After several years in which the U.S. Patent and Trademark Office (PTO) did not seem to have an official position on the issue, and many Patent Trial and Appeal Board (PTAB) panels took a position that was clearly at variance with the Administrative Procedure Act (APA), the PTO recently seems to be acquiescing to principles that the patent bar has been urging for years: (a) the PTO is subject to the same Administrative Procedure Act obligations as any other agency, and therefore cannot make factual findings without substantial evidence, and (b) there’s no carve-out for factual findings underlying § 101 subject matter eligibility rejections.
In particular, as outlined below, the PTO has recently moved to vacate PTAB decisions in several Federal Circuit appeals that had challenged eligibility conclusions as being improperly based on unsupported factual findings. These cases are only the tip of the iceberg, and it is tough to estimate how many pending PTAB appeals will require reversal of examiner rejections for this same reason. When a party has to backtrack on this many cases, it is usually because multiple failsafes failed. In this case, it is because multiple failsafes were bypassed or intentionally disabled. The bypassed failsafes included laws, such as the APA, designed to ensure agency predictability, efficiency, precision, and fairness.
We are hopeful that the PTO is using this forced stand-down on multiple appeals as a teachable moment. Will the PTO apply the lessons learned in a § 101 context to improve predictability and efficiency of the entire examination process? And maybe—not so coincidentally—will the PTO take this opportunity to enhance compliance with laws and failsafes that are designed to ensure agency predictability, efficiency, precision, and fairness, laws and failsafes that could have prevented this need to ask the Federal Circuit to vacate PTAB decisions?
Patent examiners at the PTO have a very difficult job. One of the reasons that their job is so difficult is the requirement to locate and provide evidence to support their factual findings. Over the last several years, an unfortunate practice arose at the PTO in which some examiners, in examining claims under § 101 for eligible subject matter, would routinely dismiss claim elements as conventional or well-known for purposes of patent eligibility analysis, without citing supporting evidence.
In addition to being unfair to patent applicants, this approach was also unfair to other, more thorough patent examiners who spent comparatively more time providing a rigorous examination but would end up looking less productive than examiners who took shortcuts. And, of course, these shortcuts are contrary to the “substantial evidence” requirement of the APA.
Several recent events reversing this trend are well known to the patent bar.
Second, in April, the PTO issued a memo implementing changes in examination policy limiting an examiner’s ability to find an element or combination of elements to be conventional without evidentiary support or taking of official notice. The PTO followed this up with examiner training guidance that further limits examiner discretion.
In June, a third, less visible, event evidenced that the PTO has truly taken Berkheimer to heart. As Gene reported here and here, the PTO filed motions (here and here) in several Federal Circuit appeals to vacate indefensible PTAB decisions that had affirmed § 101 rejections, and requested remand for reconsideration by the PTAB in view of Berkheimer and the Berkheimer memo.
The Federal Circuit has now issued orders in several of these cases, granting the PTO’s requested vacatur and remand.
Hopefully, the Director’s position in these appeals will affect the practice by some at the PTO of dismissing claim elements as well-known or conventional for purposes of § 101 analysis without providing any evidentiary support—we offer some suggestions in the concluding paragraphs of this article.
This memo reflected PTO confusion on the relationship of patent eligibility inquiries to the law of evidence, administrative law, and several related topics. Comment letters from the public reminded the PTO that all decisions are subject to the APA, and that APA requirements are significantly different (and, in many respects, stricter) than fact-finding and evidence rules available to Article III courts. Under a directive from the Executive Office of the President, the PTO was obligated to produce a “robust response to comments.” Unfortunately, the PTO didn’t follow this law. This neglect of this failsafe led to neglect of careful consideration of the public letters that the PTO itself solicited, and a lost chance to correct an error.
Legal principles that are basic and unassailable to lawyers are seldom self-implementing among examiners (very few of whom are lawyers, and all of whom operate under a production count system). Without guidance, basic legal principles can be overlooked, especially those that take time. Some examiners would routinely issue § 101 rejections in which claim elements were dismissed as conventional with no evidentiary support.
Although it is understandable that examiners might make this mistake, the patent bar expected that the PTAB would act with “competent legal knowledge” as required by 35 U.S.C. § 6, and recognize its “substantial evidence” obligations under the APA and course-correct on this issue. Initially, it seemed like this issue might work itself out quickly.
Unfortunately, rather than this view catching on more broadly at the PTO, some PTAB panels swung the opposite direction. Another of the failsafes failed: many PTAB decisions on the issue brushed aside the APA, and instead relied on a naïve understanding of the law to affirm evidence-less examiner rejections. If one searches PTAB decisions that cite Poisson or 2012-011084, one will find several dozen decisions that brush aside the “substantial evidence” requirement of the APA, misallocate the burden of proof, and confuse “issues of law” with underlying “issues of fact,” to affirm an examiner on issues of fact for which the examiner proffered no evidence.
This line of PTAB decisions is especially surprising: in the very case that sparked the increase in § 101 rejections, Alice Corp., the Supreme Court thoroughly cited support for factual findings.
This “no evidence” practice could have ended early, had other PTAB panels appreciated what the Poisson panel had recognized: administrative agencies cannot make factual findings without substantial evidence support. In this regard, both the Supreme Court and Federal Circuit have made clear that the APA governs the PTO and examiners just like any other agency, and that “[a]n abuse of discretion occurs where the decision is based on … factual findings that are not supported by substantial evidence.” But this failsafe failed as well.
Even before Berkheimer I, it seemed inarguable that the question of whether a claim element or combination of elements is conventional is a question of fact, and that an examiner finding that a claim element is well-known or conventional requires substantial evidence support. As Judge Moore noted in May 2018 in her concurrence of the denial for rehearing en banc in Berkheimer II, “Berkheimer and Aatrix stand for the unremarkable proposition that whether a claim element or combination of elements would have been well-understood, routine, and conventional to a skilled artisan in the relevant field at a particular point in time is a question of fact.” This is reinforced by the Supreme Court’s recent § 101 decisions that cite evidentiary support for factual findings that certain practices were long prevalent.
