Queen's – A divided panel grants a petition for mandamus as to the production of communications with a Queen's patent agent, establishing for the first time a patent agent privilege. The majority relies heavily on Congress's recognition of patent agents' ability to practice before the USPTO and the Supreme Court's 1963 Sperry case, which held that patent agents, prosecuting patents before the USPTO, were in fact engaged in the practice of law. This distinguishes the patent agent from accountants and other non-attorney professionals that have in the past claimed a privilege.
The majority thus rules that, to the extent Congress has authorized patent agents to engage in the practice of law before the Patent Office, a patent-agent privilege must be recognized. A client has a reasonable expectation that all communications relating to obtaining legal advice on patentability and legal services in preparing a patent application will be kept privileged. Communications that are not reasonably necessary and incident to the prosecution of patents before the Patent Office fall outside the scope of the patent-agent privilege. For instance, communications with a patent agent who is offering an opinion on the validity of another party's patent in contemplation of litigation or for the sale or purchase of a patent, or on infringement, are not reasonably necessary and incident to the preparation and prosecution of patent applications or other proceeding before the Office.
Varma – The panel reverses the construction of two phrases that formed the bases of rejection of claims being reexamined in a patent directed to systems for performing statistical analyses of investment data. Multiple reexaminations were successfully filed by IBM and SAS after they were sued by InvestPic, but on appeal the panel disagrees with the Board's construction of two critical limitations in the claims.
First, the panel rules that the claim language explicitly demonstrates that the phrase "bias parameter" (that determines the degree of randomness in a sample) was improperly interpreted by the Board. As to the second phrase at issue, "a statistical analysis request corresponding to two or more selected investments," the panel concludes that two different but related interpretations implicitly relied on by the Board were both unreasonable. In interpreting the second phrase, the panel notes that "comprising" means that the claim can be met by a system that contains features over and above those specifically required by the claim element. But this is only true if the system still satisfies the specific claim-element requirements: the claim does not cover systems whose unclaimed features make the claim elements no longer satisfied.
The panel reverses the cancellation of the claims based on construction of the first phrase but concerning the Board error as to the second phrase, the cancellation of claims is vacated and the case is remanded to compare the properly interpreted claims to the prior art.
Smith – The Circuit holds that claims directed to a new method of playing blackjack, but still using a conventional deck, are directed to patent ineligible subject matter under Mayo and Alice. To determine whether an invention claims ineligible subject matter, the panel applies the two-step test: first, it is determined if the claims at issue are directed to a patent-ineligible concept; second, the elements of the claim are examined to determine if it contains an inventive concept sufficient to "transform" the claimed abstract idea into a patent-eligible application.
As to the first step, the panel concludes that Applicants' claims, directed to rules for conducting a wagering game, compare to other fundamental economic practices found abstract by the Supreme Court in, for example, Alice'smethod of exchanging financial obligations and Bilski'smethod of hedging risk. As to the second step, the panel holds that appending purely conventional steps to an abstract idea does not supply a sufficiently inventive concept. The claims here require shuffling and dealing physical playing cards. But the panel rules that, just as the recitation of computer implementation fell short in Alice, shuffling and dealing a standard deck of cards are "purely conventional" activities.
Queen's University is engaged in a patent infringement action against Samsung Electronics. Queen's seeks a writ of mandamus directing the Eastern District of Texas to withdraw its order compelling the production of Queen's communications with its patent agents on grounds that the communications are privileged. We grant the petition.
Queen's produced privilege logs identifying documents that were withheld based on its assertion of a privilege relating to communications with its patent agents. Samsung moved to compel production of such documents discussing the prosecution of the patents-in-suit. The magistrate granted Samsung's motion, finding that the communications are not subject to the attorney-client privilege and that a separate patent-agent privilege does not exist. The court overruled Queen's objections to the order but declined to certify the issue for interlocutory appeal. However, the district court stayed production pending mandamus.
After first ruling that Federal Circuit law applies because the Circuit applies its own law for questions impacting substantive patent questions, the panel turned to the issue of whether mandamus is appropriate. The majority concluded it is because "(1) there is raised an important issue of first impression, (2) the privilege would be lost if review were denied until final judgment, and (3) immediate resolution would avoid the development of doctrine that would undermine the privilege."
In supplemental briefing, Samsung informed the Circuit that it had filed a request for IPR, that the PTO had instituted those IPRs, and that the district court had thus stayed the proceedings. The majority rejected Samsung's argument that this makes a difference in the present mandamus action.
In federal district courts, the scope of discovery is governed by new Rule 26(b)(1) Fed. R. Civ. P, which provides in relevant part: "Parties may obtain discovery regarding any nonprivileged matter that is relevant to any party's claim or defense and proportional to the needs of the case . . . . Information within this scope of discovery need not be admissible in evidence to be discoverable." Thus, while the scope of permissible discovery is broad, it only encompasses documents relating to "nonprivileged matters."
Rule 501 of the Federal Rules of Evidence states that common law, as interpreted by U.S. courts in the light of reason and experience, governs a claim of privilege. We thus turn to "reason and experience" in order to determine whether a patent-agent privilege is now appropriate. We do so with caution, however, recognizing that there is a presumption against the recognition of new privileges. Federal courts must be cognizant of the age old principle that "the public . . . has a right to every man's evidence." Indeed, the Supreme Court has warned that evidentiary privileges "are not lightly created nor expansively construed, for they are in derogation of the search for truth." United States v. Nixon, 418 U.S. 683 (1974).
It is well established that an attorney-client privilege exists to encourage full and frank communication between counselor and client and thereby promote broader public interests in the observance of law and administration of justice. It is true that courts have consistently refused to recognize as privileged communications with other non-attorney-client advocates, such as accountants. The same is true for jailhouse lawyers. Samsung concedes that, where a patent agent communicates with counsel or receives communications between his client and counsel, the attorney-client privilege may protect those communications from discovery. It contends, however, that, where counsel is not involved in the communications—as Queen's concedes is the case here—we should neither expand the scope of the attorney-client privilege nor recognize an independent patent agent privilege to protect such communications from discovery. For the reasons we explain, we find that the unique roles of patent agents, the congressional recognition of their authority to act, the Supreme Court's characterization of their activities as the practice of law, and the current realities of patent litigation counsel in favor of recognizing an independent patent-agent privilege.
In Sperry v. State of Florida ex rel. Florida Bar, 373 U.S. 379 (1963), the Supreme Court was faced with a challenge to the State of Florida's attempt to regulate the activities of patent agents on grounds that those activities constitute the practice of law. The Supreme Court addressed the challenge in two stages: first, determining whether the activities of patent agents before the Patent Office constitute the practice of law, and, second, determining whether, if so, the State of Florida had the authority to regulate those activities. The Supreme Court answered the first question in the affirmative and the second in the negative.
The Supreme Court found that "the preparation and prosecution of patent applications for others constitutes the practice of law." Id. Sperry, thus, confirms that patent agents are not simply engaging in law-like activity; they are engaging in the practice of law. To the extent that the attorney-client privilege is justified based on the need for candor between a client and his or her legal professional in relation to the prosecution of a patent, that justification would seem to apply with equal force to patent agents.
While this holding in Sperry is important, it is the rest of the Sperry opinion we find most informative. It is not the fact that—within the limited authority granted to them by the Patent Office—patent agents engage in the traditional practice of law that is the most meaningful takeaway from Sperry; it is the Supreme Court's explanation of why states may not regulate that practice of law that lends most support to the recognition of a patent-agent privilege. In holding that the State of Florida had no authority to regulate the admitted practice of law by patent agents, the Supreme Court emphasized that it is Congress who has authorized and continues to permit the practice of law by patent agents when appearing before the Patent Office.
In explaining its holding, the Supreme Court discussed the history of the Patent Office's power to regulate patent agents. Looking to legislative history, the Court traced the discussion of patent agents by Congress "back to 1861, when Congress first provided that 'for gross misconduct' the Commissioner of Patents may refuse to recognize any person as a patent agent, either generally or in any particular case . . . ." The 1869 Rules and Directions issued by the Commissioner provided that any person of intelligence and good moral character may appear as the attorney in fact or agent of an applicant upon filing proper power of attorney. From the outset, a substantial number of those appearing in this capacity were engineers or chemists familiar with the technical subjects to which the patent application related. Many of them were not members of the bar. It probably never occurred to anybody that they should be. In 1899, because nonattorney agents were found "particularly responsible for the deceptive advertising and victimization of inventors" at the Patent Office, the Commissioner first required the registration of those who practiced before the Office. Then, "in 1922, the patent statute was amended to expressly authorize the Commissioner to prescribe regulations for the recognition of agents and attorneys, to provide for the creation of a patent bar, and to require a higher standard of qualifications for registry.
Samsung does not challenge the proposition that the prosecution of patents before the Patent Office constitutes the practice of law or that non-lawyer patent agents are allowed to engage in such practice under federal law. Nor can it, given the Supreme Court's clear language in Sperry. In Sperry, the Court found that the rights conferred to patent agents are federal rights and that Congress expressly permitted the Commissioner to promulgate regulations that allow patent agents to practice before the Patent Office in the 1952 Patent Act. Ultimately, Congress endorsed a system in which patent applicants can choose between patent agents and patent attorneys when prosecuting patents before the Patent Office. Based on this, the Court found that Florida could neither prohibit nor regulate that which federal law allowed.
