into a patent-eligible application of that abstract idea. This second step is the search for an "inventive concept," or some element or combination of elements sufficient to ensure that the claim in practice amounts to "significantly more" than a patent on an ineligible concept.
Distinguishing between claims that recite a patent-eligible invention and claims that add too little to a patent-ineligible abstract concept can be difficult, as the line separating the two is not always clear. At one time, a computer-implemented invention was considered patent-eligible so long as it produced a "useful, concrete and tangible result." State St. Bank & Trust Co. v. Signature Fin. Grp., Inc., 149 F.3d 1368 (Fed. Cir. 1998). See also In re Alappat, 33 F.3d 1526(Fed. Cir. 1994) (en banc). This understanding rested, in large part, on the view that such inventions crossed the eligibility threshold by virtue of being in the technological realm, the historical arena for patented inventions. See, e.g., In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc) (concluding that a patent-eligible process must be "tied to a particular machine or apparatus" or transformed into a different state or thing, i.e., the "machine-or-transformation test").
While the Supreme Court in Bilski v. Kappos noted that the machine-or-transformation test is a "useful and important clue" for determining patent eligibility, it is clear today that not all machine implementations are created equal. 130 S. Ct. 3218, 3227 (2010).For example, in Mayo, the Supreme Court emphasized that satisfying the machine-or-transformation test, by itself, is not sufficient to render a claim patent-eligible, as not all transformations or machine implementations infuse an otherwise ineligible claim with an "inventive concept." ("Simply implementing a mathematical principle on a physical machine, namely a computer, is not a patentable application of that principle."). And after Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible. The bare fact that a computer exists in the physical rather than purely conceptual realm "is beside the point."
Although the Supreme Court did not delimit the precise contours of the "abstract ideas" category in resolving Alice, over the course of several cases the Court has provided some important principles. We know that mathematical algorithms, including those executed on a generic computer, are abstract ideas. See Benson. We know that some fundamental economic and conventional business practices are also abstract ideas. See Bilski (finding the "fundamental economic practice" of hedging to be patent ineligible); Alice (same for intermediated settlement).
In some instances, patent-ineligible abstract ideas are plainly identifiable and divisible from the generic computer limitations recited by the remainder of the claim. For example, in Alice the Court determined that the claims at issue "simply instructed the practitioner to implement the abstract idea of intermediated settlement on a generic computer." In Ultramercial, Inc. v. Hulu, LLC, 2014 WL 5904902, at *5 (Fed. Cir. Nov. 14, 2014), the claims merely recited the abstract idea of using advertising as a currency as applied to the particular technological environment of the Internet. In buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014), the claims recited no more than using a computer to send and receive information over a network in order to implement the abstract idea of creating a "transaction performance guaranty." Under Supreme Court precedent, the above claims were recited too broadly and generically to be considered sufficiently specific and meaningful applications of their underlying abstract ideas. Although many of the claims recited various computer hardware elements, these claims in substance were directed to nothing more than the performance of an abstract business practice on the Internet or using a conventional computer. Such claims are not patent-eligible.
Representative claim 19 of the '399 patent states:
19. A system useful in an outsource provider serving web pages offering commercial opportunities, the system comprising:
(a) a computer store containing data, for each of a plurality of first web pages, defining a plurality of visually perceptible elements, which visually perceptible elements correspond to the plurality of first web pages;
(i) wherein each of the first web pages belongs to one of a plurality of web page owners;
(ii) wherein each of the first web pages displays at least one active link associated with a commerce object associated with a buying opportunity of a selected one of a plurality of merchants; and
(iii) wherein the selected merchant, the outsource provider, and the owner of the first web page displaying the associated link are each third parties with respect to one other;
(b) a computer server at the outsource provider, which computer server is coupled to the computer store and programmed to:
(i) receive from the web browser of a computer user a signal indicating activation of one of the links displayed by one of the first web pages;
(ii) automatically identify as the source page one of the first web pages on which the link has been activated;
(iii) in response to identification of the source page, automatically retrieve the stored data corresponding to the source page; and
(iv) using the data retrieved, automatically generate and transmit to the web browser a second web page that displays: (A) information associated with the commerce object associated with the link that has been activated, and (B) the plurality of visually perceptible elements visually corresponding to the source page.
The majority begins its § 101 analysis at Mayo/Alice step one: determining whether the computer implemented claims at issue here are "directed to" a patent-ineligible abstract idea. Here, we note that the '399 patent's asserted claims do not recite a mathematical algorithm, nor do they recite a fundamental economic or longstanding commercial practice. Although the claims address a business challenge (retaining website visitors), it is a challenge particular to the Internet.
Like claims in the cases discussed above, the claims involve both a computer and the Internet. But these claims stand apart because they do not merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet. Instead, the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.