The situation became a bit strange in that examiners would commonly make an unsupported factual finding that a claim limitation was conventional for purposes of § 101 analysis, even though they would clearly recognize that it would be inappropriate to take official notice that the same claim limitation was known for purposes of a § 103 rejection. And the situation becomes stranger still when one considers jurisdictional effects: the MPEP (and MPEP § 2144.03 in particular), like all other agency staff manuals that state mandatory obligations of agency personnel, limits the authority that the Director delegates to examiners—when examiners act outside of agency guidance, their actions are “illegal,” “of no effect,” and not within the authority of 35 U.S.C. § 131. And that, in turn, affects the scope of judgment available to the PTAB—when an examiner acts outside the scope of his or her delegated authority, as a matter of procedure, the PTAB has no rejection before it, and can at most examine de novo to raise a “new ground of rejection.” The PTAB cannot “affirm” a non-existent rejection.
Given all of this, it seemed odd that the PTAB would affirm an examiner rejection based on a factual finding that was not supported by substantial evidence, and it is surprising that the approach in Poisson was not more widely followed.
It is great to see the PTAB increasingly appreciating its obligations under the APA. Regardless of the path taken, the PTO’s shift in approach to this issue seems very promising, and hopefully applicants will no longer have to address rejections in which claim limitations are dismissed as conventional for purposes of the § 101 analysis without any evidentiary support.
We are hopeful that this shift in approach is a harbinger of a larger trend towards emphasis on adherence to established administrative law principles, which in turn should improve predictability during the examination process. In this regard, we wanted to take this opportunity to highlight a couple of items that the PTO is most likely already well aware of, but that we think can help further this goal of predictability.
Agencies must review their guidance documents for “mandatory language such as ‘shall,’ ‘must,’ ‘required’ or ‘requirement’” and remove such language “unless the agency is using these words to describe a statutory or regulatory requirement, or the language is addressed to agency staff.” Guidance documents are not to be applied as “law” against applicants—the agency may not rely on guidance to “foreclose consideration by the agency of positions advanced by private parties,” but must consider alternatives.
Agencies are to train their employees in the above principles.
In his first ten days in office, President Trump reminded all agencies of their obligations under the Good Guidance Bulletin. These are simple requirements: some required by law, some required by concerns for predictability and efficiency. This might be a good opportunity for the PTO to implement the Bulletin. Implementation of the Bulletin is one of the easiest things the PTO could do to improve predictability and precision of agency proceedings.
Second, at the March 2018 Federal Circuit Judicial Conference, Judge Plager (the Federal Circuit’s administrative law expert) recommended that all members of the patent bar would do well to understand administrative law better, and that a really good starting point is a paper from ABA Landslide, The PTAB is Not an Article III Court, Part 1: A Primer in Federal Agency Rulemaking. If it’s a good read for the patent bar, it might be a good read for all adjudicatory staff at the PTO.
Third, there are most likely a large number of appeals sitting at the PTAB with an examiner § 101 rejection that lacks substantial evidence support. Perhaps the PTAB should institute a triage procedure for incoming appeals (and the entire docket up to cases that are up for imminent decision) to get untenable rejections off the PTAB’s backlog (and, incidentally, send a signal to examiners that the PTO will not allow incomplete work to clog the entire workflow pipeline)—any rejection where the examiner has a clear omission in the prima facie evidence or explanation should be remanded. The patent bar would likely be willing to help with this triage: one possible approach might be for the PTAB to invite appellants to file a paper requesting this triage for appeals where no “competent legal knowledge” balancing or deliberation is required, with the remedy being a simple remand under MPEP § 1211 with an instruction to the examiner to correct an omission of evidence or explanation (on § 101 or any other issue).
 Robert W. Bahr, Memorandum to Patent Examining Corps, Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.), (Apr. 19, 2018).
 USPTO, Subject Matter Eligibility: Well-Understood, Routine, Conventional Activity, (Apr 2018)).
 In re Intelligent Medical Objects, Inc., appeal no. 2018-1586, Order, document 28 (Fed. Cir. Jun. 27, 2018); In re Allscripts Software, LLC, appeal no. 2018-1451, Order, document 25 (Fed. Cir. Jun. 4, 2018). We suspect there are other similar Federal Circuit appeals—we are aware of at least one appeal where this issue was raised that is currently awaiting a decision (In re Villena, appeal no. 2017-2069).
 Patent and Trademark Office, 2014 Interim Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg. 74618, 74624 col. 1, lines 58-66 (Dec. 16, 2014).
 79 Fed. Reg. at 74624, col. 2, lines 19-38.
 See e.g, IEEE?USA, Comments on July 2015 Update on Subject Matter Eligibility, https://www.uspto.gov/sites/default/files/documents/2015ig_a_ieee_02nov2015.pdf (Oct. 30, 2015).
 Executive Office of the President, Final Bulletin for Agency Good Guidance Practices, OMB Bulletin 07-02, at § IV(1)(d), (Jan. 18, 2007), 72 Fed. Reg. 3432, 3440 (Jan. 25, 2007).
 Note the absence of any response to comment on the PTO’s web page—the comments are at https://www.uspto.gov/patent/laws-and-regulations/comments-public/comments-july-2015-update-subject-matter-eligibility and https://www.uspto.gov/patent/laws-and-regulations/comments-public/comments-2014-interim-guidance-patent-subject-matter. But there’s no response to comments.
 Ex parte Poisson, U.S. Pat. App. No. 12/427,040, appeal no. 2012-011084, slip op. at 5-6 (PTAB Feb. 27, 2015).
 Ex parte Frye, 94 USPQ2d 1072 (BPAI 2010) (on ex parte appeal, burden of proof lies with examiner).
 Alice Corp. Pty. Ltd. v CLS Bank Int’l¸ 134 S.Ct. 2347 (2014).
 Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); see Dickinson v. Zurko, 527 U.S. 150, 152 (1999); In re Gartside, 203 F.3d 1305, 1313 (Fed. Cir. 2000).
 Berkheimer v. HP Inc., 890 F.3d 1369 (Fed. Cir. 2018).
 Berkheimer II, 890 F.3d at 1370 (Moore, J. concurring).
