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Lisa Larrimore Ouellette has a post on the recent GW symposium on patent eligible subject matter.  Looks like good material.  Chief Judge Michel (ret.) took part.  Here’s the link: [Link].

Sometimes the Federal Circuit seems to send mixed messages.  In the oral argument of Cradle IP, LLC v. Texas Instruments, Inc. that took place on December 2, 2014, Judge Dyk chastised the appellant for challenging claim constructions by the district court that were unnecessary for reviewing the judgment in the case.  [Listen].  However, yesterday in Lexington Luminance, LLP v. Amazon.com, Inc., Judge Lourie writing for the court noted:

By the way, the Cradle IP v. Texas Instruments case is a “configuration” case. So, even though the Federal Circuit issued a rule 36 decision, the oral argument recording has some discussion of Nazomi, Typhoon Touch, and other configuration cases. There was no mention of Finjan, however.

I was reminded of Chief Justice Marshall’s statement for the Court in Marbury v. Madison:

It is emphatically the province and duty of the judicial department to say what the law is. Those who apply the rule to particular cases, must of necessity expound and interpret that rule.

Chief Justice John Marshall for the Court, Marbury v. Madison, 5 U.S. 137, 177 (1803).

One wonders what Chief Justice Marshall would think of the Court’s opinions in recent patent and copyright cases:

The question before us is whether the claims do significantly more than simply describe these natural relations. To put the matter more precisely, do the patent claims add enough to their statements of the correlations to allow the processes they describe to qualify as patent-eligible processes that apply natural laws? We believe that the answer to this question is no.

Justice Breyer for the Court, Mayo Collaborative v. Prometheus Labs., 132 S. Ct. 1289, 566 U.S. 10, 182 L. Ed. 2d 321 (2012)(emphasis in the original).

In any event, we need not labor to delimit the precise contours of the “abstract ideas” category in this case. It is enough to recognize that there is no meaningful distinction between the concept of risk hedging in Bilski and the concept of intermediated settlement at issue here. Both are squarely within the realm of “abstract ideas” as we have used that term.

Justice Thomas for the Court, Alice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S. Ct. 2347, 573 U.S., 189 L. Ed. 2d 296 (2014).

In other cases involving different kinds of service or technology providers, a user’s involvement in the operation of the provider’s equipment and selection of the content transmitted may well bear on whether the provider performs within the meaning of the Act. But the many similarities between Aereo and cable companies, considered in light of Congress’ basic purposes in amending the Copyright Act, convince us that this difference is not critical here. We conclude that Aereo is not just an equipment supplier and that Aereo “perform[s].”

Justice Breyer for the Court, American Broadcasting v. Aereo, Inc., 134 S. Ct. 2498, 573 U.S., 189 L. Ed. 2d 476 (2014). (The dissenting opinion characterized this as the “looks like cable TV standard.”)

Insofar as there are differences, those differences concern not the nature of the service that Aereo provides so much as the technological manner in which it provides the service. We conclude that those differences are not adequate to place Aereo’s activities outside the scope of the Act.

Justice Breyer for the Court, American Broadcasting v. Aereo, Inc., 134 S. Ct. 2498, 573 U.S., 189 L. Ed. 2d 476 (2014).

Here’s a link to the new USPTO patent eligibility examples, if you were looking for them:  [Link].

Here is another §101 opinion by Judge Pfaelzer, from the case of Enfish v. Microsoft:  [Enfish].

If you are feeling beaten down by all the §101 cases finding inventions patent-ineligible, you might find Judge Pfaelzer’s opinion in Cal. Inst. of Tech. v. Hughes Communs., Inc. refreshing.

I couldn’t find a copy of the opinion on the internet; so, you can view it [here].

With Valentine’s Day approaching you may be wondering what to get that special patent professional in your life.  Here are a few options:

1)  An oldie, but a goodie:  The IP Man movie poster.

2)  The Mayo v. Prometheus T-Shirt

Was your Valentine an amicus in Mayo v. Prometheus?  Celebrate the Supreme Court and the clarity that it has brought to 35 U.S.C. §101.

3)  Special Effects Nose Wax

A patent attorney can always use more nose wax despite what the Supreme Court said in White v. Dunbar, 119 U.S. 47 (1886):

Some persons seem to suppose that a claim in a patent is like a nose of wax, which may be turned and twisted in any direction, by merely referring to the specification, so as to make it include something more than, or something different from, what its words express. The context may undoubtedly be resorted to, and often is resorted to, for the purpose of better understanding the meaning of the claim, but not for the purpose of changing it and making it different from what it is. The claim is a statutory requirement, prescribed for the very purpose of making the patentee define precisely what his invention is, and it is unjust to the public, as well as an evasion of the law, to construe it in a manner different from the plain import of its terms.”

