Why are you here?

October 22nd, 2017

Back in June, Judge Newman took the USPTO to task for intervening in an appeal from an IPR proceeding in which the petitioner had withdrawn and the underlying district court case had been dismissed.  Judge Newman asked what in the world is the USPTO doing in the case and why is it squandering its time and talent in a case where the petitioner withdrew.

Judge Newman’s exchange with the USPTO was as follows:

Judge Newman:  What in the world is the Office doing in this case?  The petitioner withdrew — refuses to defend its win.  The district court case was dismissed. It’s over.  What is the interest of the Office in this conflict?  There’s no Article III conflict  between the Office and this Applicant.  Even if the Office prevails and there is an estoppel, it only affects this petitioner who has already withdrawn.  Why is the Office squandering its time and talent in this debate after the petitioner withdrew?

PTO:  Your Honor, the statute gives the Office the right to intervene in any appeal —

Judge Newman:  The statute can be interpreted as saying anything the Office wants to do, they can do.  I doubt very much that when the Director was authorized to intervene that that meant in anything that anybody felt like intervening in — but in a situation where you were defending some jurisdictional issue.  Here we have an expensive, heavily contested contest/appeal continuing, withdrawn in the district court, nobody seems to care except the Office.  Why should it matter?

PTO:  The Office cares because in large part this was a challenge to the procedures of the Office.  And, the Office has an interest in ensuring that its Board and the manner in which the Board is applying the AIA receives at least a counterpoint consideration.  And this court in many instances in which cases where the petitioner has dropped out has asked the PTO to participate or whether we will participate.  Now admittedly we do not have an order like that in this case.  But, the Director has exercised her statutory authority to participate in the appeal.  And, that is largely why.  It is to protect the integrity of the USPTO Office’s proceedings and the statute.

Judge Newman:  OK. We’ll see.  Thank you.


You can listen to Judge Newman’s exchange with the PTO here:


The entire oral argument is available here:


The court’s opinion in NFC v. Matal is available [here].


Mark Your Calendar: Supreme Court Oral Argument Date Set for Oil States

October 14th, 2017

The Supreme Court has set the date for oral argument in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC.  The argument will take place on November 27, 2017.  The question presented in Oil States is:

Issue: Whether inter partes review, an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents, violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.

Link to ScotusBlog: [Link].

The oral argument in SAS Institute Inc. v. Matal will also take place on November 27, 2017.  The question presented in that case is:

Issue: Whether 35 U.S.C. § 318(a), which provides that the Patent Trial and Appeal Board in an inter partes review “shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner,” requires that Board to issue a final written decision as to every claim challenged by the petitioner, or whether it allows that Board to issue a final written decision with respect to the patentability of only some of the patent claims challenged by the petitioner, as the U.S. Court of Appeals for the Federal Circuit held.

Link to ScotusBlog:  [Link].

Have you ever noticed how many amicus briefs the Houston Intellectual Property Law Association (HIPLA) files.  They really put to shame other bar organizations around the country, as far as engagement in the amicus process is concerned.

Oral argument of the week: RADWARE, LTD. v. F5 Networks, Inc.

October 13th, 2017

The oral argument of the week comes from RADWARE, LTD. v. F5 NETWORKS, INC., No. 2017-1212 (Fed. Cir. Sept. 18, 2017).

Those of you who follow the Finjan line of cases and whether inaccessible modules of software code can be considered capable of infringing will find this case interesting — particularly with respect to damages issues.

I have noted before that I am not particularly fond of the decision in Finjan because I think it requires a claim to be construed to cover inoperable features — and similarly converts the claim to a mere aggregation of elements.  You can see my previous post [here].

The oral argument from RADWARE is available here:


The court’s Rule 36 treatment of the appeal and cross-appeal in RADWARE is available [here].

For more background, one of Judge Whyte’s rulings from the district court is available [here].

Oral Argument of the Day: Intellectual Ventures I, LLC v. Motorola Mobility LLC

October 12th, 2017

The oral argument of the day is from INTELLECTUAL VENTURES I LLC v. MOTOROLA MOBILITY LLC, No. 2016-1795 (Fed. Cir. Sept. 13, 2017).

The oral argument will be of interest to those who follow Centillion v. Qwest issues.

The court’s opinion is available [here].

The oral argument recording is accessible below:

Not your typical analogy

October 5th, 2017

There are analogies — and then there are analogies that make you sit up and take notice.

Judge O’Malley was discussing contingent threats with an advocate during the oral argument of FIRST DATA CORPORATION v. INSELBERG, No. 2016-2677 (Fed. Cir. Sept. 15, 2017) when she used this real-life example of having received a death threat from a litigant — presumably during her district court judge days — and the US Marshall’s office having classified it as merely a contingent threat:

Oral argument of the day: Enzo v. Applera

September 25th, 2017

The oral argument of the day is from ENZO BIOCHEM INC. et al. v. APPLERA CORP. et al., Appeal No. 2016-1881 (Fed. Cir. Aug. 2, 2017).  The oral argument is interesting for its discussion of doctrine of equivalents issues — particularly the specific exclusion principle.

You can listen to the oral argument here:


You can read Judge O’Malley’s opinion for the court [here].

Hot Bench: Ultratec v. CaptionCall

September 20th, 2017

The oral argument in Ultratec, Inc. v. CaptionCall, LLC is a good example of a hot bench, Federal Circuit style.

