717 Madison Place

Assuming Chief Judge Moore serves out the remaining three years of her seven year term as Chief Judge of the Federal Circuit, can you answer who will be the next Chief Judge of the Federal Circuit?

[More below the break]

I ran across this quote this evening and thought it might have a place in somebody’s brief to the Supreme Court about the Federal Circuit’s Rule 36 problem:

When you want to hurry something, that means you no longer care about it and want to get on to other things.

Robert M. Pirsig (2009). “Zen and the Art of Motorcycle Maintenance: An Inquiry Into Values”, p.34, Harper Collins.

Benjamin Graham was a famous investor and polymath as well as author of the book “The Intelligent Investor.” That book was recently updated with commentary by Jason Zweig. Warren Buffet, who studied under Graham, writes of the book: “I read the first edition of this book early in 1950, when I was nineteen. I thought then that it was by far the best book about investing ever written. I still think it is.”

Graham was also an inventor. He received two US patents: 3122314 and 2892586.

I was listening to a CLE webinar over the weekend on the subject of design patents. The presenters used an apt phrase that I had not heard before: “The Mr. Potato Head rejection.” I’ve heard of a Frankenstein (or Frankenstein’s monster) rejection/argument; but, Mr. Potato Head might capture the idea even better. See these earlier posts on the Frankenstein’s monster rejection: [Link 1] [Link 2].

Interestingly, Hasbro, Inc. actually obtained a patent on a talking Mr. Potato Head. I suppose any rejection they received in the prosecution of that application was by definition a Mr. Potato Head rejection.

In honor of the Mr. Potato Head rejection, the quote for the day comes from the 1950 case of In Re Jennings where the wise judges of the CCPA mashed a five-reference combination of references:

In the instant case individual features seem to have been selected from different of the reference patents and compared with features shown in appellant’s drawings. In other words, it seems to have been held that by selecting features taken from five different patents, that is, one feature from one patent, another from another, etc., a device might be considered which would so closely resemble the drawings of appellant that his design would not be patentable over such possible construction.

We feel constrained to disagree with the concurring conclusions reached by the tribunals of the Patent Office.

In considering patentability of a proposed design the appearance of the design must be viewed as a whole, as shown by the drawing, or drawings, and compared with something in existence — not with something that might be brought into existence by selecting individual features from prior art and combining them, particularly where combining them would require modification of every individual feature, as would be required here.

In re Jennings, 182 F.2d 207, 208, 86 (CCPA 1950).

I saw that former US Solicitor General Ted Olson passed away. In 2007, he appeared at the Supreme Court to argue the case of Microsoft v. ATT opposite former Solicitor General Seth Waxman. I thought that might be a good oral argument of the day. Listen:

Audio from https://www.oyez.org/cases/2006/05-1056.

With hurricanes on our minds this week, I thought it would be a good time to re-publish this post from October 10, 2019:

With hundreds of thousands without power in Northern California and power grid vulnerabilities in question, a patent attorney’s mind naturally turns to the Electric Power Group case. Electric Power Group was discussed at some length in this year’s oral argument in POWER ANALYTICS CORPORATION v. OPERATION TECHNOLOGY INC., No. 2018-1428 (Fed. Cir. Jan. 15, 2019). [Link].

You can listen to that oral argument here:

What I thought was particularly interesting was Judge Dyk chiming in to Judge Chen’s hypothetical question about the patent eligibility of a model for predicting the path of a hurricane. One is always interested to hear of things that Judge Dyk might believe are patentable. You can listen to that questioning here:

I also thought that this was an interesting comment by Judge Chen: “there are big data solutions out there that seem to be very valuable and so therefore you would think, instinctively, ought to be part of the patent system.”