Today, "the Office—may establish regulations, not inconsistent with law, which—may govern the recognition and conduct of agents, attorneys, or other persons representing applicants or other parties before the Office." 35 U.S.C. § 2(b)(2)(D). Pursuant to these powers, the Office has determined that "any citizen of the United States who is not an attorney, and who fulfills the requirements of this part may be registered as a patent agent to practice before the Office." 37 C.F.R. § 11.6(b).
To the extent Congress has authorized non-attorney patent agents to engage in the practice of law before the Patent Office, reason and experience compel us to recognize a patent-agent privilege that is coextensive with the rights granted to patent agents by Congress. A client has a reasonable expectation that all communications relating to "obtaining legal advice on patentability and legal services in preparing a patent application" will be kept privileged. Whether those communications are directed to an attorney or his or her legally equivalent patent agent should be of no moment. Indeed, if we hold otherwise, we frustrate the very purpose of Congress's design: namely, to afford clients the freedom to choose between an attorney and a patent agent for representation before the Patent Office.
Practice before the Office in patent matters includes, but is not limited to, preparing and prosecuting any patent application, consulting with or giving advice to a client in contemplation of filing a patent application or other document with the Office, drafting the specification or claims of a patent application; drafting an amendment or reply to a communication from the Office that may require written argument to establish the patentability of a claimed invention; drafting a reply to a communication from the Office regarding a patent application; and drafting a communication for a public use, interference, reexamination proceeding, petition, appeal to or any other proceeding before the Patent Trial and Appeal Board, or other proceeding.
Communications between non-attorney patent agents and their clients that are in furtherance of the performance of these tasks receive the benefit of the patent-agent privilege. Communications that are not reasonably necessary and incident to the prosecution of patents before the Patent Office fall outside the scope of the patent-agent privilege. For instance, communications with a patent agent who is offering an opinion on the validity of another party's patent in contemplation of litigation or for the sale or purchase of a patent, or on infringement, are not "reasonably necessary and incident to the preparation and prosecution of patent applications or other proceeding before the Office."
Thus, we grant Queen's petition for mandamus relief. On remand, the court shall assess whether any particular claim of privilege is justified in light of the privilege we recognize today.
I disagree that this court should create a new agent-client privilege. The presumption against the creation of new privileges has not been overcome by any showing that the public interest will be served or that there is a real need for such a privilege. Congress recognized that agents would not have the same privileges as attorneys, and no appellate court or legislature has created an agent-client privilege. An attorney-client-like privilege should not apply merely because someone is enabled to practice limited law before a single specific administrative agency. I dissent, because in the absence of a showing that there is a real need for a new privilege to be created, the need to ascertain the truth should prevail.
This case arises out of consolidated interference proceeding between Bamberg and Dalvey. The claims at issue originated in four Dalvey patents that claim priority to an application filed September 9, 1999. Bamberg, believing that they had earlier invented the claimed methods, copied the Dalvey claims into four patent applications to provoke an interference. Bamberg's applications claim priority to a PCT application filed on June 1, 1999. To determine which party had priority of inventorship, the Board declared three interferences. As the junior party, Dalvey was required to prove an earlier priority date.
The involved claims disclose a method for the transfer of printed images onto dark colored textiles by ironing over a specialty transfer paper. The transfer paper generally contains: (1) a removable substrate coated with silicon, (2) a hot-melt adhesive, (3) a white layer, and (4) an ink-receptive layer. To use the transfer sheet, an image is first printed on the ink-receptive layer. The removable substrate is then peeled off and the remaining portion (the hot-melt adhesive, white layer, and the ink-receptive layer) is placed on the dark textile with the printed ink-receptive layer facing up. The user then places the removable substrate over the ink-receptive layer and applies heat with an iron which melts the hot-melt layer causing the white layer and the ink-receptive layer to adhere to the dark textile.
Dalvey filed a motion alleging that Bamberg's claims were unpatentable for lack of written description. Dalvey alleged that the copied claims recite a white layer that melts at a wide range of temperatures, but Bamberg's specification only discloses a white layer that does not melt at ironing temperatures (i.e., below 220°C). Therefore, Bamberg's specification failed to meet the written description requirement because it does not disclose an invention in which the white layer melts at temperatures below 220°C.
The Board reviewed the claims in light of the Dalvey patent specification and concluded that the claims were not limited to a white layer that melts at or above 220°C, but rather the claims also include within their scope a white layer that melts below 220°C. After reviewing Bamberg's specifications, the Board granted Dalvey's motion, finding that Bamberg failed to provide an adequate written description of a white layer that melts below 220°C. Because the written description requirement is a threshold issue, the Board did not decide Dalvey's remaining motions.
Bamberg urges us to find that the Board erred in its claim construction by improperly importing a functional limitation requiring the white layer to melt below 220°C. We review underlying factual determinations concerning extrinsic evidence for substantial evidence and the ultimate construction of the claims de novo. Teva Pharm. U.S.A., Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015).
Because this is an interference, and Bamberg copied Dalvey's claims, we give the claims their broadest reasonable construction in light of the Dalvey specification. Under the broadest reasonable interpretation, the Board's construction cannot be divorced from the specification and the record evidence, and must be consistent with the one that those skilled in the art would reach. The Board analyzed the scope of the contested claims based on Dalvey's specification and concluded that the "white layer" does not have a minimum melting temperature. Bamberg asserts that the Board improperly imported a limitation into the claims and, instead, the Board should have concluded that the "white layer" is simply "a white layer that remains opaque after application."
Dalvey's specification defines "white layer" as "a layer on a transfer sheet positioned between a release layer and a receiving layer. The white layer imparts a white background on a dark substrate." The specification discloses embodiments in which the white layer melts at a number of different temperatures. We find no error in the Board's conclusion that the broadest reasonable interpretation of "white layer" includes within its scope a white layer that melts at temperatures both above and below 220°C.
Bamberg disputes the Board's determination that the specification failed to provide adequate written support under 35 U.S.C. § 112. To satisfy the written description requirement, the specification must sufficiently describe an invention understandable to a person of ordinary skill in the art and show that the inventor actually invented the invention claimed. Satisfying the written description requirement is a question of fact that we review for substantial evidence.
Because the contested claims are properly construed in light of Dalvey's specification to encompass a white layer that melts above and below 220°C, Bamberg's specification must also support a white layer that melts above and below 220°C to satisfy the written description requirement. Substantial evidence supports the determination that Bamberg's specification fails to meet the written description requirement.
The white background layer in Bamberg's specification "comprises or is composed of permanently elastic plastics which are non-fusible at ironing temperatures (i.e. up to about 220°C) and which are filled with white pigments—also non-fusible (up to about 220°C)." The specification clarifies that the "elastic plastics must not melt at ironing temperatures in order not to provide with the adhesive layer. . . . an undesired mixture with impaired (adhesive and covering) properties." Additionally, Ulf Bamberg testified that "we came to understand that clarity and resolution are decreased where the white background layer is permitted to melt . . . . Accordingly, we developed a white background layer that nonetheless formed a strong bind with the ink-receiving layer but did not melt at conventional iron-pressing temperatures (i.e., that is temperatures up to about 220°C)."
Consequently, we find that Bamberg does not possess a white layer that melts below 220°C because it specifically distinguished white layers that melt below 220°C as producing an "undesired" result. Even Mr. Bamberg's testimony confirms that his invention did not include a white layer that melted below a threshold of 220°C so as to not decrease the clarity and resolution of the final image.
Because substantial evidence supports the Board's conclusion that Bamberg did not possess a white layer that melts below 220°C, Bamberg's specification fails to meet the written description requirement.
Finally, Bamberg also appeals the Board's denial of its motion to amend. During the interference proceeding, Bamberg moved to amend the claims of its applications in response to Dalvey's motion alleging lack of written description support. A party seeking to add or amend a claim has the burden of establishing that the amended or new claim is supported by an adequate written description. See 37 C.F.R. § 41.121(b) The PTO has determined that, in the context of interference proceedings, this burden is best satisfied with a claim chart. 37 C.F.R. § 41.110(c).
We review a Board decision pursuant to the permissive rules governing a patent interference proceeding for abuse of discretion. Here, Bamberg did not provide a claim chart—the principal means for determining if Bamberg satisfied its burden of establishing that the proposed amended claims were supported by an adequate written description—and thus failed to comply with the regulations governing interference proceedings. The Board denied the motion after concluding that Bamberg's failure to provide a claim chart improperly shifted to Dalvey the burden of establishing that the amended claim is not supported by an adequate written description. We find that the Board's decision to deny the motion for failing to comply with its interference regulations, which improperly shifted the burden, is not an abuse of discretion.
These two appeals involve a '291 patent naming Samir Varma as the inventor and owned by InvestPic LLC (collectively, Varma). The patent describes and claims systems for performing statistical analyses of investment data. The PTAB cancelled certain claims of the '291 patent in two related reexamination proceedings filed by IBM and SAS. Varma's appeals center on two claim phrases: (1) a "bias parameter" that "determines a degree of randomness in sample selection in a resampling process"; and (2) "a statistical analysis request corresponding to two or more selected investments." We agree with Varma that the Board erred regarding both claim phrases. Correcting the first error, we reverse the cancellation of claims 1-5, 8-16, 19-21, and 24. Correcting the second error, we vacate the cancellation of claims 22, 23, 25, and 29-31 and remand for further proceedings on those claims.