 See Alice, 134 S.Ct. at 2355; Bilski v. Kappos, 130 S.Ct. 3218, 3231 (2010); see also Parker v. Flook, 437 U.S. 584, 588 (1978) (assuming, “since respondent does not challenge the examiner’s finding, that the formula is the only novel feature of respondent’s method.”).
 In re Ahlert, 424 F.2d 1088, 1094 (CCPA 1970); MPEP § 2144.03.
 In re Eynde, 480 F.2d 1364, 1370 (CCPA 1973).
 In re Zurko, 258 F.3d 1379, 1385 (Fed. Cir. 2001).
 Service v. Dulles, 354 U.S. 363, 387–88 (1957) (agency action without the procedures set forth in the agency’s unpublished manual was set aside); Vitarelli v. Seaton, 359 U.S. 535, 545 (1959) (agency action inconsistent with agency’s guidance was “illegal and of no effect”).
 Ex parte Bhogal, appeal no. 2016-008742, slip op. at 6 (PTAB Mar. 19, 2018).
 Bhogal, slip op. at 6, citing Berkheimer I, 881 F.3d at 1368).
 Bhogal, slip op. at 6.
 Ex parte Galloway, appeal no. 2017-004696, p. 6 (PTAB May 24, 2018).
 Good Guidance Bulletin (supra note 8), § IV(1)(d), and Preamble § A.
 In these two respects, the Good Guidance Bulletin is merely a restatement of the law arising under the APA, Housekeeping Act, etc.
 Good Guidance Bulletin (supra note 8), § II(1)(b).
 Good Guidance Bulletin (supra note 8), § III(1).
 Office of Management and Budget, Memorandum, Interim Guidance Implementing Section 2 of the Executive Order of January 30, 2017, Titled “Reducing Regulation and Controlling Regulatory Costs”, https://www.whitehouse.gov/sites/whitehouse.gov/files/briefing-room/presidential-actions/related-omb-material/eo_iterim_guidance_reducing_regulations_controlling_regulatory_costs.pdf (Feb. 2, 2017). (“Agencies should continue to adhere to OMB’s 2007 Memorandum on Good Guidance Practices.”). Another in the PTO’s chain of errors is the view that a Deputy Assistant Commissioner for Patent Examination Policy has the authority to tell the President to go take a hike. E.g., Application 10/113,841, Decision on Petition at 19-20 (Jul. 14, 2011).
 David Boundy, The PTAB is Not an Article III Court, Part 1: A Primer on Federal Agency Rule Making, ABA Landslide 10:2, pp. 9-13, 51-57 at 51-52 (Nov-Dec. 2017), available here. Another recent article, The PTAB is Not an Article III Court, Part 2, examines the relationship between the PTAB and the PTO’s regulations.
 E.g., Ex parte Braeken, 54 USPQ2d 1110, 1112 (BPAI 1999) (remanding when examiner failed to explain correspondence between claim and reference—though at the end of the long appeal backlog, rather than at the beginning).
 5 U.S.C. § 555(e) (all adverse agency decisions must include a “statement of grounds”); Tourus Records Inc. v. Drug Enforcement Admin., 259 F.3d 731, 736–37 (D.C. Cir. 2001) (the § 555 statement of grounds must fairly address the issue presented); Roelofs v. Secretary of the Air Force, 628 F.2d 594, 599 (D.C. Cir. 1980) (same); compare PPC Broadband, Inc. v. Iancu, Appeal 2017-1362 (Fed. Cir. Jul. 3, 2018) (remanding for a second time, after the PTAB failed to fill the gap in its explanation that led to the first remand).
David Boundy is a partner at Cambridge Technology Law. Mr. Boundy practices at the intersection of patent and administrative law, and consults with other firms on court and administrative agency proceedings, including PTAB trials and appeals. In 2007–09, Mr. Boundy led teams that successfully urged the Office of Management and Budget to withhold approval of the USPTO’s continuations, 5/25 claims, information disclosure statements, and appeal regulations under the Paperwork Reduction Act. In 2018, the Court of Appeals for the Federal Circuit asked Mr. Boundy to lead a panel of eminent academics and the President’s chief regulatory oversight officer in a program at the court’s Judicial Conference on administrative law issues. Judge Plager recommended Mr. Boundy’s papers published in ABA LANDSLIDE, The PTAB is Not an Article III Court, Part 1, to the patent bar.
For more information or to contact Mr. Boundy, please email him at DBoundy@CambridgeTechLaw.com.
Every patent attorney and agent needs to read this.
Also suggested: an allocating of a patent term adjustment equal to the time period the PTO improperly ate up, during an inappropriate 101 delaying of a patent application or patent.
Nice suggestion. I had a patent in the business methods area that had to win two lengthy appeals to finally be granted. There was a huge patent term adjustment awarded — which was worthless because there had been a terminal disclaimer required on this case years ago. Sigh.
If I r call correctly, terminal disclaimer is not effective to rescue patent term adjustment.
I would have to double check, but I believe this was revealed in a case from about three to four years ago.
The standard of proof in the PTO is preponderance of the evidence. The examiner and/or the Board, must support their factual findings by a preponderance.
Substantial evidence is a standard of review, not a standard of proof.
The PTAB reviews examiners’ findings of fact for a preponderance of the evidence. If the examiner’s finding is not supported by a preponderance of the evidence, they must reverse.
It would be real interesting to have the Office adhere to the rule of law (37 CFR 1.2) and put on the record of every case so affected the shadow communications that are evidenced in the behavior of APJ Astorino.
After all, it is clear that something was shared and that something IS affecting the business of these prosecution matters.
Sunlight (in such cases) would be the best antiseptic.
Re “B”, maybe Astorino was brought in-line to make sure the burden on examiners is low to nil. Also, if you search “Alice”, you can see recent PTAB decisions that don’t even cite Berkheimer.
Because the Examiner, therefore, has not shown by a preponderance of the evidence that the combination of features set forth in Appellants’ claims is merely a recitation of a natural phenomenon alongside nothing more than well-understood, routine, and conventional elements already engaged in by skilled artisans in the field, we must reverse the Examiner’s rejection.