Interesting quote from Octane Fitness v. Icon Health & Fitness, 134 S. Ct. 1749, 1758 (2014):

We reject Brooks Furniture for another reason: It is so demanding that it would appear to render § 285 largely superfluous. We have long recognized a common-law exception to the general “American rule” against fee-shifting — an exception, “inherent” in the “power [of] the courts” that applies for “`willful disobedience of a court order’” or “when the losing party has `acted in bad faith, vexatiously, wantonly, or for oppressive reasons….’” Alyeska Pipeline Service Co. v. Wilderness Society,421 U.S. 240, 258-259, 95 S.Ct. 1612, 44 L.Ed.2d 141 (1975). We have twice declined to construe fee-shifting provisions narrowly on the basis that doing so would render them superfluous, given the background exception to the American rule, seeChristiansburg Garment Co. v. EEOC, 434 U.S. 412, 419, 98 S.Ct. 694, 54 L.Ed.2d 648 (1978); Newman v. Piggie Park Enterprises, Inc., 390 U.S. 400, 402, n. 4, 88 S.Ct. 964, 19 L.Ed.2d 1263 (1968) (per curiam), and we again decline to do so here.

Something to keep in mind the next time you are considering whether Alice v. CLS Bank renders 35 U.S.C. §103 largely superfluous for certain types of inventions.

Perhaps Mackey v. Lanier Collection Agency & Service, Inc., 486 U.S. 825, 108 S. Ct. 2182, 100 L. Ed. 2d 836 (1988) is more on point:

As our cases have noted in the past, we are hesitant to adopt an interpretation of a congressional enactment which renders superfluous another portion of that same law.

Id. (citing Massachusetts Mutual Life Ins. Co. v. Russell, 473 U. S. 134, 142 (1985); FEC v.National Conservative Political Action Committee, 470 U. S. 480, 486 (1985); Park ‘N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U. S. 189, 197 (1985); United States v. Generix Drug Corp., 460 U. S. 453, 458-459 (1983); Dickerson v. New Banner Institute, 460 U. S. 103, 118 (1983)).

UPDATED January 24, 2015:

Perhaps better still is this statement from Bilski v. Kappos, 130 S.Ct. 3218, 3228-29 (2010):

A conclusion that business methods are not patentable in any circumstances would render § 273 meaningless. This would violate the canon against interpreting any statutory provision in a manner that would render another provision superfluous. See Corley v. United States, 556 U.S. ___, ___, 129 S.Ct. 1558, 1566, 173 L.Ed.2d 443 (2009). This principle, of course, applies to interpreting any two provisions in the U.S.Code, even when Congress enacted the provisions at different times. See, e.g., Hague v. Committee for Industrial Organization, 307 U.S. 496, 529-530, 59 S.Ct. 954, 83 L.Ed. 1423 (1939) (opinion of Stone, J.). This established rule of statutory interpretation cannot be overcome by judicial speculation as to the subjective intent of various legislators in enacting the subsequent provision. Finally, while § 273 appears to leave open the possibility of some business method patents, it does not suggest broad patentability of such claimed inventions.

It is not uncommon during oral arguments to hear advocates refer to a particular appellate judge’s holding in a previous case.  Advocates are particularly fond of doing this during oral argument when they refer to an opinion that Judge Rich or a present panel member authored for the court.  During an oral argument at the Federal Circuit, Judge Moore pointed out to an advocate that holdings are by the court — not a particular judge.  The author of an opinion is merely listed as author on behalf of the majority of the panel.  In fact, Judge Moore used the words “pandering” and “insulting” in her pointed remarks to the advocate.  You can listen to those remarks here: [Listen].

(I’ve taken out all reference to the particular attorney.  Frankly, advocates make such references quite often; so, the advocate who was chastised is not alone.)

I was listening to the oral argument recording of B&B Hardware v. Hargis and was struck by the opening lines of the argument:

The Lanham Act contains only one concept of likelihood of confusion.  That is why two tribunals in this case decided the same issue, and that is why issue preclusion is appropriate.  Whether a court is considering registration or infringement or both at the same time, the statutory test is the same, whether the resemblance of the marks as used on particular goods would give rise to a likelihood of confusion or mistake or deceit.

It is uncanny how germane that analysis is to the argument over the  proper test for patent eligibility.  Namely, the Supreme Court has distorted the test for patent eligibility under 35 U.S.C. §101 into such a cockeyed farce that the meaning of invention under §101 is totally out of alignment with other sections of the Patent Act.  Under §§102, 103, 271, etc. an invention is assessed by looking at all claim limitations.  However, when it comes to §101, the Court has deviated by disregarding claim limitations as mere pre-solution or post-solution activity. Moreover, the Court has effectively regressed to a “gist of the invention” analysis that it previously repudiated in Aro I and Diehr.

To modify the argument above and apply it to patent eligibility, one might say:

The 1952 Patent Act contains only one concept of invention.  Whether a court is considering patent eligibility or infringement or both at the same time, the statutory test is the same, whether all claim limitations are satisfied.