The '399 patent's claims address the problem of retaining website visitors that, if adhering to the routine, conventional functioning of Internet hyperlink protocol, would be instantly transported away from a host's website after "clicking" on an advertisement and activating a hyperlink. Upon the click of an advertisement for a third-party product displayed on a host's website, the visitor is no longer transported to the third party's website. Instead, the patent claims call for an "outsource provider" having a web server which directs the visitor to an automatically-generated hybrid web page that combines visual "look and feel" elements from the host website and product information from the third-party merchant's website related to the clicked advertisement. In this way, rather than instantly losing visitors to the third-party's website, the host website can instead send its visitors to a web page on the outsource provider's server that 1) incorporates "look and feel" elements from the host website, and 2) provides visitors with the opportunity to purchase products from the third-party merchant without actually entering that merchant's website.
The dissent suggests that the "store within a store" concept, such as a warehouse store that contains a kiosk for selling a third-party partner's cruise vacation packages, is the pre-Internet analog of the '399 patent's asserted claims. While that concept may have been well-known by the relevant timeframe, that practice did not have to account for the ephemeral nature of an Internet "location" or the near-instantaneous transport between these locations made possible by standard Internet communication protocols, which introduces a problem that does not arise in the "brick and mortar" context. In particular, once a customer enters a physical warehouse store, that customer may encounter a kiosk selling third party cruise vacation packages. There is, however, no possibility that by walking up to this kiosk, the customer will be suddenly and completely transported outside the warehouse store and relocated to a separate physical venue associated with the third-party—the analog of what ordinarily occurs in "cyberspace" after the simple click of a hyperlink—where that customer could purchase a cruise package without any indication that they were previously browsing the aisles of the warehouse store, and without any need to "return" to the aisles of the store after completing the purchase. It is this challenge of retaining control over the attention of the customer in the context of the Internet that the '399 patent's claims address.
The majority cautions that not all claims purporting to address Internet-centric challenges are eligible for patent. For example, in the recent Ultramercial opinion, the patentee argued that its claims were "directed to a specific method of advertising and content distribution that was previously unknown and never employed on the Internet before." But this alone could not render its claims patent-eligible. In particular, we found the claims to merely recite the abstract idea of "offering media content in exchange for viewing an advertisement," along with "routine additional steps such as updating an activity log, requiring a request from the consumer to view the ad, restrictions on public access, and use of the Internet."
The '399 patent's claims are different enough in substance from those in Ultramercial because they do not broadly and generically claim "use of the Internet" to perform an abstract business practice (with insignificant added activity). Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result—a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink. Instead of the computer network operating in its normal, expected manner by sending the website visitor to the third-party website that appears to be connected with the clicked advertisement, the claimed system generates and directs the visitor to the above described hybrid web page that presents product information from the third-party and visual "look and feel" elements from the host website. When the limitations of the '399 patent's asserted claims are taken together as an ordered combination, the claims recite an invention that is not merely the routine or conventional use of the Internet.
It is also clear that the claims at issue do not attempt to preempt every application of the idea of increasing sales by making two web pages look the same, or of any other variant suggested by NLG. Rather, they recite a specific way to automate the creation of a composite web page by an "outsource provider" that incorporates elements from multiple sources in order to solve a problem faced by websites on the Internet. As a result, the '399 patent's claims include "additional features" that ensure the claims are "more than a drafting effort designed to monopolize the abstract idea." Alice. In short, the claimed solution amounts to an inventive concept for resolving this particular Internet-centric problem, rendering the claims patent-eligible.
In sum, according to the majority, the '399 patent's claims are unlike the claims in Alice, Ultramercial, and buySAFE that were found to be directed to little more than an abstract concept. To be sure, the '399 patent's claims do not recite an invention as technologically complex as an improved, particularized method of digital data compression. But nor do they recite a commonplace business method aimed at processing business information, applying a known business process to the particular technological environment of the Internet, or creating or altering contractual relations using generic computer functions and conventional network operations, such as the claims in Alice, Ultramercial, or buySAFE. The claimed system, though used by businesses, is patent-eligible under § 101. The district court did not err in denying NLG's motion for JMOL of invalidity under 35 U.S.C. § 101 as to these claims.
Dissent by Judge Mayer: In dissent, Judge Mayer finds that the asserted claims fall outside of § 101 because they simply describe an abstract concept—that an online merchant's sales can be increased if two web pages have the same "look and feel"—and apply that concept using a generic computer. Alice made clear that claims untethered to any advance in science or technology do not pass muster under § 101. DDR's claims contain no more than an abstract idea for increasing sales implemented via "some unspecified, generic computer." The inventive concept, if any, embedded in DDR's claims is an idea for "retaining control over the attention of the customer." Because this purported inventive concept is an entrepreneurial rather than a technological one, DDR's claims are not patentable.
Comment: This is the first case post-Alice in which the Circuit has upheld claims that were subject to a § 101 challenge. In its opinion the majority cites to its opinions in buySAFE and Ultramercial but the same invalidity result was reached in Digitech Image Techs., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014) and Planet Bingo, LLC. v. VKGS LLC, 576 Fed. Appx. 1005 (Fed. Cir. 2014)(nonprecedential). In I/P Engine, Inc. v. AOL Inc., 576 Fed. Appx. 982 (Fed. Cir. 2014), the panel ruled that the patent was invalid as obvious but Judge Mayer wrote in a concurring opinion that the case should never have gone to trial since none of the asserted claims recited patentable subject matter. We'll see in future cases whether Judge Chen's (and Judge Wallach's) thinking represents the majority of the Circuit or if Judge Mayer's high bar under § 101 is accepted by the other judges.
Japanese Foundation for Cancer Research v. Michelle K. Lee , Fed. Cir. Case No. 2013-1678, 2014-1014 (December 9, 2014)
The '187 patent issued to the Foundation on February 27, 2011. On October 11, 2011 the Foundation filed a statutory disclaimer pursuant to 37 C.F.R. § 1.321(a) with the PTO, disclaiming "the entire term of all claims in the patent". On December 13, 2011, the Foundation filed a petition under 37 C.F.R. § 1.182 to withdraw the statutory disclaimer. The petition indicated that the disclaimer "was not filed in the context of any litigation or an assertion of double patenting," and that the disclaimer had not yet been made public by either the Foundation or the PTO, as it had not yet been entered into the PAIR database or the paper prosecution file. On January 17, 2012 the PTO denied the Foundation's petition. The basis for the denial was explained to be that the statutory mechanisms available to correct a patent "are not available to withdraw or otherwise nullify the effect of a recorded terminal disclaimer," and that the PTO's established policy was to deny any "request to withdraw or amend a recorded terminal disclaimer in an issued patent on the grounds that the rules of practice and 35 U.S.C. § 253 do not include a mechanism for withdrawal or amendment of such a terminal disclaimer." The Foundation then filed an action in district court appealing the PTO's decision. The court granted the Foundation's motion for summary judgment, and directed the PTO to withdraw the disclaimer.
Use of a Certificate of Correction to Withdraw the Terminal Disclaimer
On appeal, the Foundation argues that the PTO has the authority to issue a certificate of correction for the '187 patent to withdraw the terminal disclaimer. The pertinent statute provides that a certificate of correction may be issued "whenever a mistake of a clerical or typographical nature, or of minor character, which was not the fault of the PTO, appears in a patent and a showing has been made that such mistake occurred in good faith . . . if the correction does not involve such changes in the patent as would constitute new matter or would require re-examination." 35 U.S.C. § 255.
The Foundation argues that since the terminal disclaimer was filed due to the mistake of a paralegal, the mistaken filing constitutes a "clerical error" because she was a clerical employee performing clerical work. But this reading of the statute is strained and lacks support in case law. Therefore, the panel concludes that there is no basis for withdrawing the terminal disclaimer by means of a certificate of correction.
Exercising the PTO's Inherent Authority to Withdraw the Terminal Disclaimer
The Foundation also argues, as the district court held, that the PTO has the inherent authority to withdraw a mistakenly-filed terminal disclaimer and should have exercised its discretion to do so here. The first question, then, is the scope of the PTO's authority to withdraw an effectively recorded disclaimer. We have held that "administrative agencies possess inherent authority to reconsider their decisions, subject to certain limitations, regardless of whether they possess explicit statutory authority to do so." This principle is reflected in the PTO's regulations that allow the review of petitions in "situations not specifically provided for" in its regulations and, moreover, provide that any requirement of the regulations which is not a requirement of the statutes may be waived in an extraordinary situation. §§ 1.182, 1.183.
In this case, the Foundation has alleged that its attorney of record filed the disclaimer because of miscommunications between the Foundation and its law firms. The PTO declined to delve into the record and evaluate the merits of this assertion. The PTO instead determined that it need not examine alleged miscommunications because it holds the patentee to be "bound by the actions or inactions of his voluntarily-chosen representative." The PTO, apart from a clerical error under § 255, ends its inquiry once it determines that the attorney of record signed the disclaimer, as required by regulation.
The Foundation suggests that it should not be bound to the consequences of its attorney's actions, as it resulted in the loss of a valuable property right. The PTO has, however, clearly articulated in its regulations that, other than the patentee, only the attorney of record is authorized to file a terminal disclaimer on the patentee's behalf. And here, the patentee provided specific authority to its attorney to file a disclaimer by filing a power of attorney to prosecute the underlying application. Even if we disagreed with the PTO's position, we must not substitute our own judgment for that of the agency because "unless these vital differentiations between the functions of judicial and administrative tribunals are observed, courts will stray outside their province and read the laws of Congress through the distorting lenses of inapplicable legal doctrine. Here, the PTO determined that miscommunications between the Foundation and its attorney did not excuse the actions of the attorney, and we will not substitute our judgment for that of the agency.
Therefore, the panel finds that the PTO did not act arbitrarily or capriciously, or abuse its discretion in declining to use any inherent authority that it might have in withdrawing the terminal disclaimer that the Foundation's attorney duly filed in accordance with the PTO's regulations. The panel therefore reverses the ruling of the district court to the contrary.