For reason as to little hope, decision mailed July 9, 2018, Examiner affirmed on 101, no mention of Berkheimer. The claim is over two pages long, represented at pages 2, 3 and 4 of the nine page decision.
Here, the recited computer system and network for executing the mathematical formula is conventional as evidenced by Appellants’ Specification stating “[i]t will be apparent to one of ordinary skill in the art that other known electronic components may be added or substituted in the computer system 700” (emphasis added).
The claims are similar to the claims of Electric Power, because they do not require any nonconventional computer or network components, or even a “non-conventional and non-generic arrangement of known, conventional pieces.” See Elec. Power, 830 F.3d at 1355.
Great point; obviously, you are completely correct that the standard of proof in the PTO is preponderance of the evidence. We probably should have mentioned this standard of proof, and we appreciate your pointing this out.
This is an interesting issue in that, while PTO action does not really fit neatly into traditional legal boxes, the PTO can arguably be characterized as both a party with a burden of persuasion under a preponderance of the evidence standard of proof, and a trier of fact (and law). As the PTO is an administrative agency, its factual findings can be set aside under the APA if unsupported by substantial evidence, and PTO reliance as a trier of fact and law on factual findings that are unsupported by substantial evidence can be characterized as an abuse of discretion.
Because the PTO’s decision to move to vacate several PTAB decisions which were on appeal to the Fed. Cir. was our jumping off point, we framed our discussion around review of findings of fact made by the PTAB as a trier of fact, rather than on deficiencies in offerings of proof by the PTO as a party with a burden of persuasion. We think that many of the same points equally could have been made in this latter context, but we’re glad you brought this up, as we probably should have mentioned it in the article.
While standards of proof and standards of review generally aren’t comparable, it seems like under either standard, if the PTO’s portion of the evidence pile weighs zero, the applicant wins.
We would suggest that PTO reliance on a factual finding that is unsupported by substantial evidence can represent both a failure to meet the applicable burden of persuasion under a preponderance of the evidence standard, and an abuse of discretion by an administrative agency subject to review under the APA.
In referencing PTAB action, we intended to convey our surprise that some PTAB panels did not seem to consider whether factual findings they adopted could stand up to review under the APA.
Interestingly enough, I passingly reference Ex Parte Young in an article I’m trying to publish.
Check the last 20 s101 decisions as of last Sunday. 17 affirmations, 3 reversals including Young.
Anyway, I suspect APJ Astorino had his arse handed to him for employing common sense. He was certainly ahead of the CAFC by several years.
Anyway, most APJs limit their s101 analysis by citing misleading dicta from English, the holding of EPG v Alstom, and Ariosa.
Thanks! I blame my excellent coauthor for any brilliant insights, but am happy to take credit for any errors or oversights.
With respect to Ex parte Poisson, there is a story behind why it (and other decisions) stopped showing up on searches, but it’s not my story to tell. I believe that the attorney who has done a lot of great work investigating this issue is working on a write up which will probably be posted soonish.
Still waiting for In re Villena to publish. It’s six weeks overdue.
I suspect my attack on Ariosa has something to do about that. Anti-evidence Reyna screwed the pooch spewing that nonsense.
BTW, my first attempt to overturn the PTO’s abuse re evidence and the APA failed miserably in 2016 as you know.
Anyone else notice in subsequent actions post-Berkheimer memo some actions have completely dropped the “conventional” line?
I noticed this the other day. Rather than deal with providing evidence of conventionality (which, I will add is at a higher level than merely novelty of obviousness), the examiner elected to “hide the ball” and omit the phrase in an otherwise “cut and paste” second action.
Of course, I politely pointed out that merely omitting the use of the phrase does not relieve the examiner of providing the evidentiary basis. It will be interesting to see how the examiner reacts, given as I also pointed out (pre-emptively) that the examiner must answer the substance of all the arguments that I presented – including explicitly the argument that the examiner must still provide an evidentiary basis of conventionality even if he has deleted that one line from his rejection.
Thanks AAA JJ for pointing this out.
Our point is the great number of failsafes and warning signs the PTAB had to bypass to get to its view that a question of fact could be met when the examiner came forward with zero substantial evidence — a “preponderance” is still a preponderance of “substantial evidence,” and personal insight weighs nothing in that balance. So while we agree with you that a factual finding supported by some substantial evidence may still not be supported by a preponderance, and we agree that the PTAB’s decision-making must be based on de novo review to a preponderance, and we are not advocating that the PTAB reduce its standard of review to bare “substantial evidence,” on the sets of facts we were discussing here, “substantial evidence” was the easier explanation. Thanks for prompting the refinement.
One of the places the difference matters is in our suggestion for triage by remand. In the kind of ministerial review that’s appropriate for the remand we suggest, the PTAB can’t do a substantive “preponderance” weighing. But a procedural “quick look” review for some-vs-nothing “substantial evidence” could get the entirely meritless appeals off the PTAB’s backlog.
You don’t need evidence when Taranto has declared a whole genre of information-age claims patent ineligible under Electric Power Group v. Alstom and SAP America v. Investpic. His categorical rule is totally retarded.
Investpic is a case worth reading.
Electric Power Group was distinguished in a subsequent case. The Office “boilerplate” version of that case needs to be fought at every opportunity.
In other words, according to Taranto – keep it secret, don’t share, don’t benefit the public with your knowledge. If you are big (SV big) and can get “employees” to sign illegal NDAs, you win. That’s the world Taranto wants and is building from the bench.


The Court of Appeals today posted six certiorari grants, including in the high-profile State v. Adnan Syed appeal. The grants, with questions presented and links to the Court of Special Appeals decisions under review, follow the jump.
Issues – Family Law – 1) Does the juvenile court lose continuing jurisdiction over custody/guardianship actions simply because the child has turned twenty-one years of age? 2) If the juvenile court loses jurisdiction over custody/guardianship actions because the child has turned twenty-one years of age, may a court of equity assume jurisdiction to issue a nunc pro tunc order of custody/guardianship along with Special Immigrant Juvenile Status findings based on the pleadings and the evidence presented at a hearing that occurred prior to the child turning twenty-one years of age?
