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If somebody is looking for an article to write, I think it might be worthwhile to address the impact of 35 USC §121 on claim construction. What particularly should be addressed is: when a specification uses a phrase such as “the present invention,” should 35 USC §121 temper the impact of that language.

Historically, some patent applicants have probably innocently used the phrase “present invention” as a shorthand phrase in their specification. Moreover, the MPEP has historically counseled applicants to format their applications with phrases such as “Background of the Invention” and “Summary of the Invention.” At some point in recent history, the Federal Circuit seized on the “present invention” language in issued patents as a potentially limiting phrase. The Federal Circuit logic seems to be that an application when written can only be for one invention. So, any reference to the “present invention” impacts the claim construction. However, that logic ignores Congress’s express intent to allow there to be more than one invention disclosed in an application. Namely, 35 U.S.C. §121, the divisional statute, states:

§121. Divisional applications
If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions. If the other invention is made the subject of a divisional application which complies with the requirements of section 120 it shall be entitled to the benefit of the filing date of the original application. A patent issuing on an application with respect to which a requirement for restriction under this section has been made, or on an application filed as a result of such a requirement, shall not be used as a reference either in the Patent and Trademark Office or in the courts against a divisional application or against the original application or any patent issued on either of them, if the divisional application is filed before the issuance of the patent on the other application. The validity of a patent shall not be questioned for failure of the Director to require the application to be restricted to one invention.
(July 19, 1952, ch. 950, 66 Stat. 800
 ; Pub. L. 93–596,
 §1, Jan. 2, 1975, 88 Stat. 1949
 ; Pub. L. 106–113,
 div. B, §1000(a)(9) [title IV, §4732(a)(10)(A)], Nov. 29, 1999, 113 Stat. 1536
 , 1501A-582; Pub. L. 107–273,
 div. C, title III, §13206(b)(1)(B), Nov. 2, 2002, 116 Stat. 1906
 ; Pub. L. 112–29,
 §§4(a)(2), 20(j), Sept. 16, 2011, 125 Stat. 295
 , 335.)

Notably, 35 USC 121 recognizes that the Director’s power to restrict is discretionary and that a patent may issue in which the Director did not require the patent to be restricted to one invention. So, I think an interesting article could be written discussing whether the Federal Circuit’s jurisprudence on this topic fails to take into account 35 U.S.C. §121 and divisional practice. It might also be interesting to search a database of US issued patents to see how many divisional patents contain the phrase “the present invention.”

If you’d like to listen to an oral argument where “the present invention is” language came up quite often, the oral argument in CAMPBELL SOUP COMPANY v. GAMON PLUS, INC., No. 2020-2322 (Fed. Cir. Aug. 19, 2021) would be a good one to listen to:

In the Federal Circuit’s recent opinion in CUPP COMPUTING AS v. TREND MICRO INC., No. 2020-2262 (Fed. Cir. Nov. 16, 2022), the court made a statement that caught my eye. Judge Dyk writing for the court and the other members of the panel (Judges Taranto and Stark) wrote “We now make precedential . . . .” More specifically, he wrote:

We now make precedential the straightforward conclusion we drew in an earlier nonprecedential opinion: “[T]he Board is not required to accept a patent owner’s arguments as disclaimer when deciding the merits of those arguments.” VirnetX Inc. v. Mangrove Partners Master Fund, Ltd., 778 F. App’x 897, 910 (Fed. Cir. 2019). A rule permitting a patentee to tailor its claims in an IPR through argument alone would substantially undermine the IPR process. Congress designed inter partes review to “giv[e] the Patent Office significant power to revisit and revise earlier patent grants,” thus “protect[ing] the public’s paramount interest in seeing that patent monopolies are kept within their legitimate scope.” Cuozzo Speed Techs., LLC v. Lee, 579 U.S. 261, 272, 279-80 (2016) (internal quotation marks, citation, ellipses, and alterations omitted). If patentees could shapeshift their claims through argument in an IPR, they would frustrate the Patent Office’s power to “revisit” the claims it granted, and require focus on claims the patentee now wishes it had secured. See also Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, 138 S. Ct. 1365, 1373 (2018) (emphasis altered) (“[T]he decision to grant a patent is a matter involving . . . the grant of a public franchise. Inter partes review is simply a reconsideration of that grant.”).