In case you want to look at one of the Electric Power Group claims, it is shown below:

12. A method of detecting events on an interconnected electric power grid in real time over a wide area and automatically analyzing the events on the interconnected electric power grid, the method comprising:

receiving a plurality of data streams, each of the data streams comprising sub-second, time stamped synchronized phasor measurements wherein the measurements in each stream are collected in real time at geographically distinct points over the wide area of the interconnected electric power grid, the wide area comprising at least two elements from among control areas, transmission companies, utilities, regional reliability coordinators, and reliability jurisdictions;

receiving data from other power system data sources, the other power system data sources comprising at least one of transmission maps, power plant locations, EMS/SCADA systems;

receiving data from a plurality of non-grid data sources;

1352*1352 detecting and analyzing events in realtime from the plurality of data streams from the wide area based on at least one of limits, sensitivities and rates of change for one or more measurements from the data streams and dynamic stability metrics derived from analysis of the measurements from the data streams including at least one of frequency instability, voltages, power flows, phase angles, damping, and oscillation modes, derived from the phasor measurements and the other power system data sources in which the metrics are indicative of events, grid stress, and/or grid instability, over the wide area;

displaying the event analysis results and diagnoses of events and associated ones of the metrics from different categories of data and the derived metrics in visuals, tables, charts, or combinations thereof, the data comprising at least one of monitoring data, tracking data, historical data, prediction data, and summary data;

displaying concurrent visualization of measurements from the data streams and the dynamic stability metrics directed to the wide area of the interconnected electric power grid;

accumulating and updating the measurements from the data streams and the dynamic stability metrics, grid data, and non-grid data in real time as to wide area and local area portions of the interconnected electric power grid; and

deriving a composite indicator of reliability that is an indicator of power grid vulnerability and is derived from a combination of one or more real time measurements or computations of measurements from the data streams and the dynamic stability metrics covering the wide area as well as non-power grid data received from the non-grid data source.

The Tenth Circuit recently reviewed a summary judgment by a district court on the scope of the term “intellectual property” in a contract governed by Colorado law. [LINK]. Particularly, the dispute dealt with whether password information was “intellectual property” that had to be returned. Interestingly, the Tenth Circuit reversed the district court and held, based on the arguments presented by the parties in this instance, that the contract’s use of the term “intellectual property” was ambiguous as to whether it included password information.

Both sides present plausible interpretations. On the one hand, login information does involve a mental creation, which could trigger the district court’s broad definition of intellectual property. In addition, the login information is needed for the Commission to access account records, which could constitute intellectual property. See Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 360 (1991)(stating that compilations of facts or preexisting data can be copyrighted to the extent that the work features an original selection, coordination, or arrangement).

On the other hand, the Commission relies on the login information itself rather than the account records. The login information serves as identifying information, like a birthdate or Social Security number, and few people would regard a birthdate or Social Security number as intellectual property. So the contract is ambiguous on whether the login information constituted intellectual property.

INTERSTATE MEDICAL LICENSURE COMPACT COMMISSION v. Bowling, No. 23-1291 at 17-18 (10th Cir. Aug. 30, 2024).

The oral argument was notable in that it was argued on one side by students from the University of Colorado Law School Appellate Advocacy Practicum. I thought they did an excellent job.

How comfortable are you that a court would know the scope of “intellectual property” under your state’s law?

You can listen to the oral argument here: [Listen].

The 717 Madison Place blog is celebrating its fifteenth anniversary this month. I think my favorite sound bite is still from the first post. Judge Michel (now retired) was the judge asking the question.

This is a brother-in-law case, your honor.

Tuesday, June 16th, 2009

Oral arguments at the Court of Appeals for the Federal Circuit not only may provide some insight into the viewpoints of the various judges; but, these arguments sometimes provide opportunities for humor, as this recent exchange in Crater Corp. v. Lucent Technologies demonstrated: [Listen]

Believe it or not, the twentieth anniversary of the Supreme Court decision in eBay v. MercExchange is quickly approaching — it will be twenty years in May of 2026. The oral argument in this case took place before oral arguments of the Supreme Court were timely available. I thought it might be of interest to some to post the oral argument.

With almost twenty years of hindsight, I found it interesting to look back on some of the judges’ comments.