Issue – Transportation Law – Where the administrative law judge found that a motorist, after being properly advised via the DR-15 Advice of Rights form, expressly refused to take a blood-alcohol concentration test, was the motorist correctly suspended for a test refusal under Transportation Article § 16-205.1, even though the detaining officer did not deviate from the Advice of Rights form and explicitly offer the motorist the option of choosing between a breathalyzer test and a blood test?
Issues – Family Law – 1) Did CSA err in finding no error and upholding the trial court’s denial of Special Immigrant Juvenile (“SIJ”) status, even though the trial court stated that it was applying the incorrect “clear and convincing evidence” standard of proof regarding a neglect finding in an SIJ case? 2) Did CSA err in finding that the trial court had committed no error in its findings that there was insufficient evidence to prove neglect, and therefore no neglect under the law, in the context of an SIJ case?
Issues – Real Property – 1) Can a single sentence in a form residential lease grant a landlord an extra 9 years to bring a claim against a tenant? 2) Does Md. Code Ann., Real Prop. (“RP”) § 8-208(d)(2) prohibit the extension of the statute of limitations to 12 years in a residential lease? 3) Even if RP § 8-208 does permit an extension of the statute of limitations, must the extension be reasonable? 4) If a reasonable extension is permitted, is it reasonable to extend the statute of limitations in a month-to-month residential lease from 3 years to 12 years?
Issues – Criminal Law – 1) Where the only disputed issue at trial was identity, and the only evidence of identity was the victim’s identification of Petitioner, did CSA misapply the harmless error test in holding that an erroneously-given scientific evidence or “anti-CSI effect” jury instruction was harmless beyond a reasonable doubt because the testimony of the victim is legally sufficient to sustain the convictions? 2) Did CSA err in holding that the sentencing court properly considered criminal charges not resulting in conviction and 11 juvenile contacts not resulting in adjudication in sentencing Petitioner to thirty years executed time, even though the sentencing guidelines called for a sentence between one and five years, where the State presented no evidence regarding any of the criminal charges or juvenile contacts? 3) Did the trial court’s emphasis on the importance of rendering a verdict, and failure to directly answer the deadlocked jury’s question as to whether a hung jury is a legitimate outcome, sufficiently coerce a verdict as to constitute plain error? 4) When he “excepted” to the scientific evidence instruction, but did not state any particular grounds for the objection, did Petitioner fail to preserve for appellate review the question of the claimed error of the trial court’s instruction? 5) If preserved, should review in this belated appeal of the claimed error of the trial court’s scientific evidence instruction be based on law existing at the time of the trial in 2008 and not based on this Court’s decisions in Atkins v. State, 421 Md. 434 (2011) and Stabb v. State, 423 Md. 454 (2011)? And if so, did the trial court act within its discretion when it gave the scientific evidence instruction when the instruction was proper under then existing law, i.e., Evans v. State, 174 Md.App. 549 (2007)? 6) Does this Court have jurisdiction to hear this belated appeal?


text:
The 16th Civil Division of the Higher Regional Court of Freiburg, as Appellate Court, adjudged the case of Plaintiff-Appellant [Buyer] of Germany against Defendant-Appellee [Seller] of the Netherlands in a lawsuit involving 4,189.32 Euros.
Justification pursuant to � 540(1) ZPO [ZPO = German Civil Procedure Order].
I. [Seller] requests from [Buyer] payment of the remainder of the purchase price due under a sales contract for strawberry plants which [Buyer], domiciled in Germany, ordered orally from [Seller] in the Netherlands. Also at issue is whether [Buyer] is obliged to pay the 6 % Dutch sales tax as well as the cost of collection and pre-procedural attorneys' fees.
- The payment of the remaining 75 % of 39,716.22 Euros was requested with the second account two weeks before the delivery, which was carried out in May 2004.
Altogether, [Seller] requested 52,954.95 Euros including a 6 % Dutch sales tax. [Buyer] made two partial payments of a total of 49,687.50 Euros, refusing to pay the outstanding Dutch sales tax on this cross-border transaction.
This is an action by [Seller] to obtain payment of the remainder, in particular, the outstanding sales tax amount (3,267.45 Euros) as well as pre-procedural costs alleged by [Seller], such as collection and attorneys' fees.
[Buyer] declined to pay the sales tax, referring to the fact that hitherto, it did not receive an account on the modified scope of delivery, which it requires as proof of this transaction for the tax office. Thus, it desires, by way of counterclaim, the issuance of a correct account, an account that complies with the modified delivery volume as well as restitution of accrued attorneys' fees.
For additional facts, reference is directed to the conclusions in the appealed decision.
The Lower Court only allowed the action in regard to 270 Euros, and for the rest dismissed the action as far as the recovery of the sales tax that was sought, because it would have been the matter of an intra-community delivery, which is exempted from sales tax, and because other claims of [Seller] could not be justified. [Buyer]'s claim for accounts to which it was entitled to was supported.
Against this decision, to which reference is directed for the further details of the status of the facts and the dispute, [Seller] appeals. [Seller] alleges that, according to Dutch law, the sales tax would first have to be paid. [Seller] presented the relevant provisions. No special arrangements were made between the parties regarding the tax (- exemption). For the rest of its case, [Seller] repeats its submission before the Court of First Instance.
In its appeal, [Seller] applies for amendment of the First Instance Decision to require [Buyer] to pay to [Seller] an overall sum of 3,267.45 Euros together with interest at 7 percentage points above the base rate since 19 February 2004, as well as 111.87 Euros extra-judicial costs and 780.- Euros collection costs; [Seller] also applies for dismissal of the [Buyer]'s claim in its entirety.
[Buyer], in turn, applies for dismissal of the [Seller]'s appeal. [Buyer] alleges that during the transaction, which was negotiated primarily with Witness B, if requested [Buyer] would have left its German tax number (DE-No.) of the German tax office with him, in order to achieve an exemption from sales taxation.
II. [Seller]'s appeal is permissible, timely and filed in due form, and [Seller]'s appeal is for the most part successful. [Seller] is entitled to payment of the Dutch sales tax in the amount of 6%, however, this is only unconditional with respect to the amount of 2,097.45 Euros; for the rest, the maturity of [Seller]'s claim (delivery of 100,000 strawberry plants instead of 150,000 plants) depends on the issuing of accounts on [Seller]'s part, so that the claim in the amount of 1,170.- Euros is to be performed only on counter-performance of a correct account.