IBM and SAS filed a request for inter partes reexamination of claims 1-31 of the '291 patent—claims lacking the language underlined in the quotations just above. IBM and SAS argued in the reexamination request that the claims are anticipated by each of two prior-art references, Sortino and Barraquand, and in any event rendered invalid for obviousness by those references, with or without additional references.
The examiner granted the request for inter partes reexamination as to many of the claims and then rejected all of those claims for anticipation by Sortino or for obviousness over Sortino in view of other references. In response, InvestPic amended claims 1 and 11 to clarify that "the bias parameter determines a degree of randomness in sample selection in a resampling process." But after considering the amendment, the examiner again rejected the claims on the same bases. On appeal, the Board affirmed the rejections.
After the examiner had granted the request for inter partes reexamination, SAS requested an ex parte reexamination of claims 22-31. The examiner granted the request for reexamination of claims 22-28, then confirmed the validity of claims 26-28 but rejected claims 22-25 (when lacking the underlined language) for obviousness over the combination of Sortino, Barraquand, and the prior-art patent Maggioncalda.
Varma then amended claims 22, 24, and 25 by rewriting claims 24 and 25 in independent form, adding the above-underlined language regarding "two or more selected investments" to claims 22 and 25, and specifying that the bias parameter of claim 24 (applicable even to a single investment) "determines a degree of randomness in sample selection in a resampling process." The examiner entered the amendments and again rejected claims 22-25 for obviousness over Sortino, Maggioncalda, and Barraquand.
Varma appealed to the Board, arguing that because the bias parameter of claim 24 "cannot be construed as merely biasing in general, or biasing the randomness of something else outside of sample selection in the resampling process itself," Sortino does not disclose the requisite bias parameter. Varma also argued that Sortino does not teach a resampled analysis of two or more investments as required by claims 22, 23, and 25. The Board agreed with the examiner on both points.
Varma appeals under 35 U.S.C. § 141(b), challenging the Board's rejection of claims 1-5, 8-16, 19-25, and 29-31.
Varma's first challenge is to the Board's understanding of the "bias parameter" as used in claim 1 and other claims. We agree with Varma that there is only one reasonable meaning of the claim language, considered alone and in light of the specification: the bias parameter is used in selecting samples from the sample space, not in creating a sample space, and not in making arithmetic combinations of statistical measures previously calculated from separate, resampled analyses. The claim language makes this clear. It explicitly states that the bias parameter "determines a degree of randomness in sample selection in a resampling process." Claim 1 clearly differentiates between "selecting a sample space," which occurs in step (a), and "sample selection," which occurs in step (b). The bias parameter is applied in sample selection in step (b), not in step (a)'s creation of a sample space. And "sample selection" is complete before any process of taking calculated statistical results of several distinct sampling processes and combining those measures in a preferred way.
The specification reinforces the distinctions that are clear in the claim language, as does the reexamination prosecution history.
Given the proper understanding of the bias-parameter limitation, the Board's rejection of claims 1-5, 8-16, 19-21, and 24 must be reversed. The Board's rulings in both reexamination proceedings rely solely on Sortino for this limitation, "finding that Sortino teaches the application of bias after an initial selection by application of the various enumerated scenarios." But Sortino does not teach or suggest biasing how samples are selected from a defined sample space to arrive at a resampling-based measure for that sample space.
Sortino allows for the introduction of bias in two ways: (1) by sorting the data into seven economic scenarios to perform separate bootstrap analyses of each scenario; and (2) weighting the individual results of the separate bootstrap analyses for the seven scenarios to produce a combined distribution. Neither option biases the selection of samples in the resampling process as required by the claims. First, Sortino is clear that once a scenario is created, all selection of samples from that scenario is random, not biased. Second, the post-bootstrap weighting of scenarios similarly does not change the selection of samples from a sample space, and therefore is not the result of the application of a bias parameter within the meaning of the '291 patent. And none of the expert declarations, all of which were submitted before the clarifying claim amendments, supports finding that Sortino biases the selection of samples from the sample space when performing a resampling process.
Finally, we note that the Board did not find, and we have not been shown, that Sortino's process—which sorts data into seven economic scenarios, performs a random bootstrap analysis on each individual scenario, and then allows for arithmetic combination of measures separately derived for each of the scenarios—is mathematically equal to applying a bias in choosing samples from a sample space to create bootstrap samples. We therefore need not decide whether such a showing, if made, would matter to the analysis. Therefore, we conclude that Sortino does not disclose a bias parameter that operates on the selection of samples from a sample space in a resampling process.
Varma also challenges the Board's understanding of "a statistical analysis request corresponding to two or more selected investments," as required by claim 22 and other claims.In finding this claim limitation met by Sortino, the Board implicitly relied on two related but different interpretations. In Interpretation 1, the claim phrase embraces a request that calls for a statistical analysis of a single investment. Thus, the Board reasoned that Sortino is covered by the claim even if "two requests would be necessary in the Sortino system to accomplish an analysis of 'two or more investments.'" In Interpretation 2, the claim phrase embraces a request that calls for statistical analyses of at least two investments, but each analysis may be an analysis of a single investment, and the single investment analyses may take place seriatim. Thus, the Board agreed with the examiner that there is no "temporal limitation from [the] claims indicating that 'two or more investments' are analyzed at the same time." We conclude that both interpretations are unreasonable.
The error of Interpretation 1 is plain from the claim phrase at issue. The phrase requires "a statistical analysis request corresponding to two or more selected investments." That language on its face excludes Interpretation 1. A single request must correspond to at least two investments.
The Board relied on the claims' use of "comprising" as the transitional term, but that term does not support Interpretation 1. Although the transitional term "comprising" indicates that the claim is open-ended, the term does not render each limitation or phrase within the claim open-ended. "Comprising" means that the claim can be met by a system that contains features over and above those specifically required by the claim element, but only if the system still satisfies the specific claim-element requirements: the claim does not cover systems whose unclaimed features make the claim elements no longer satisfied. Thus, here, a claim-covered system may receive more than one request, but it must in particular be adapted to receive "a request" that itself corresponds to two or more selected investments.
The Board also cited the indefinite article "a" before "statistical analysis request" to support Interpretation 1. But while "a" sometimes is non-restrictive as to number, permitting the presence of more than one of the objects following that indefinite article, context matters even as to whether the word has that meaning. And here the question is not whether there can be more than one request in a claim-covered system: there can. Rather, the question is whether "a" can serve to negate what is required by the language following "a": a "request" (a singular term) that "corresponds" to "two or more selected investments." It cannot. For a dog owner to have "a dog that rolls over and fetches sticks," it does not suffice that he have two dogs, each able to perform just one of the tasks. In the present case, no matter how many requests there may be, no matter the variety of the requests the system may receive, the system must be adapted to receive a request that itself corresponds to at least two investments.
While the language of the "a statistical analysis request" phrase itself makes clear the unreasonableness of Interpretation 1, it is other claim language—specifically, language in claim 22 —that makes Interpretation 2 unreasonable as an understanding of the "a statistical analysis request" phrase. Claim 22 requires that the plurality of processors be adapted not only to "receive a statistical analysis request corresponding to two or more selected investments," but also to do these additional things: "based upon investment data pertaining to the two or more selected investments, perform a resampled statistical analysis to generate a resampled distribution; and provide a report of the resampled distribution." The reference to "the two or more selected investments" is to the immediately preceding "a statistical analysis request" language. A single resampled statistical analysis must be performed based on data pertaining to those two or more investments. A single resampled distribution must be generated by that analysis, and the single distribution must be reported. The interlocking of singulars in that language makes it unmistakable that at least two investments must be the subject of each statistical analysis that is the subject of the request in the claim phrase at issue. For those reasons, the language of claim 22 precludes Interpretation 2 for those claims.
The amendment history of the claims reinforces the conclusion that Interpretation 2 is unreasonable: Varma specifically argued against that interpretation in both proceedings based on the language at issue. After the unamended claims 29-31 were rejected in the inter partes reexamination, Varma amended claim 29 to add "corresponding to two or more selected investments." In doing so, Varma invoked that language to distinguish Sortino, arguing that "all of Sortino's analyses were based upon a single asset at a time." Similarly, Varma amended claims 22 and 25 in the ex parte reexamination in response to the examiner's rejections based on the examiner's implicit adoption of Interpretation 2: the examiner found that a request step in Sortino was "implicit, or at least obvious, because various analyses on S&P 500 were actually performed." Varma added the two-or-more investments limitation and argued that "Sortino disclosed a statistical analysis request corresponding only to a single investment or asset category."
We conclude that the Board relied on unreasonable interpretations of claim language in claims 22, 23, 25, and 29-31. The proper remedy, we also hold, is to vacate the Board's rejections of those claims for reconsideration of anticipation and obviousness under the correct claim construction.