You can listen to the oral argument here:

Here are some sound bites from the oral argument:

Justice Scalia on the patent right:

Chief Justice Roberts on the improper concern over business method patents:

Justice Breyer’s concern that in 2006 A&P might patent the method of running a supermarket — and some people say that the Supreme Court doesn’t understand patent law . . . . :

Seth Waxman referencing “self-proclaimed” intellectual property professors signing on to amicus briefs:

The oral argument of the day is from In re Stepan. The appeal in this case dealt with whether one could assert that it is merely routine optimization to modify a single reference in a §103 rejection in the unpredictable arts. There was a split decision with Judges Moore and O’Malley in the majority and Judge Lourie in the dissent.

One interesting quote from the majority decision was:

 Because the Board failed to adequately articulate its reasoning, erroneously rejected relevant evidence of nonobviousness, and improperly shifted to Stepan the burden of proving patentability, we vacate the Board’s decision that claims 1-31 of the ‘567 application would have been obvious.

The Board failed to explain why it would have been “routine optimization” to select and adjust the claimed surfactants and achieve a cloud point above at least 70°C. See J.A. 8-9. “The agency tribunal must make findings of relevant facts, and present its reasoning in sufficient detail that the court may conduct meaningful review of the agency action.” In re Lee, 277 F.3d 1338, 1346 (Fed. Cir. 2002). Stating that a person of ordinary skill in the art would have arrived at the claimed invention through routine optimization falls short of this standard. Missing from the Board’s analysis is an explanation as to why it would have been routine optimization to arrive at the claimed invention. Similar to cases in which the Board found claimed inventions would have been “intuitive” or “common sense,” the Board must provide some rational underpinning explaining why a person of ordinary skill in the art would have arrived at the claimed invention through routine optimization. See, e.g., Van Os, 844 F.3d at 1361 (“Absent some articulated rationale, a finding that a combination of prior art would have been `common sense’ or `intuitive’ is no different than merely stating the combination `would have been obvious.'”); Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016) (“[R]eferences to `common sense’ … cannot be used as a wholesale substitute for reasoned analysis and evidentiary support….”). Absent some additional reasoning, the Board’s finding that a skilled artisan would have arrived at the claimed invention through routine optimization is insufficient to support a conclusion of obviousness.

In re Stepan Co., 868 F.3d 1342, 1346 (Fed. Cir. 2017).

You can listen to the oral argument here:

I had to chuckle that after the appeal was returned to the Board and remanded to the Examiner, the Examiner relied upon a new single reference and made this statement:

The Applicant eventually had to file a second appeal to the Board before modified claims were allowed.

You can review the subsequent file history here: Link.

In the second appeal decision, the Board wrote:

The Federal Circuit overruled the Rosen-reference test today with respect to design patents. The Rosen-reference test utilized a “primary” reference for obviousness analysis. In some oral arguments concerning utility patents, I think some of the younger Federal Circuit judges have infused “primary reference” into oral arguments when informally discussing utility patent obviousness. That always alarmed me, as it seemed improper. Today, however, I saw this quote from Judge Rich:

In a case of this type where a rejection is predicated on two references each containing pertinent disclosure which has been pointed out to the applicant, we deem it to be of no significance, but merely a matter of exposition, that the rejection is stated to be on A in view of B instead of on B in view of A, or to term one reference primary and the other secondary. It would perhaps have saved much argument of the kind we have before us if the Patent Office had stayed with its rejection of the claims as unpatentable over A and B “considered together” and had merely stated its reasons for such rejection without formal alinement of the references. Fifteen years ago this court pointed out in In re Cowles, 156 F.2d 551, 554, 33 CCPA 1236, that such differing forms of expression did not constitute different grounds of rejection, were of little consequence, and that basing arguments on them was “attempting to make a mountain out of a mole-hill.”

Application of Bush, 296 F.2d 491, 496 (C.C.P.A. 1961).

Don’t forget that you can increase the playback speed in order to decrease the time it takes to listen to an oral argument recording.