The oral argument is available here:


Judge Moore’s opinion for the court is available here:  [Link].

If you note the 1:08:20 mark, the attorney for the Solicitor’s Office references examples of proceedings of the Board that she has listened in on.  I thought that was curious.  One normally does not think of the Solicitor’s Office as listening in on PTAB proceedings.

Federal Circuit peeling out for the Big Apple

September 18th, 2017


Next month, the Federal Circuit will be sitting in New York for part of its oral argument calendar.    Here is a list of the oral argument proceedings as published on the Federal Circuit website on September 15, 2017:

Panel A:  Tuesday, October 03, 2017, 10:00 A.M. — U.S. Court of International Trade, 1 Federal Plaza, New York, NY 10278, Ceremonial Courtroom
16-2300 MSPB O’Lague v. DVA [argued]
17-1120 DCT Janssen Biotech, Inc. v. Celltrion Healthcare Co., Ltd. [argued]
17-1257 PATO In Re Janssen Biotech, Inc. [argued]
17-1147 DCT Intellectual Ventures I LLC v. Erie Indemnity Company [argued]
Panel B:  Tuesday, October 03, 2017, 2:00 P.M. — Benjamin N. Cardozo School of Law, 55 5th Ave., New York, NY, 10003, Jacob Burns Moot Courtroom
16-2209 PATO PAVO Solutions LLC v. Kingston Technology Company [argued]
17-1010 DCT Amgen Inc. v. Apotex Inc. [argued]
17-1067 PATO In Re Levenstein [argued]
17-1218 CFC H.L. v. HHS [argued]
Panel C:  Wednesday, October 04, 2017, 10:00 A.M. — U.S. Court of Appeals for the Second Circuit, 40 Foley Square, New York, NY 10007, Courtroom 1505
16-2362 DCT InterDigital Communications v. ZTE Corporation [argued]
17-1033 DCT Classen Immunotherapies, Inc. v. Elan Pharmaceuticals, Inc. [argued]
17-1126 PATO In Re Docter Optics, SE [argued]
17-1405 CFC Simmons v. HHS [argued]
Panel D:  Wednesday, October 04, 2017, 2:00 P.M. — New York University Law School, 40 Washington Square South, New York, NY 10012, Greenberg Lounge
16-2307 PATO In Re Openings [argued]
16-2589 CFC Securiforce International v. US [argued]
16-2688 DCT R+L Carriers, Inc. v. Microdea, Inc. [argued]
17-1172 DCT Industrial Models, Inc. v. SNF, Inc. [argued]
Panel E:  Thursday, October 05, 2017, 10:00 A.M. — Fordham University School of Law, 150 West 62nd St., New York, NY 10023, Moot Courtroom 1-01
16-1770 DCT BASF Corporation v. Johnson Matthey Inc. [argued]
16-2386 DCT Travel Sentry, Inc. v. David Tropp [argued]
16-2745 PATO University of Maryland Biotech v. Presens Precision Sensing GMBH [argued]
17-1016 DCT ART+COM Innovationpool GmbH v. Google Inc. [argued]
17-1884 CFC Baker v. US [on the briefs]
Panel F:  Thursday, October 05, 2017, 10:00 A.M. — Columbia Law School, 435 W. 116th St., New York, NY 10027, Proskauer Auditorium Room 104
16-2140 PATO Droplets, Inc. v. Matal [argued]
16-2672 DCT Whitepages, Inc. v. Isaacs [argued]
17-1032 PATO Monsanto Technology LLC v. E.I. DuPont de Nemours [argued]
17-1041 DCT Nice Systems Ltd. v. ClickFox  Inc. [argued]
17-1597 MSPB Anderson v. OPM [on the briefs]

Updated Interim Eligibility Guidance Quick Reference Sheet

September 11th, 2017

The USPTO has updated its subject matter eligibility page with a new quick reference sheet entitled: “Interim Eligibility Guidance Quick Reference Sheet.”  It is reproduced below and [here].  The April 2017 version is available [here].  The end of July 2017 version is available [here].


A Legal Eagle’s Legal Eagle

September 5th, 2017

Back in 1984, the New York Times ran an article on William Bryson, now a senior judge of the Federal Circuit.  At the time, Judge Bryson was special counsel to the chief of the Organized Crime and Racketeering Section in the Department of Justice.

I thought his comments about eating at  Burger King prior to oral argument in New York were interesting [Link]:

For the oral argument, Mr. Bryson flies in the night before and studies in his hotel room ”either till I’m prepared, or I think it’s hopeless.”

Having It His Way

On every visit to each city where he handles cases, he has developed a ritual of having dinner and breakfast in the same undistinguished places. ”In New York, I go for dinner to a particular Burger King on Third Avenue,” he said. ”Burger King is perfect for my anxiety level. Otherwise, I’d be wasting good food on a churning stomach.”

He is ”crushed” if his regular place in any given city is closed when he arrives. ”I fear for the argument if that happens,” he said.

The typical oral argument may last 20 to 30 minutes. ”That’s not a lot of time for the anxiety I’ve described,” he conceded, ”but you can make a lot of mistakes in 10 minutes, which I’ve proved to be true.”

If Judge Bryson makes the trip with the Federal Circuit for oral arguments in New York in October, I wonder if he’ll keep up the Burger King tradition.