That struck me as such an unusual choice of words for a court to write; so, I was curious how often the Federal Circuit uses the phrase “we now make precedential.” Interestingly, this is the only time the court has used the phrase. The CCPA never used the phrase — but, now that I think about it, due to the size of their panels, each of their opinions was precedential. And, the Supreme Court has never used the phrase. Odd.

ENIAC was a computer built in 1946. Unlike modern computers, this machine was externally programmed; its circuitry had to be manually rewired each time it was used to perform a new task. See Gemignani, Legal Protection for Computer Software: The View From `79, 7 Rutgers J. Computers, Tech. & L. 269, 270 (1980).

So, do you consider ENIAC to have been a “general purpose computer”?

Answer below the break.

The oral argument of the month stems from the case of QUALCOMM INC. v. Intel Corp., 6 F.4th 1256 (Fed. Cir. 2021). The oral argument is interesting for its discussion of two issues.

The first issue was whether a question asked by one judge of an IPR panel with respect to a purportedly undisputed claim construction limitation adequately put the parties on notice that that the limitation was in play for a different and sua sponte claim interpretation by the Board panel. Under the facts of this appeal, the Federal Circuit panel (Moore, Reyna, and Stoll) ruled that notice was not sufficient and that the parties were not given adequate opportunity to respond to the sua sponte claim construction ruling.

The second — and potentially more interesting issue — was whether use of a means plus function claim limitation that was supported by a circuit element in the specification further required that an algorithm for programming the circuit element be included as part of the structure of the MPF limitation. Namely, the claim used the term “means for determining a single power tracking signal . . ..” This claim limitation was supported in the specification by a “power tracking circuit.” Qualcomm contended that the algorithm (disclosed in the spec.) for programming the power tracking circuit must also be included as part of the structure in support of the MPF term. The Federal Circuit rejected that argument. Judge Moore was particularly vocal during the oral argument about the precedent that would set and the implications for thousands and thousands of patents in the electrical arts. You can listen to some of her comments here:

A similar sentiment is reflected in the court’s eventual opinion where the panel states:

Qualcomm asks us to extend the algorithm requirement to circuitry. See Oral Argument at 20:14-40 We decline to do so. The reasoning for the algorithm requirement of WMS Gaming does not apply to functions implemented through circuitry. Unlike a general-purpose computer or microprocessor, circuitry does not “perform very different tasks in very different ways.” Aristocrat, 521 F.3d at 1333. Nor does circuitry require special programming to perform particular functions. Cf. WMS Gaming, 184 F.3d at 1348. Circuitry therefore provides structure that necessarily limits the scope of a claim without the aid of special programming. Our holding is consistent with our prior precedent. See Nevro, 955 F.3d at 35, 42-43(“Nevro argues that the asserted patent specifications’ disclosure of a signal generator as the structure for this limitation should end the inquiry. We agree.”). Also, Qualcomm’s proposed extension would jeopardize a plethora of patents in the electrical arts that rely on circuitry as the corresponding structure for their means-plus-function claim limitations. Accordingly, we see no error with the Board’s construction of the power tracker limitation in claim 28.

QUALCOMM INC. v. Intel Corp., 6 F.4th 1256, 1267 (Fed. Cir. 2021)(emphasis added).

You can listen to the entire oral argument here:

An FPGA walks into a bar. His friend EEPROM asks him why he’s so late. “Oh, I took a circuitous route to get here.”

“Learning is not attained by chance, it must be sought for with ardor and attended to with diligence.”

Abigail Adams (1780)

I used to enjoy attending what I still think of as the Kayton Courses; namely, three day intensive courses on topics of interest to patent practitioners. With the internet, these courses seem to have fallen by the wayside. I hope that some enterprising group of practitioners will pick up the mantle and revive this format of courses. Maybe a group like Strafford could use their platform to expand into this type of deep-dive offering.