By presenting an up-to-date excerpt from the Dutch commercial register ("Kamer van Koophandel"), [Seller] proved that it is a company according to Dutch Law domiciled in the Netherlands and, therefore has legal capacity and capacity to sue and to be sued.
In addition to the monetary claim of 270 Euros, about which the Lower Court already validly adjudicated, [Seller] is entitled to another monetary claim against [Buyer] in the amount of 2,997.45 Euros on the basis of the sales contract, Art. 62 CISG. This concerns the Dutch sales tax which accrues for the delivery of the plants as well as for the examination costs.
The Lower Court rightly acted in accordance with the parties on the assumption that the contract as a sale of goods between contractual partners domiciled in different Contracting States, is subject to the provisions of the CISG (Art. 1(1), Art. 2); the applicability of which was not excluded. The interpretation of the contractual statements, which has to be carried out according to the provisions of the CISG (Art. 8 CISG), leads to the conclusion that [Buyer] is obliged to pay the Dutch sales tax if not all requisites for a tax exemption are existent, which is not the case here.
This transaction commenced with a telephone order placed by [Buyer] around the end of 2003. According to [Seller]'s uncontested testimony, the parties did not at that time expressly discuss whether [Buyer] - who is domiciled in Germany -- should pay the sales tax. Indeed, [Buyer] argues, had the subject been discussed, the parties would have agreed - in communications with Mr. B -- that the sales tax is not to be paid and that [Buyer] would therefore provide [Seller] with its tax number, and [Buyer]would have provided this. [Seller], however, uncontestedly claimed that Mr. B was neither its employee nor its representative; it was also not authorized to accept statements. Therefore, [Seller] alleges that possible agreements between Mr. B and [Buyer] have no legal effect on [Seller]. Finally, [Buyer]'s submission remains unsubstantiated and controversial. [Seller] showed the amounts in gross, including sales tax, in its accounts of 18 January 2004, which [Buyer] had wanted to receive on 4 January 2004; furthermore, on 25 February 2004, [Seller] confirmed the order and expressly alluded to the fact that [Buyer] has to pay the BTW (= value added tax), which can be refunded afterwards from the Dutch authorities. If these writings do not already include an acceptance of [Buyer]'s oral offer, then they constitute a written order confirmation at any rate, to which [Buyer] did not object. Facing these unequivocal writings as regards contents, by [Seller], then [Buyer]'s submission to the -- dissenting -- contents of the contract negotiations is not concrete enough, because [Buyer] does not comment on the writing of 25 February 2004, nor did [Buyer] explain the inconsistencies between its behavior in the past - it did not contradict either the account issued or the further writing of [Seller] -- and [Seller]'s present submission. No supplement to this submission was provided.
Therefore, the acceptance of the contract on the part of [Seller] as a result of the telephone order was either effected expressly with the proviso that [Buyer] pays the BTW with the possibility of a subsequent refunding, or the contract is to be interpreted -- in the absence of such an agreement - so that the established obligations of the parties should stand in line with the Dutch tax law. Based on this interpretation, it can be assumed that the parties wanted to adhere to the existing Dutch laws.
[Seller] referred to the, in this case authoritative, legal situation under fiscal law according to Dutch law. [Buyer] did not counter this. The Dutch tax law provides, in consideration of EC-Directive 77/388 of 17 May 1977 -- Harmonisation of the Laws of the Member States Relating to Turnover Taxes (Gazette No. L 145 of 13 June 1977 with several later modifications, inter alia, through Council Directive 2003/92 of 7 October 2003), for a tax exemption if the recipient is a business person that was identified in another EC-State and the goods were shipped in line with the delivery into the area of another EC-State (cf. thereto Communication No. 38 of the excise taxes office as well as the information brochure of the Dutch tax authorities, page 168 et.seq.). The last condition, the proof of which is problematic in the present case, must be -- apart from the sales tax identification number of the recipient, which is to be noted on the account -- proved by the Dutch business person through different documents, such as the waybill and inter alia entries in its books, when it initiates the shipment of the goods abroad. If, as in the present case, it is a matter of a collection transaction ("Abholgeschäft"), whereby it is unimportant whether the buyer itself or a carrier ordered by it collects the goods, the Dutch tax law demands for a "permanent recipient" on behalf of the distributor, as a result of an existing business connection as well as a documentation on the export through a formalized declaration of the recipient, which must contain details of the carriage of the goods as another condition for a tax exemption. The Dutch law provides a model form for this declaration.
The provision of the German tax number alone, which is alleged by [Buyer], accordingly, is not sufficient to prove the export was actually carried out. In particular, the necessary formalized declaration of the recipient of the carriage of the goods to Germany is lacking. Therefore, this transaction cannot be treated as sales-tax-exempted. [Buyer] still has the possibility to apply to the Dutch authorities for the refund of the Dutch sales tax.
Consequently, [Seller] can demand payment for the sales tax in the amount of 2,997.45 Euros, which calculates at 1,800 Euros for the delivery of 100,000 cold frame plants; in the amount of 1,170 Euros for the modified purchase of 100,000 strawberry plants, and in the amount 27.45 Euros for examination costs in connection with this delivery.
But the claim for the amount of 1,170 Euros (100,000 strawberry plants) is not yet due as [Seller] has not yet provided a correct account for this delivery. Pursuant to Art. 58 CISG, the maturity of the claim has to conform to the contractual agreement, which in this case calls for payment in two steps (25 % at conclusion of the contract, 75 % two weeks before the first delivery; similarly, in the writing of 25 February 2004 and in the accounts of January 2004). This agreement is henceforth to be interpreted according to the contract modification, that an additional condition for the maturity of the modified order sum is an orderly issue of account. Such an interpretation complies with [Seller]'s procedure; [Seller] issued accounts on the whole originally intended transaction directly after the contract conclusion still in January 2004 and called on [Buyer] to pay on the basis of these accounts. After the modification of the extent of the transaction, according to this, again, in order to establish the payment obligation, a modified issuing of accounts is necessary. This is called for, as [Buyer] as the recipient of a delivery from the EC-area, is hence reliant on an account which contains the correct scope of delivery, in order to provide to the tax authorities evidence of the actual receipt of these goods.
Until now, [Seller] has not satisfied this obligation. Indeed, the accounts of January 2004 show the correct total sum, but do not reflect the scope of delivery correctly. The account of "29 August 2005" presented in the First Instance, does not comply with this, as it does not show the modified delivery of plants. In the Second Instance, [Seller] presented an account which also did not resolve the overall scope of delivery.
[Seller]'s written submission of 29 March 2006 was after the conclusion of the oral hearing and could no longer be considered, � 296a ZPO.
The Lower Court rightly denied [Seller]'s claim for collection costs, as [Seller] did not demonstrate the requisites conclusively. Indeed, in Art. 74, the CISG provides a basis for a claim. The entitlement to the claim is to be measured on the basis of the provisions of the CISG and not of the Dutch Law of Obligations, as [Seller] alleges. And Art. 74 CISG imposes strict standards as to the necessity of retaining of a collection agency in order to minimize losses (comp. Schlechtriem/Stoll, CISG, 3rd ed., Art. 74, Rn. 19). Whether these standards have been satisfied can be left unanswered because [Seller] did not adequately demonstrate how the collection costs were calculated, nor if and when they were charged. Moreover, the collection rates presented cannot be brought in line with the figures [Seller] claims. The question of whether the original reference by the Lower Court was sufficient, can be left open. In the Second Instance, the [Seller] also did not present any other facts to found this claim, notwithstanding the denial of the claim by the Court of First Instance.
The restitution of pre-procedural attorneys' fees within the scope of Art. 74 CISG fails because it is no longer a matter of factually necessary costs of legal prosecution (comp. Schlechtriem/Stoll, l.c., Art. 74, Rn. 19). The assignment of the lawyer occured after the employment of the collection agency. At this time, [Seller] could no longer count on further payments by [Buyer] without judicial help, who since that time settled the deliveries except for the sales tax and a small remainder.
The claim for interest is based upon Art. 78 CISG as far as the monetary claim is mature. According to this provision, a reminder is not required. Interest is to be paid from the maturity of the indebtedness, i.e., for the unmodified part of the contract, two weeks before the first delivery, therefore from 27 April 2004.
Regarding the rate of interest, Dutch law, as the law of the characteristic performance, is to be applied, as the CISG does not contain provisions (Schlechtriem, l.c., Art. 78, Rn. 27 et seq.). According to Art. 120 of the "New Dutch Civil Code", Book 6, the legal interest rate is 7 percentage points above the base rate on 26 April 2004.
2. The [Buyer]'s counterclaim is justified, as far as it was not already adjudicated on. [Buyer] can request the issue of an account which complies with the modified scope of delivery on the delivery of 100,000 strawberry plants, type "Frigo 15-22", to the delivery date of May 2004. Hereunto, reference is drawn to the considerations regarding the maturity of the monetary claim in the amount of 1,170.- Euros (above under 1.a.).
Against [Seller]'s claim in this amount, [Buyer] can hold its counterclaim claim on issuing an account to which it is entitled, so that insofar [Buyer]'s performance is subject to counter-performance by [Seller].
The order as to costs is based on �� 92, 97 ZPO, the one as to the provisional enforceability is based on �� 708 No. 10, 713 ZPO.
The amount in dispute in regard to the appellate proceedings is 4,189.32 Euros (action: 3,889.32 Euros + counterclaim 300.- Euros).
There is no reason to allow a further appeal (� 543(1) No. 1, (2) ZPO). The legal matter has neither fundamental importance nor do interests of the development of the law or of the protection of a uniform adjudication require a decision of the Federal Court of Justice.
* All translations should be verified by cross-checking against the original text. For purposes of this translation, the Plaintiff of the Netherlands is referred to as [Seller] and the Defendant of Germany is referred to as [Buyer].
*** Camilla Baasch Andersen, Lecturer in International Commercial Law, University of Leicester, Fellow of the Institute of Commercial Law, Pace, visiting lecturer at University of London.

matches:
Art. 62
Art. 2
Art. 58
Art. 74
Art. 74
Art. 74
Art. 74
Art. 74
Art. 78
Art. 78
Art. 120


§ 131. General duty of the proprietor.
SINCE the law of nations treats as well of the duties of states as of their rights, it is not sufficient that we have explained, on the subject of innocent use, what all nations have a right to require from the proprietor: we are now to consider what influence his duties to others ought to have on their proprietor’s conduct. As it belongs to him to judge whether the use be really innocent, and not productive of any detriment or inconvenience to himself, he ought not to give a refusal unless it be grounded upon real and substantial reasons: this is a maxim of equity; he ought not even to stop at trifles,  a slight loss, or any little inconvenience: humanity forbids this; and the mutual love which men owe to each other, requires greater sacrifices. It would certainly be too great a deviation from that universal benevolence which ought to unite the human race, to refuse a considerable advantage to an individual, or to a whole nation, whenever the grant of it might happen to be productive of the most trifling loss or the slightest inconvenience to ourselves. In this respect, therefore, a nation ought on all occasions to regulate her conduct by reasons proportioned to the advantages and necessities of others, and to reckon as nothing a small expense or a supportable inconvenience, when great good will thence result to another nation. But she is under no obligation to incur heavy expenses or embarrassments, for the sake of furnishing others with the use of any thing, when such use is neither necessary nor of any great utility to them. The sacrifice we here require is not contrary to the interests of the nation:  it is natural to think that the others will behave in the same manner in return; and how great the advantages that will result to all states from such a line of conduct!
§ 133. Sureties may be required.
But, if any apprehension of danger arise from the grant of liberty to pass through a country, the state has a right to require sureties: the party who wishes to pass cannot refuse them, a passage being only so far due to him as it is attended with no inconvenience.