Varma challenges the Board's understanding of "resampled statistical analysis," a term that appears in all claims at issue. Varma suggests that the term refers to "a statistical analysis using resampling of data involving multiple investments for multiple time periods, wherein the interrelationships in the financial data are preserved." That proposed construction goes far beyond the language supposedly being construed, which refers to a statistical technique that indisputably may be used for analysis outside the financial context altogether and, indeed, may be used for single-investment analysis, as many of the patent claims at issue here make clear. We reject Varma's narrowing construction of "resampled statistical analysis."
i) the dealer resolving the wagers based on whether the designated player's hand or the banker's/dealer's hand is nearest to a value of 0.
The examiner rejected claims 1-18 as directed to patent-ineligible subject matter under § 101, applying the machine-or-transformation test described in Bilski v. Kappos, 561 U.S. 593 (2010). The examiner concluded that the claims represented "an attempt to claim a new set of rules for playing a card game," which "qualifies as an abstract idea." On appeal, the Board affirmed the rejection, applying the two-step test outlined in Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014), which had been decided in the interim. Applying step one, the Board determined that "independent claim 1 is directed to a set of rules for conducting a wagering game which constitutes a patent-ineligible abstract idea." Applying the second step, the Board concluded that "shuffling and dealing cards are conventional in the gambling art," and as such, "do not add enough to the claims" to render them patent eligible.
Section 101 defines patent eligible subject matter as "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." "This provision contains an implicit exception. Laws of nature, natural phenomena, and abstract ideas are not patentable." Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012).
To determine whether an invention claims ineligible subject matter, we apply the two-step test introduced in Mayo, and further explained in Alice. First, we determine whether the claims at issue are directed to a patent-ineligible concept. Second, we examine the elements of the claim to determine whether it contains an inventive concept sufficient to "transform" the claimed abstract idea into a patent-eligible application.
On the first step, we conclude that Applicants' claims, directed to rules for conducting a wagering game, compare to other fundamental economic practices found abstract by the Supreme Court. As the Board reasoned here, "a wagering game is, effectively, a method of exchanging and resolving financial obligations based on probabilities created during the distribution of the cards." In Alice, the Supreme Court held that a method of exchanging financial obligations was drawn to an abstract idea. Likewise, in Bilski, the Court determined that a claim to a method of hedging risk was directed to an abstract idea. Here, Applicants' claimed "method of conducting a wagering game" is drawn to an abstract idea much like Alice's method of exchanging financial obligations and Bilski's method of hedging risk.
Moreover, our own cases have denied patentability of similar concepts as being directed towards ineligible subject matter. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir.) (finding offer-based price optimization abstract), cert. denied, 136 S. Ct. 701 (2015); Planet Bingo, LLC v. VKGS LLC, 576 F. App'x 1005 (Fed. Cir. 2014) (determining that methods of managing a game of bingo were abstract ideas). In light of these cases, we conclude that the rejected claims, describing a set of rules for a game, are drawn to an abstract idea.
Our inquiry, however, does not end there. Abstract ideas may be patent eligible if they contain an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible application. Alice (quoting Mayo). But appending purely conventional steps to an abstract idea does not supply a sufficiently inventive concept. The claims here require shuffling and dealing physical playing cards, which Applicants argue bring the claims within patent-eligible territory. We disagree. Just as the recitation of computer implementation fell short in Alice, shuffling and dealing a standard deck of cards are "purely conventional" activities. We therefore hold that the rejected claims do not have an inventive concept sufficient to transform the claimed subject matter into a patent-eligible application of the abstract idea.
That is not to say that all inventions in the gaming arts would be foreclosed from patent protection under § 101. We could envisage, for example, claims directed to conducting a game using a new or original deck of cards potentially surviving step two of Alice.
Finally, we cannot address Applicants' argument that the PTO's 2014 Interim Guidance on Patent Subject Matter Eligibility ("Interim Eligibility Guidance") exceeds the scope of § 101 and the Supreme Court's Alice decision. As the Interim Eligibility Guidance itself states, it "is not intended to create any right or benefit, substantive or procedural, enforceable by any party against the Office." Thus we decline to consider Applicants' argument regarding the Interim Eligibility Guidance.


(B) such substance, mixture, or article (when distributed in commerce), or any container in which it is enclosed (when so distributed), bears a stamp or label stating that such substance, mixture, or article is intended for export.
(2) Paragraph (1) shall not apply to any chemical substance, mixture, or article if the Administrator finds that the substance, mixture, or article presents an unreasonable risk of injury to health within the United States or to the environment of the United States. The Administrator may require, under section 2603 of this title, testing of any chemical substance or mixture exempted from this chapter by paragraph (1) for the purpose of determining whether or not such substance or mixture presents an unreasonable risk of injury to health within the United States or to the environment of the United States.
(1) If any person exports or intends to export to a foreign country a chemical substance or mixture for which the submission of information is required under section 2603 or 2604(b) of this title, such person shall notify the Administrator of such exportation or intent to export and the Administrator shall furnish to the government of such country notice of the availability of the information submitted to the Administrator under such section for such substance or mixture.
(2) If any person exports or intends to export to a foreign country a chemical substance or mixture for which an order has been issued under section 2604 of this title or a rule has been proposed or promulgated under section 2604 or 2605 of this title, or with respect to which an action is pending, or relief has been granted under section 2604 or 2606 of this title, such person shall notify the Administrator of such exportation or intent to export and the Administrator shall furnish to the government of such country notice of such rule, order, action, or relief.
Effective January 1, 2013, the export of elemental mercury from the United States is prohibited.
Subsection (a) shall not apply to this subsection.
(v) other relevant information that Congress should consider in determining whether to extend the export prohibition to include one or more of these mercury compounds.
For the purpose of preparing the report under this paragraph, the Administrator may utilize the information gathering authorities of this subchapter, including sections 2609 and 2610 of this title.
(vii) the export of elemental mercury for the specified use is consistent with international obligations of the United States intended to reduce global mercury supply, use, and pollution.
(B) Each exemption issued by the Administrator pursuant to this paragraph shall contain such terms and conditions as are necessary to minimize the export of elemental mercury and ensure that the conditions for granting the exemption will be fully met, and shall contain such other terms and conditions as the Administrator may prescribe. No exemption granted pursuant to this paragraph shall exceed three years in duration and no such exemption shall exceed 10 metric tons of elemental mercury.
(C) The Administrator may by order suspend or cancel an exemption under this paragraph in the case of a violation described in subparagraph (D).
(D) A violation of this subsection or the terms and conditions of an exemption, or the submission of false information in connection therewith, shall be considered a prohibited act under section 2614 of this title, and shall be subject to penalties under section 2615 of this title, injunctive relief under section 2616 of this title, and citizen suits under section 2619 of this title.
Nothing in this subsection affects, replaces, or amends prior law relating to the need for consistency with international trade obligations.
Nothing in this subsection shall be construed to prohibit the export of coal.
(i) Mercury (I) chloride or calomel.
(v) Cinnabar or mercury sulphide.
(vi) Any mercury compound that the Administrator adds to the list published under subparagraph (B) by rule, on determining that exporting that mercury compound for the purpose of regenerating elemental mercury is technically feasible.
Not later than 90 days after June 22, 2016, and as appropriate thereafter, the Administrator shall publish in the Federal Register a list of the mercury compounds that are prohibited from export under this paragraph.
(vi) makes a recommendation regarding whether Congress should further limit or prohibit the export of mercury compounds on the list published under subparagraph (B) for disposal.
The Solid Waste Disposal Act, referred to in subsec. (c)(7)(F), is title II of Pub. L. 89–272, Oct. 20, 1965, 79 Stat. 997, as amended generally by Pub. L. 94–580, §2, Oct. 21, 1976, 90 Stat. 2795, which is classified generally to chapter 82 (§6901 et seq.) of Title 42, The Public Health and Welfare. For complete classification of this Act to the Code, see Short Title note set out under section 6901 of Title 42 and Tables.
2016—Subsec. (a)(2). Pub. L. 114–182, §10(a), substituted "presents" for "will present".
Subsec. (b)(1). Pub. L. 114–182, §19(k), substituted "information" for "data" in two places.
Subsec. (c). Pub. L. 114–182, §10(b)(1), inserted "and mercury compounds" after "mercury" in heading.
Subsec. (c)(7). Pub. L. 114–182, §10(b)(2), added par. (7).
2008—Subsec. (a)(1). Pub. L. 110–414, §4(1), substituted "subsections (b) and (c)" for "subsection (b)" in introductory provisions.
Subsec. (c). Pub. L. 110–414, §4(2), added subsec. (c).
"(13) banning exports of elemental mercury from the United States will have a notable effect on the market availability of elemental mercury and switching to affordable mercury alternatives in the developing world."


text:
Fig. 1—The D.O.J.'s Transparency Merry Go Round. The U.S. Department of Justice has created a Freedom of Information Act (FOIA) Merry Go Round to avoid ever having to provide actual transparency information to the public. This conduct breaches democracy's most fundamental principles of accountability. Graphic: Melissa Suriel.
(Sep. 26, 2013)—On Jan. 21, 2009 President Obama declared "a democracy requires accountability, and accountability requires transparency." Apparently, the Department of Justice (D.O.J.) and the Patent Office didn't get the memo.
The mission of the D.O.J. is to "ensure fair and impartial administration of justice for all Americans."
On Aug. 15, 2013 the D.O.J.'s Vanessa R. Brinkman responded to a Freedom of Information Act (FOIA) request for information regarding Leader v. Facebook with anything but transparency.