I think my September 1st resolution will be to be more proactive in sharing my thoughts about IP laws with my Congresspeople. If you are of the same mindset, I’ve added a link to the front page of this site called “Contact Your Congresspeople.” You should be able to use it to quickly find contact information for your personal Congresspeople, as well as membership lists for pertinent IP committees in Congress.

Don’t be shy about reaching out to your Congresspeople and inviting them to relevant meetings of the IP community. I’m sure they would welcome the opportunity to visit with members of their constituencies.

The Federal Circuit Judicial Conference is approaching. It is scheduled for September 7th, 2022 in Washington, D.C. Here’s the agenda:

2022 JUDICIAL CONFERENCE

Time	Description	Speakers
7:00 a.m.	Check-in Breakfast
8:30 a.m.	State of the Court and Welcome	Kimberly A. Moore, Chief Circuit Judge U.S. Court of Appeals for the Federal Circuit
8:45 a.m.	Federal Circuit Judges PanelMs. Maynard will moderate a panel discussion with the Judges of the Federal Circuit addressing observations from the bench about the best practices when advocating before that court and other matters of concern in the day-to-day handling of appeals in the Federal Circuit.	Moderator:Deanne E. Maynard, Partner Morrison Foerster LLPPanelists:The Judges of the Federal Circuit
10:15 a.m.	Networking Break
10:35 a.m.	Tribunal and Agency PanelJudge Taranto will moderate a discussion with judges and officials from tribunals within the Federal Circuit’s jurisdiction addressing trials, fact-finding, and decision-making in their respective tribunals.	Moderator:Richard G. Taranto, Circuit Judge U.S. Court of Appeals for the Federal CircuitPanelists:Margaret Bartley, Chief Judge U.S. Court of Appeals for Veterans ClaimsElaine D. Kaplan, Chief Judge U.S. Court of Federal ClaimsMark A. Barnett, Chief Judge U.S. Court of International ClaimsDavid S. Johanson, Chair U.S. International Trade CommissionCathy A. Harris, Acting Chair U.S. Merit Systems Protection BoardDerrick Brent, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director U.S. Patent and Trademark Office

Time	Description	Speakers
11:30 a.m.	Networking Break
12:15 p.m.	Luncheon
12:45 p.m.	Keynote Speaker	Elizabeth B. Prelogar Solicitor General of the United States
1:15 p.m.	American Inns of Court Professionalism Award	The American Inns of Court Professionalism Awards are awarded each year in participating federal courts to a lawyer or judge whose life and practice display sterling character and unquestioned integrity, coupled with ongoing dedication to the highest standards of the legal profession and the rule of law.
1:30 p.m.	Administrative Law Panel	Moderator:Paul D. Clement, Partner Clement & Murphy PLLCPanelists:Raymond T. Chen, Circuit Judge U.S. Court of Appeals for the Federal CircuitPatricia A. Millett, Circuit Judge District of Columbia Circuit Court of AppealsLisa Blatt, Partner Williams & Connolly LLPJeffrey A. Lamken, Partner MoloLamken LLP
2:45 p.m.	40th Anniversary: A Review of the Federal Circuit	Moderator:Timothy R. Holbrook, Vice Provost for Faculty Affairs and Asa Griggs Candler Professor of Law Emory University School of LawPanelists:Rochelle C. Dreyfuss, Pauline Newman Professor of Law; Co-Director, Engelberg Center on Innovation Law & Policy New York University School of LawScott M. McCaleb, Partner Wiley Rein LLPMark A. Robbins, Interim Executive Director U.S. Election Assistance CommissionMartin F. Hockey, Jr. Deputy Director U.S. Department of Justice Civil Division, Commercial Litigation BranchElizabeth J. Drake, Partner Schagrin Associates

I think the last panel looks interesting. SMU School of Law had a similar topic at its symposium last year, where it looked back at the Federal Circuit experiment. I thought this was an interesting discussion of whether the Federal Circuit is a “captured” specialized government body and whether inconsistent patent decisions stir the pot to give patent law and the Federal Circuit greater prominence and prestige:

One of the interesting aspects of the federal judiciary is that Article III judges sometimes sit by designation in courts other than their home court. From the Federal Circuit, Judge Dyk has sat by designation with the First Circuit on a regular basis. The Federal Circuit used to invite judges from other courts to sit by designation; but, it has not done so much recently. Quite frankly, that has been a good move. The court has its own challenges without having to deal with additional voices, who are likely less familiar with the vagaries of patent law. Plus, it avoids any uncomfortable conversations about the Federal Circuit’s patent eligibility jurisprudence.