In like manner, a passage ought also to be granted for merchandise: and, as this is in general productive of no inconvenience, to refuse it without just reason is injuring a nation, and endeavoring to deprive her of the means of carrying on a trade with other states. If this passage occasions any inconvenience, any expense for the preservation of canals and highways, we may exact a compensation for it by toll duties (Book I. § 303).
§ 135. Residence in the country.
In explaining the effects of domain we have said above (§§ 64 and 100) that the owner of the territory may forbid the entrance into it, or permit it on such conditions as he thinks proper. We were then treating of his external right,  that right which foreigners are bound to respect. But now that we are considering the matter in another view, and as it relates to his duties and to his internal right, we may venture to assert that he cannot, without particular and important reasons, refuse permission, either to pass through or reside in the country, to foreigners who desire it for lawful purposes. For, their passage or their residence being in this case an innocent advantage, the law of nature does not give him a right to refuse it: and, though other nations and other men in general are obliged to submit to his judgment (§§ 128 and 130), he does not the less offend against his duty, if he refuses without sufficient reason: he then acts without any true right; he only abuses his external right. He cannot, therefore without some particular and cogent reason. refuse the liberty of residence to a foreigner who comes into the country with the hope of recovering his health, or for the sake of acquiring instruction in the schools and academies. A difference in religion is not a sufficient reason to exclude him, provided he do not engage in controversial disputes with a view to disseminate his tenets; for, that difference does not deprive him of the rights of humanity.
§ 136. How we are to act towards foreigners who desire a perpetual residence.
We have seen (§ 125) how the right of necessity may in certain cases authorize a people, who are driven from the place of their residence, to settle in the territory of another nation. Every state ought, doubtless, to grant to so unfortunate a people every aid and assistance which she can bestow without being wanting to herself: but to grant them an establishment in the territories of the nation, is a very delicate step, the consequences of which should be maturely considered by the conductor of the state. The emperors Probus and Valens experienced the evil effects of their conduct in having admitted into the territories of the empire numerous bands of Gepidæ, Vandals, Goths, and other barbarians.4 If the sovereign finds that such a step would be attended with too great an inconvenience or danger, he has a right to refuse an establishment to those fugitive people, or to adopt, on their admission, every precaution that prudence can dictate to him. One of the safest will be, not to permit those foreigners to reside together in the same part of the country, there to keep up the form of a separate nation. Men who have not been able to defend their own country, cannot pretend to any right to establish themselves in the territory of another, in order to maintain themselves there as a nation in a body.5 The sovereign who harbors them may therefore disperse them, and distribute them into the towns and provinces that are in want of inhabitants. In this manner his charity will turn to his own advantage, to the increase of his power, and to the greater benefit of the state. What a difference is observable in Brandenburg since the settlement of the French refugees! The great elector, Frederic William, offered an asylum to those unfortunate people; he provided for their expenses on the road, and with truly regal munificence established them in his states; by which conduct that beneficent and generous prince merited the title of a wise and able politician.
§ 137. Right accruing from a general permission.
When, by the laws or the custom of a state, certain actions are generally permitted to foreigners, as, for instance, traveling freely through the country without any express permission, marrying there, buying or selling merchandise, hunting, fishing, etc., we cannot exclude any one nation from the benefit of the general permission without doing her an injury, unless there be some particular and lawful reason for refusing to that nation what is granted indiscriminately to others. The question here, it is to be observed, only relates to those actions which are productive of innocent advantage: and, as the nation allows them to foreigners without distinction, she, by the very nature of that general permission, affords sufficient proof that she deems them innocent with respect to herself; which amounts to a declaration that foreigners have a right to them (§ 127): the innocence of such acts is manifested by the confession of the state; and the refusal of an advantage that is manifestly innocent, is an injury (§ 129). Besides, to attempt without any reason to lay one nation under a prohibition where an indiscriminate permission is enjoyed by all others, is an injurious distinction, since it can only proceed from hatred or contempt. If there by any particular and well-founded reason for the exception, the advantage resulting from the act in question can no longer be deemed an innocent one with respect to the excepted nation; consequently no injury is done to them. The state may also by way of punishment, except from the general permission a people who have given her just cause of complaint.
§ 138. A right granted as a favor.
As to rights of this nature granted to one or more nations for particular reasons, they are conferred on them as favors, either by treaty, or through gratitude for some particular service: those to whom the same rights are refused cannot consider themselves as offended. The nation does not esteem the advantage accruing from those acts to be an innocent one, since she does not indiscriminately allow them to all nations: and she may confer on whom she pleases any rights over her own property, without affording just grounds to anybody else, either for uttering a complaint, or forming pretensions to the same favor.
§ 139. The nation ought to be courteous.
Humanity is not confined to the bare grant of a permission to foreign nations to make an innocent use of what belongs to us: it moreover requires that we should even facilitate to them the means of deriving advantage from it, so far as we can do this without injury to ourselves. Thus, it becomes a well-regulated state to promote the general establishment of inns where travelers may procure lodging and food at a fair price,  to watch over their safety,  and to see that they be treated with equity and humanity. A polite nation should give the kindest reception to foreigners, receive them with politeness, and on every occasion show a disposition to oblige them. by these means every citizen, while he discharges his duty to mankind in general, will at the same time render essential services to his country. Glory is the certain reward of virtue; and the good-will which is gained by an amiable character, is often productive of consequences highly important to the state. No nation is entitled to greater praise in this respect than the French: foreigners nowhere meet a reception more agreeable, or better calculated to prevent their regretting the immense sums they annually spend at Paris.
1. See, in general, 1 Chitty’s Com. Law, 84, 88.
2. Stettler, vol. i. p. 114. Tschudi, vol ii. pp. 27, 28.
3. Pufendorf, b. 3, ch. 3, s. 6. p. 29.
4. Vopiscus, Prob. c. sviii.  Ammian. Marcell. lib. xxxi.  Socrat. Hist. Eccles. lib. iv. c. 28.
5. Cæsar replied to the Tenchtheri and Usipetes, who wanted to retain possession of the territories they had seized, that it was not just for them to invade the territories of others, since they had not been able to defend their own.  Neque verum esse, qui suos fines tueri non potuerint, alienos occupare. De Bello Gallico, lib. iv, cap. vi.