Even though the request was addressed according to instructions on the D.O.J. FOIA website, the D.O.J. Office of Information Policy (OIP) who "processes Freedom of Information Act (FOIA) and Privacy Act (PA) requests" said nonsensically "this Office nor any of these senior leadership [including the Attorney General] typically maintain records on specific court cases."
Update Sep. 30, 2013—Jamie Dimon, CEO, JP Morgan Chase (left), was photographed on Thursday, Sep. 19, 2013 leaving an almost unprecedented meeting with Attorney General Eric Holder (right). What could they achieve in person that they could not by phone or video conference? (1) No NSA recording. (2) Lots of non-verbal winking & nodding. Well worth Dimon's trip from New York to keep Holder and Obama in line.
Reuters reported (PDF) that Holder would not disclose the details of the conversation. Holder included two D.O.J. attorneys with close ties to Obama and JP Morgan Chase—one of Holder's sidemen was Tony West. West is another of Larry Summers' Harvard protégés (along with Facebook COO Sheryl Sandberg and DST Moscow's Yuri Milner and Alisher Asmanov). West was Obama's 2008 California campaign manager. What rousted Dimon out of New York? Dimon claims the 2008 meltdown was mismangement, nothing more. Could the AFI revelations of 2008 and 2012 election rigging be causing him heartburn? See Comment 4 below. Photos: Reuters, MainJustice.
The response goes on to inform the requester that the D.O.J. system for handling FOIA requests is "decentralized" and that the requester should consult http://www.justice.gov/oip/oip.htm. Humorously, this website gives the Office of Information Policy contact information—the very ones making the suggestion. In short, contact us, then we'll tell you to... contact us again... then, we'll keep suggesting that you contact us until we've generated lots of official looking paper for our files... and/or until you give up.
Fig. 2—Just a few of the Actual Conflicts Mapped re. the Federal Circuit in Leader v. Facebook. These conflicts mapped above do not include Chief Justice John G. Roberts, Jr., Leonard P. Stark, Perkins Coii LLP, Blank Rome LLP, Anita B. Dunn, Robert F. Bauer, Kathryn Ruemmler, Thomas J. Kim, Donald K. Stern, John P. Breyer, IDG Capital Partners China, Roel Campos, David Plouffe, DC Bar Assoc., A.F.L.C.T.A.C.A.F.C., Patent Office, David J. Kappos, Kathryn W. Siehndel, Robert Ketterson, Fidelity Funds, T. Rowe Price Funds, Preetinder Preet Bharara, Mike Sheehy, McBee Strategic, LinkedIn, Square, SquareSpace, Brightsource, Tesla Motors, Instagram, Wikipedia, Jeff Markey, Morgan Stanley, Ellen L. Weintraub, Robert D. Lenhard, Elon Musk, Marc Andreessen, Andreessen Horowitz, Lawrence "Larry" Summers, James Swartz, Ping Li, Harry Reid, Nancy Pelosi, Matthew J. Moore, Theodore B. Olson, Eric Holder, Stephen C. Siu, Meredith C. Petravick, Allen R. MacDonald or Deandra M. Hughes, to name just a few of those who have been positively identified during our investigations.
Update Sep. 27, 2013—Yesterday, Seventh Circuit Judge Diane P. Wood proposed ending the Federal Circuit’s exclusive jurisdiction over patent appeals, according to Law360 (click here). Finally, a federal judge has dressed down this court which has become corrupted by the Facebook Club.
Is Judge Wood a lone drummer, or will others join her? Time will tell. We at AFI have been hoping and praying for a break in these dark clouds. Will moral judicial leaders speak up? Or, is the notion of a moral and just judge merely a cruel hoax in early 21st century America?
Are our federal judges already too compromised into silence by their big infringer paymasters—the Leader v. Facebook judges chief among them, including Stark, Lourie, Wallach, Moore, Rader, Siu, Petravick, Moore, Hughes, MacDonald, DC Bar, Federal Circuit Bar Association, A.F.L.C.T.A.C.A.F.C., Clerk Horbaly, USPTO Director Kappos and Chief Justice John Roberts? In the case of these judges, their inside knowledge of the Facebook IPO planned by Goldman Sachs lured them to the rocky shoals of profligacy. How many others are equally compromised for life?
Fig. 4—Members of the Facebook Club, with their pockets and foreign bank accounts full of Facebook stock winnings, will now try and create distance between themselves and their fellow collaborators. Graphic: Michael Northrop.
AFI’s position is that these compromised, constitutionally oath-bound judges and lawyers must resign, be impeached and/or be brought up on fraud and racketeering charges for their collusion with the Facebook Club. They have betrayed America’s trust and must be brought to account if faith and trust in our democratic processes are to return. Until then, nothing said by our institutions will be trusted.
Being a judge is a revocable privilege bestowed by the People. It is not a birthright. The fact that our judges have exempted themselves from accountability for even illegal actions on the bench is contemptible, unconstitutional (creates a privileged class) and must be reversed.
4. However, Ms. Brinkman responds that while OIP "processes" requests, they don't "maintain records." Huh? This is reminiscence of the Seinfeld car reservation episode where the car rental agency takes reservations, but they don't hold those reservations.
These D.O.J. people are either incompetent, or they are intentionally obscuring the FOIA process to discourage public transparency. If its either reason, why do we pay them? The Requester appealed this embarrassing D.O.J. conduct. Click here to read the appeal (also displayed at the end of this post).
Brinkman took great pains to spell out what they do not, will not and are not required to do. The “decentralized” nature of the D.O.J. FOIA system was emphasized, but nowhere was it mentioned that the D.O.J. website promises to "forward your request to the D.O.J. component they determine is most likely to maintain the records you are seeking."
The reader is left with the impression that Brinkman could not be bothered, or is hiding something. Perhaps both.
Given the D.O.J.’s obstruction, the requester spelled out a list of people and organizations suspected of misconduct in Leader v. Facebook, including their possible collusion with members of the Department of Justice. This person even suggested basic search instructions.
The D.O.J.’s “decentralized” FOIA data processing system appears to be at cross purposes with the law of the land on conflicts of interest disclosure. That information should be readily accessible, not hidden inside a rat's maze of deceptions and misdirection. The fact that it is hidden begs the question, "What is so important to hide that the D.O.J. won't follow mandates for which they are supposed to be the chief law enforcers?"
The Ethics in Government Act of 1978 requires mandatory, public disclosure of financial and employment history of public officials and their immediate family.
In 2006, well before Leader v. Facebook, the Judicial Conference mandated automated conflicts screening for courts and judges.
The Facebook Club is likely an unelected, shadow U.S. Goverment. See "Faces of the Facebook Corruption."
Facebook's Washington, Silicon Valley and Moscow law firms and financiers undermining the Constitutional separation of powers—to secure their own, led by their mentor, Lawrence "Larry" Summers.
We could go on, but the evidence is clear . . .
 Barack Obama on Gov't Transparency, The White House, Memorandum of January 21, 2009. ''Title 3 – The President, Freedom of Information Act [FOIA], Memorandum for the Heads of Executive Departments and Agencies.'' Presidential Documents, Federal Register, Vol. 74, No. 15, FR Doc. E9-1773, pp. 4683-4684, Jan. 26, 2009 <http://www.uspto.gov/ip/boards/foia_rr/President_Letter_re_FOIA_Jan-21-2009.pdf> ("A democracy requires accountability, and accountability requires transparency.").
 About the DOJ. U.S. Dept. of Justice. Accessed Sep. 26, 2013 <http://www.justice.gov/about/about.html>.
 Ethics in Government Act of 1978. Wikipedia. Accessed Sep. 26, 2013 <http://en.wikipedia.org/wiki/Ethics_in_Government_Act>.
 Mandatory Conflicts Screening For Courts & Judges. Judicial Council of the District of Columbia Circuit. Accessed Sep. 26, 2013 ("On September 19, 2006, the Judicial Conference of the United States adopted a mandatory conflict screening policy requiring courts and judges to implement automated screening to identify financial conflicts of interest.") <http://www.cadc.uscourts.gov/internet/home.nsf/Content/VL%20-%20Rules%20Policies%20Procedures%20-%20Mandatory%20Conflict%20Screening%20Plan/$FILE/mandatoryconflictplanfinal2.pdf>.
 D.O.J. Leader v. Facebook Request, Response, Appeal. USPTO FOIA Appeal, OIP/13-04526 (F) VRB:VAV:CMW, Vanessa R. Brinkman, Aug. 15, 2013 <http://www.fbcoverup.com/docs/usptp/2013-08-27-USPTO-FOIA-Appeal-NAME-REDACTED-OIP-13-04526-F-VRB-VAV-CMW-Aug-27-2013.pdf>.

matches: v. v. v. v. v. v.


Appellant was convicted on nonfelony charges of violating two city of Chicago ordinances and was sentenced to pay a fine of $250 on each offense. Desiring to appeal, he petitioned the trial court for a free trial transcript to support his appeal on the grounds of insufficient evidence and prosecutorial misconduct. Although the court found that he was indigent, it denied his application on the basis of an Illinois Supreme Court rule which provided for trial transcripts only in felony cases. Other rules provided alternatives to a transcript in the form of a "Settled Statement" or an "Agreed Statement of Facts." Without resorting to either alternative, appellant moved for a free transcript in the State Supreme Court. The motion was denied.
1. Although the State must afford the indigent defendant a trial "record of sufficient completeness' to permit proper consideration of [his] claims," Draper v. Washington, 372 U. S. 487, 372 U. S. 499, it need not necessarily furnish a complete verbatim transcript, but may provide alternatives that accord effective appellate review. Pp. 404 U. S. 193-195.
2. When the defendant's grounds for appeal, as here, make out a colorable need for a complete transcript, the State has the burden of showing that only a portion thereof or an "alternative" will suffice for an effective appeal on those grounds. P. 404 U. S. 195.
3. The distinction drawn by the State Supreme Court rule between felony and nonfelony offenses is an "unreasoned distinction" proscribed by the Fourteenth Amendment. Pp. 404 U. S. 195-196.
4. The fact that the charges on which the appellant was convicted were punishable by a fine, rather than by confinement, does not lessen the invidious discrimination against an indigent defendant. Pp. 404 U. S. 196-198.
BRENNAN, J., delivered the opinion for a unanimous Court. BURGER C.J., post, p. 404 U. S. 199, and BLACKMUN, J., post, p. 404 U. S. 201, filed concurring opinions.
"In any case in which the defendant is convicted of a felony, he may petition the court in which he was convicted for a report of proceedings at his trial. [Footnote 2]"
furnished a transcript of proceedings without cost. The Supreme Court denied the motion in an unreported order without filing an opinion. We noted probable jurisdiction of appellant's appeal challenging the constitutionality of the limitation of Rule 607(b) to felony cases. 401 U.S. 906 (1971).
"constitutional guaranties of due process and equal protection both [of which] call for procedures in criminal trials which allow no invidious discriminations between persons and different groups of persons."
"it is now fundamental that, once established . . . avenues [of appellate review] must be kept free of unreasoned distinctions that can only impede open and equal access to the courts."
is to provide the indigent as adequate and effective an appellate review as that given appellants with funds. . . ."
Draper v. Washington, 372 U. S. 487, 372 U. S. 496 (1963). In terms of a trial record, this means that the State must afford the indigent a "record of sufficient completeness' to permit proper consideration of [his] claims." Id. at 372 U. S. 499 (quoting Coppedge v. United States, 369 U. S. 438, 369 U. S. 446 (1962)).
"may find other means [than providing stenographic transcripts for] affording adequate and effective appellate review to indigent defendants."
this kind of issue, however, it is unnecessary to afford a record of the proceedings pertaining to an alleged failure of proof on a point which is irrelevant as a matter of law to the elements of the crime for which the defendant has been convicted. In the examples given, the fact that an appellant with funds may choose to waste his money by unnecessarily including in the record all of the transcript does not mean that the State must waste its funds by providing what is unnecessary for adequate appellate review."
"[T]he State could have endeavored to show that a narrative statement or only a portion of the transcript would be adequate and available for appellate consideration of petitioners' contentions. The trial judge would have complied with . . . the constitutional mandate . . . in limiting the grant accordingly on the basis of such a showing by the State. [Footnote 5]"
"'that an indigent person, convicted for a violation of a city ordinance, quasi criminal in nature and often referred to as a petty offense, is [not] entitled to a case-made or transcript at city expense in order to perfect an appeal. . . .' [Footnote 6]"
pricing indigent defendants out of as effective an appeal as would be available to others able to pay their own way. The invidiousness of the discrimination that exists when criminal procedures are made available only to those who can pay is not erased by any differences in the sentences that may be imposed. The State's fiscal interest is, therefore, irrelevant. Cf. Shapiro v. Thompson, 394 U. S. 618, 394 U. S. 633 (1969).
"[F]ew citizens ever have contact with the higher courts. In the main, it is the police and the lower court Bench and Bar that convey the essence of our democracy to the people."
"Justice, if it can be measured, must be measured by the experience the average citizen has with the police and the lower courts. [Footnote 7]"
dollars and cents, but only at the substantial risk of generating frustration and hostility toward its courts among the most numerous consumers of justice.
something less than a complete transcript would suffice. Here, the City of Chicago urges that the Illinois procedures for a "Settled" or "Agreed" statement may provide adequate alternatives. The city also argues that, even if a verbatim record is required, less than a complete transcript may assure fair appellate review. We cannot address these questions, since the record before us contains only the parties' conflicting assertions; so far as appears, neither of the Illinois courts below regarded resolution of the dispute to be relevant in light of Rule 607(b). That this was the view of the Circuit Court is clear. The order of the Supreme Court, however, may not have been based on the rule, but on the ground that appellant had the burden of showing that the alternatives of a "Settled" or "Agreed" statement were inadequate. We hold today that a denial of appellant's motion, either on the basis of the rule, or, in the context of his grounds of appeal, on the basis that he did not meet the burden of showing the inadequacy of the alternatives, would constitute constitutional error.
A court reporter was provided at appellant's trial pursuant to the State Court Reporters Act, Ill.Rev.Stat., c. 37, § 651 et seq. (1969). It was estimated that the cost of preparing a transcript would be $300. The record refers in some places to a two-day trial, and in other places to a three-day trial.
Under Illinois law at the time of appellant's convictions, an appeal lay as of right either to the Illinois Supreme Court or to the Illinois Appellate Court, depending upon the nature of the case or the contentions raised. See Constitution of Illinois 1870, Art. 6, §§ 5, 7. If a case was erroneously appealed to the wrong court, it was transferred to the proper court without any loss of rights. Illinois Supreme Court Rule 365, Ill.Rev.Stat., c. 110A, § 365 (1969). Of course, whether an appeal is discretionary or as of right does not affect an indigent's right to a transcript, since "[i]ndigents must . . . have the same opportunities to invoke the discretion of the" court as those who can afford the costs. Burns v. Ohio, 360 U. S. 252, 360 U. S. 258 (1959).
"Report of Proceedings. In any case in which the defendant is convicted of a felony, he may petition the court in which he was convicted for a report of proceedings at his trial. If the conduct on which the felony case is based was also the basis for a juvenile proceeding which was dismissed so the felony case could proceed, the defendant may include in his petition a request for a report of proceedings in the juvenile proceeding. The petition shall be verified by the petitioner and shall state facts showing that he was at the time of his conviction, and is at the time of filing the petition, without financial means to pay for the report. If the judge who imposed sentence, or in his absence any other judge of the court, finds that the defendant is without financial means with which to obtain the report of proceedings at his trial, he shall order the court reporter to transcribe an original and copy of his notes. The original of the report shall be certified by the reporter and filed with the clerk of the trial court as provided below, and the copy shall be certified by the reporter and delivered to the defendant without charge. The reporter who prepares a report of proceedings pursuant to an order under this rule shall be paid the same fee for preparing the transcript as is provided by law for the compensation of reporters for preparing transcripts in other cases."
Following Griffin v. Illinois, 351 U. S. 12 (1956), the Illinois Legislature authorized free transcripts for indigents "[u]pon imposition of any sentence in a criminal case." See Ill.Ann.Stat., c. 38, § 121-13(a) and committee comments appended thereto (1964). However, under authority allowing the State Supreme Court, in effect, to amend code provisions governing criminal appeals, id. § 121-1, the court promulgated Rule 607(b) authorizing transcripts at state expense only for indigents convicted of a felony. The rule was amended effective July 1, 1971, to apply to "any case in which the defendant is convicted of an offense punishable by imprisonment for more than six months." 1971 Illinois Legislative Service, No. 5, p. 1703.
"(c) Procedure If No Verbatim Transcript Is Available. If no verbatim transcript of the evidence or proceedings is obtainable the appellant may prepare a proposed report of proceedings from the best available sources, including recollection. It shall be served within seven days after the notice of appeal is filed. Within 21 days after the notice of appeal is filed, any other party may serve proposed amendments or his proposed report of proceedings. Within seven days thereafter, the appellant shall, upon notice, present the proposed report or reports and any proposed amendments to the trial court for settlement and approval. The court, holding hearings if necessary, shall promptly settle, certify, and order filed an accurate report of proceedings."
"(d) Agreed Statement of Facts. The parties by written stipulation may agree upon a statement of the facts material to the controversy and file it in lieu of and within the time for filing a report of proceedings."
These rules were also amended effective July 1, 1971, but not in ways material to this case. See 1971 Illinois Legislative Service, No. 5, p. 1690. Despite the provision limiting use of a "Settled" statement to cases where no verbatim transcript is "available" or "obtainable," the procedure of subsection (c) evidently is permissible even though the court reporter's notes are available for transcription. See Tone, New Supreme Court Rule on Expeditious and Inexpensive Appeals, 53 Ill.B.J. 18, 20 (1964).
Our decisions on the question of free transcript for indigent include: Wade v. Wilson, 396 U. S. 282 (1970); William v. Oklahoma City, 395 U. S. 458 (1969); Gardner v. California, 393 U. S. 367 (1969); Robert v. LaVallee, 389 U. S. 40 (1967); Long v. District Court of Iowa, 385 U. S. 192 (1966); Draper v. Washington, 372 U. S. 487 (1963); Lane v. Brown, 372 U. S. 477 (1963); Coppedge v. United States, 369 U. S. 438 (1962); and Eskridge v. Washington Prison Bd., 357 U. S. 214 (1958).
See also Gardner v. California, 393 U.S. at 393 U. S. 370 (noting no suggestion made of an adequate substitute for a full transcript); Eskridge v. Washington Prison Bd., 357 U.S. at 357 U. S. 215 (noting State's failure to show availability of trial notes).
It is true, as the city of Chicago argues, that, in Williams, the defendant was effectively denied any right of appeal, whereas, here, a transcript was not a condition precedent for appeal. The constitutional infirmity in Rule 607(b) is not the less for that reason. The indigent defendant must be afforded as effective an appeal as the defendant who can pay.
"it is expected that certain stipulations concerning voir dire will be forthcoming. The rest of the transcript up to the end of closing arguments is required."
"Petitioners' contentions in the present case were such that they could not be adequately considered by the State Supreme Court on the limited record before it. The arguments about improper foundation for introduction of the gun and coat, for example, could not be determined on their merits -- as they would have been on a nonindigent's appeal -- without recourse, at a minimum, to the portions of the record of the trial proceedings relating to this point. Again, the asserted failure of proof with respect to identification of the defendants and the allegations of perjury and inconsistent testimony were similarly impossible to pass upon without direct study of the relevant portions of the trial record. Finally, the alleged failure of the evidence to sustain the conviction could not be determined on the inadequate information before the Washington Supreme Court."
needed. In most cases, unlike this one, the essential facts are not in dispute on appeal, or, if there is dispute, it centers on certain limited aspects of the case. One need only examine briefs in appeals to see that, at the appellate stage, the area of conflict on the facts is generally narrow.
or yield their professional judgment to the client's desires. This is more than a matter of costs. An affluent society ought not be miserly in support of justice, for economy is not an objective of the system; the real vice is the resulting delay in securing transcripts, and hence determining the appeal. When excessive demands are made by an appellant in order to postpone the day when the appeal is finally determined, because, for example, he is at liberty pending appeal, [Footnote 2/2] a lawyer who cooperates is guilty of unprofessional conduct.
I quite agree with MR. JUSTICE BRENNAN that "a full verbatim record where that is necessary . . ." should be provided, but judges and lawyers have a duty to avoid abuses that promote delays.
It is not the increase in number of requested transcripts alone which has resulted in delay. The delay has been caused by the combination of this increase with the failure of the system to increase its ability to produce transcripts. Cf. Committee of Section of Criminal Law of American Bar Association, Appellate Delay in Criminal Cases: A Report, 2 Am.Crim. L.Q. 150, 153 (1964). In the typical situation in federal courts, the reporter is an independent contractor selected by the Government to make a verbatim record of the entire proceedings. In some States, the court reporter is an employee. In most systems, the reporter independently contracts with the parties to transcribe the record at a certain fee per page. Although courts have supervisory power over the reporter, administration of the transcribing of the notes is often left largely, if not completely, to the discretion of the reporter. See generally Administrative Office of the United States Courts, The Court Reporting System in the United States District Courts 7-47 (1960). With the enormous increase in criminal cases, reporters are often unable to keep up with the demand for transcripts and, at the same time, continue with regular reporting. Some reporters fail to make adequate arrangements for stenographers to transcribe their notes, which can be done by someone other than the reporter. The failure of courts to give adequate supervision to the work of court reporters accounts for much of the delay in processing appeals. Courts have an obligation to exercise sufficient oversight of reporters to ensure that proceedings are transcribed with dispatch.
See American Bar Association, Project on Standards for Criminal Justice, Criminal Appeals § 2.3 (Approved Draft 1970), which concludes that "[a]utomatic release pending appeal" is one of the "unacceptable inducements to taking appeals." See also id., § 2.5.
I concur in the opinion and judgment of the Court. I merely add an observation: the record indicates that, in 1969, when the charges were brought against the appellant and he asserted his indigency, he was a third-year student in New York University Medical School. Perhaps, in the intervening two years, the appellant has completed his professional training. Perhaps by now he is even licensed, and is earning his living. If so, these will be factors to be considered by the Illinois courts on remand.


§ 263-15 Abandonment of inoperative vehicles prohibited.
§ 263-16 Removal by registered owner.
§ 263-17 Removal to private property required.
§ 263-18 Towing by city.
§ 263-19 Responsibility for towing costs.
§ 263-21 Determination of registration information.
§ 263-23 Public sale notice.
§ 263-25 Report of transaction.
§ 263-26 Proceeds of public sale.
§ 263-27 Immunity from damages.
§ 263-28 Penalties for offenses.
It shall be unlawful to permit any motor vehicle which is duly registered but has become inoperative to remain parked on a city street, parking lot or other public property for more than 72 hours after such vehicle has become inoperative.
A registered motor vehicle shall be deemed inoperative if mechanical or other motor vehicle parts necessary for the operation of the motor vehicle on a highway, city street or other public place are not properly installed in or on the motor vehicle. A registered motor vehicle that has been deemed inoperative is authorized to be towed by the city if the deemed inoperative motor vehicle owner has been given six hours' notification by the Police Department or a Code Enforcement Officer to move the motor vehicle, and the registered owner does not or refuses to move the motor vehicle.
A registered motor vehicle shall be presumed inoperative if the registered owner has not moved the motor vehicle from its same position on a city street, parking lot or other public property for more than 72 hours, and the city reasonably suspects the motor vehicle to be inoperative or determines said motor vehicle should be moved in the interest of public safety and welfare. A registered motor vehicle presumed inoperative is authorized to be towed by the city, if the presumed inoperative motor vehicle owner has been given 24 hours' notification by the Police Department or a Code Enforcement Officer to move the motor vehicle and the registered owner does not move the motor vehicle or refuses to move the motor vehicle.
It shall be the duty of the registered owner of the motor vehicle to remove the same from the public street, parking lot or other public property after due notification by the Police Department in the form of a notice to be prescribed that such vehicle should be removed from its position within 24 hours.
Such vehicle shall be removed to private property or to a commercial garage and shall not under any circumstances be moved to another position on a public street, parking lot or other public property.
In the event that a vehicle is not removed within 24 hours after notice, its removal by a towing service may be authorized by order of the Chief of Police, the Mayor, the Commissioner of Public Works, the Fire Chief or the Corporation Counsel.
When a vehicle is removed from a public street, parking lot or other public property under the provisions of this article, the owner of the vehicle will be responsible for all towing costs, and such cost will be a lien upon the vehicle.
When a motor vehicle or other vehicle is authorized to be towed away, the Police Department shall keep and maintain a record of the vehicle towed, listing the color, year of manufacture, manufacturer's trade name, manufacturer's series name, body style, vehicle identification number and license plate year and number displayed on the vehicle. The record shall also include the date and hour of tow, location towed from, location towed to, reason for towing and the name of the officer authorizing the tow.
When the municipal Police Department does not know the identity of the registered owner or other legally entitled person, they will cause the state motor vehicle registration records to be searched for the purpose of obtaining the required ownership information.
The Police Department will cause the stolen motor vehicle files of the State Police to be searched by a directed communication to the State Police for stolen or wanted information on the vehicle. When the State Police files are searched with negative results, the Police Department will cause the information contained in the national crime information center (NCIC) files to be searched by the State Police. The information determined from these record searches will be used by the Police Department in sending a notification by certified mail or personal delivery to the owner or legally entitled person advising where the vehicle is held, requesting a disposition be made and setting forth public sale information.
When the registered owner or other person legally entitled to the possession of a motor vehicle or other vehicle cannot be identified from the registration file of the state or from the registration files of a foreign state, if applicable, the Police Department shall notify the State Police for the purpose of identifying the vehicle's owner or other person legally entitled to the possession of the vehicle. The information obtained by the State Police will be immediately forwarded to the law enforcement agency having custody of the vehicle for notification of the owner.
Any time before a motor vehicle or other vehicle is sold at public sale or disposed of as provided herein, the owner or other person legally entitled to its possession may reclaim the vehicle by presenting to the Police Department proof of ownership or proof of the right to possession of the vehicle. No vehicle shall be released to the owner or other person under this section until all towing and storage charges have been paid.
Whenever an abandoned, lost, stolen or unclaimed motor vehicle or other vehicle (of seven years of age or newer and exceeding $750 in value) remains unclaimed by the registered owner or other person legally entitled to its possession for a period of 30 days after notice has been given as provided herein, the Police Department having possession of the vehicle shall cause it to be sold at public sale to the highest bidder. Notice of the time and place of the sale shall be posted in a conspicuous place for at least 10 days prior to the sale on the premises where the vehicle has been impounded. At least 10 days prior to the sale, the Police Department shall cause a notice of the time and place of the sale to be sent by certified mail to the registered owner or other person known by the Police Department or towing service to be legally entitled to the possession of the vehicle. Such notice shall contain a complete description of the vehicle to be sold and what steps must be taken by any legally entitled person to reclaim the vehicle.
In those instances where the certified notification specified herein has been returned by the postal authorities to the Police Department due to the addressee having moved or being unknown at the address obtained from the registration records of this state, the sending of a second certified notice will not be required.
When the identity of the registered owner or other person legally entitled to the possession of an abandoned, lost or unclaimed vehicle (of seven years of age or newer and exceeding $750 in value) cannot be determined by any means provided for in this article, the vehicle may be sold as provided herein or disposed of in the manner authorized by this article without notice to the registered owner or other person legally entitled to the possession of the vehicles.
When a motor vehicle or other vehicle in the custody of the Police Department is reclaimed by the registered owner or other legally entitled person, or when the vehicle is sold at public sale or otherwise disposed of as provided by this article, a report of the transaction will be retained by the Police Department for a period of one year from the date of the sale or disposal.
When a vehicle located within the corporate limits of the city is authorized to be towed away by the Chief of Police and disposed of as set forth in this article, the proceeds of the public sale or disposition after the deduction of towing, storage and processing charges shall be deposited in the municipal treasury.
Any police officer, towing service owner, operator or employee shall not be held to answer or be liable for damages in any action brought by the registered owner, former registered owner or his legal representative or any other person legally entitled to the possession of a motor vehicle or other vehicle when the vehicle was processed and sold or disposed of as provided by this article.
Any person, firm, copartnership or corporation violating any provision of this article shall, upon conviction, be subject to a fine not more than $250 or imprisonment for not more than 15 days, or both.


Plaintiff Beatrice Fontana, by her attorney, brought this action pursuant to 42 U.S.C. §405 (g) to review a final decision of the defendant Commissioner of Social Security that she is not entitled to wife's insurance benefits as a divorced spouse under the Social Security Act.
On June 7, 1993 plaintiff filed an application for wife's insurance benefits as a divorced spouse based on the earnings record of John Fontana. The Commissioners denied this application initially and on reconsideration.
Plaintiff then requested a hearing, which was held on April 11, 1995. In a decision dated February 22, 1996, the Administrative Law Judge determined that plaintiff was entitled to wife's insurance benefits as a divorced spouse based on her marriage to John Fontana. The Appeals Council notified plaintiff on April 12, 1996 that it intended to conduct a review of this decision on its own motion. On June 7, 1996 the Appeals Council vacated the judgment of the Administrative Law Judge, holding that plaintiff was not entitled to wife's insurance benefits as the divorced or deemed wife of John Fontana. This action followed.
The Administrative Law Judge made the following formal findings.
Plaintiff and John Fontana were wed on February 22, 1961 in Stamford, Connecticut, a second marriage for both. John had obtained a Mexican judgment of divorce to be valid. John had obtained a Mexican judgment of divorce from his first marriage to Dora Fontana on December 30, 1960. Plaintiff believed this divorce to be valid. John Fontana and the plaintiff lived together as husband and wife for 27 years.
In 1988 plaintiff left John Fontana, and filed for divorce on August 11, 1988. At the divorce hearing, Dora Fontana appeared and testified on behalf of John Fontana that she was never served with a copy of the Mexican divorce papers from 1960. The New York State Supreme Court, Nassau County, annulled the marriage between plaintiff and John on October 4, 1991. Dora was granted a divorce in June 1990. On June 7, 1993 plaintiff filed the application for wife's insurance benefits.
This case presents an issue of law not yet addressed by courts in this circuit. Plaintiff argues that she is eligible for wife's insurance benefits under the Social Security Act as a divorced "deemed" wife.
(D) is not entitled to old-age or disability insurance benefits.
The Commissioner argues that plaintiff is not a "divorced wife" for purposes of the Social Security Act.
To decide your relationship as the insured's wife or husband, we look to the laws of the State where the insured had a permanent home when you applied for wife's or husband's benefits. . ..If you and the insured were validly married under State law at the time you apply for wife's or husband's benefits or at the time the insured died if you apply for widow's, widower's, mother's, or father's benefits, the relationship requirement will be met.
John Fontana was domiciled in New York at the time that plaintiff filed her application. Under N.Y. Dom. Rel. Law §6, a marriage is void if entered into by a person who was never divorced from his previous spouse. John Fontana's Mexican divorce form Dora Fontana is not valid in New York because it was obtained without personal service of Dora Fontana. See Rosenstiel v. Rosenstiel, 16 N.Y.2d 64, 262 N.Y.S.2d 86 (Ct. App. 1965). Consequently, plaintiff and John Fontana were not validly married under New York state law. In recognition of this, the New York State Supreme Court granted plaintiff an annulment, rather than a divorce, to dissolve plaintiff's relationship with John Fontana.
in good faith, you went through a marriage ceremony with the insured that would have resulted in a valid marriage except for a legal impediment. A legal impediment includes only an impediment. A legal impediment includes only an impediment which results because a previous marriage had not ended at the time of the ceremony or because there was a defect in the procedure followed in connection with the intended marriage. . ..Good faith means that at the time of the ceremony you did not know that a legal impediment existed, or if you did know, you thought that it would not prevent a valid marriage.
[when an] applicant is not the wife, divorced wife, widow, surviving divorced wife, husband, divorced husband, widower, or surviving divorced husband of [the insured], but it is established . . . that such applicant in good faith went through a marriage ceremony with such individual resulting in a purported marriage between them which, but for a legal impediment not known to the applicant at the time of such ceremony, would have been a valid marriage, then . . . such purported marriage shall be deemed to be a valid marriage.
Plaintiff's marriage to John Fontana would have been valid for this prior marriage to Dora Fontana. The Administrative Law Judge determined that plaintiff went through a marriage ceremony with John Fontana in good faith, and the evidence in the record supports this conclusion.
[I]n the case of any person who would be deemed . . . a wife, widow, husband, or widower of the insured individual, such marriage shall not be deemed to be a valid marriage unless the applicant and the insured individuals were living in the same household at the time of the death of the insured individual or (if the insured individual is living) at the time the applicant files the application.
Similarly, 20 C.F.R §404.346 states that: "To be entitled to benefits as a wife, husband, widow, or widower as the result of a deemed valid marriage, you and the insured must have been living in the same household . . . at the time you apply for benefits." The Commissioner argues that these provisions require plaintiff to have been living with John Fontana when she applied for benefits.
This argument is without merit. The provisions relied on by the Commissioner apply only to applicants who would be entitled to benefits as a "wife, husband, widow, or widower," not as a divorced spouse. Both Title 42 and the C.F.R. distinguish applicants who are entitled to "wife's or husband's benefits as a divorced spouse" from applicants who are entitled to wife's, husband's widow's, or widower's benefits. See, e.g., 20 C.F.R. §404.330--404.335 42 U.S.C. §416 (a)-(h). A divorced spouse need not reside with her ex-husband at the time that she applies for benefits in order to receive these benefits. The Commissioner's argument would beget absurd results not comprehended by the statute.
The Commissioner contends that plaintiff is not a divorced spouse because she was not granted a proper divorce, but only an annulment. A "divorce" is defined in 42 U.S.C. §416 as "a divorce a vinculo matrimonii," that is a decree that effects a complete dissolution of the marriage contract. Black's Law Dictionary 136 (6th ed. 1990). The annulment of plaintiff's union with John Fontana completely dissolved their contract of marriage.
The Code of Federal Regulations considers the situation of an ex-spouse from a deemed valid marriage that is void "because a previous marriage had not ended at the time of the ceremony," 20 C.F.R. §404.346, and provides that such a person can qualify for benefits as a divorced spouse. 20 C.F.R. §404.331 (a)(1). Under New York law, a union void because a previous marriage has not ended at the time of the ceremony is dissolved through annulment. See, e.g., Jacobson v. Jacobson, 232 N.Y.S.2d 467 (S.Ct. 1962); N.Y. Dom. Rel. Law §6. The Commissioners's cramped definition of "divorce" would prohibit a spouse divorced from a deemed marriage in New York from applying for divorces wife's benefits, while permitting those benefits to an applicant whose former spouse resides in a state that dissolves bigamous unions through divorce rather than annulment. If every state followed New York's lead and required bigamous marriages to terminate in annulment, then under the Commissioner's definition of divorce no "deemed" wife would be able to utilize the provisions permitting divorced spouses from deemed marriages to receive benefits, rendering those provisions meaningless. The Commissioner's reading eviscerates the statute.
The conclusion that an annulment is equivalent to a divorce for purposes of the Social Security Act is supported by 20 C.F.R. §404.728, which describes how an applicant must prove that her marriage has ended. The Code of Federal Regulations considers "a copy of the decree of . . . annulment" evidence that a marriage has ended for the purposed of determining whether an applicant is entitled to divorced spouse's benefits.
Finally, the legislative history of the Social Security Act supports this Court's conclusion that a deemed wife can be entitled to wife's benefits as a divorced spouse.
It is not uncommon for a marriage to end in divorce after many years, when the wife is too old to build up a substantial social security earnings record even if she can find a job. . ..These changes would provide protection mainly for women who have spent their lives in marriages that are dissolved when they are far along in years -- especially housewives who have not been able to work and earn social security benefit protection of their own -- from loss of benefit rights.
1965 U.S.C.C.A.N. 1943, 2047 -- 48.
A deemed spouse who divorced the worker would be eligible for benefits on the same basis as if he or she were a divorced legal spouse.
1990 U.S.C.C.A.N. 2374, 2650. Plaintiff is just such a spouse.
This Court finds that a divorced spouse from a deemed valid marriage whose marriage was ended by annulment is eligible for wife's insurance benefits as a divorced spouse under the Social Security Act.
The case is remanded for further proceedings consistent with this memorandum and order.