You can see some of the First Circuit opinions that Judge Dyk has been a part of in recent years at this [Link]. In a cursory search, I did not come across any Rule 36 Judgments in this list.

Judge Cunningham was confirmed by the Senate more than a year ago. It is interesting how limited an opportunity she has been given by her colleagues to write any patent opinions. The court issues so many Rule 36 opinions that Judge Cunningham has only had a chance to author a handful of patent/trademark opinions herself. By my count, these are the only three patent/trademark “opinions” that she has authored — although this list includes some “orders” of the court relating to patent cases:

So, we continue to play wait-and-see as to which direction Judge Cunningham will lean, if at all.

Judge Nina Wang was confirmed by the Senate last week as Colorado’s newest US District Court judge. Judge Wang has a good deal of patent law experience and has taught patent litigation and trial advocacy at the University of Colorado Law School. Here’s a link to an earlier post: [Link]. Here is an announcement: [Link].

It will be interesting to see if the US District Court for Colorado experiences an uptick in patent lawsuit filings.

We are finally starting to get some insight into the behind the scenes operation (meddling?) in the management of PTAB panels. The Government Accountability Office has released a report with respect to the operation of the PTAB. One of the important facts revealed by the report is that: “the majority of judges (75 percent) surveyed by GAO responded that the oversight practiced by U.S. Patent and Trademark Office (USPTO) directors and PTAB management has affected their independence, with nearly a quarter citing a large effect on independence.”

Also, “the majority of judges GAO surveyed reported they experienced pressure to adhere to management comments and to change or modify an aspect of their decision for an America Invents Act (AIA) trial on challenges to the validity of issued patents.”

The public always assumes that there is transparency in the operation of the PTAB. But, what do we really know about the machinery at work behind the scenes? PTAB judges must meet certain technical and legal requirements to serve as PTAB judges, with the assumption that they are the ones making decisions on a particular case. What do we know of the technical and legal CV’s of the behind-the-scenes people requesting changes in opinions?

The GAO report is available here: [Link].

Update: 7/21/22, 12:45 MDT

by Bill Vobach

The US Solicitor General’s office has filed its brief in American Axle v. Neapco. The SG recommends that the Supreme Court grant certiorari in the case and asserts that the Federal Circuit was wrong in this decision.

You can listen to the oral argument at the Federal Circuit here:

You can review the Federal Circuit’s original opinion here: [Link].

You can review the Federal Circuit’s modified opinion here: [Link].

You can review then-district-court-judge Stark’s opinion here: [Link].

Update 5/30/22:

Some interesting quotes from Judge Moore’s dissents in the original opinion and the updated opinion:

Update 5/31/22:

Having recently attended a CLE about Alice and Electric Power Group, these bears try to scratch off the accompanying funk:

The oral argument of the day is an old one from the Ninth Circuit, Cetacean Community v. Bush, 386 F.3d 1169 (9th Cir. 2004). The case concerns whether Congress has the authority to grant animals standing to sue.

You can listen to the oral argument here:

One of the questions asked was how do animals give their consent for attorneys to represent them in court?

The Federal Circuit defers to the law of the regional circuits on matters of procedural law that do not implicate issues of patent law. Midwest Indus., Inc. v. Karavan Trailers, Inc., 175 F.3d 1356, 1359, 50 USPQ2d 1672, 1675 (Fed.Cir. 1999) (en banc in relevant part).

The quote for the day comes from Judge Newman’s dissent in In re Schreiber: