Oil States’ Reply Brief

November 20th, 2017

The petitioner in the Oil States v. Greene’s Energy Group case has filed its reply brief. The reply brief is available [here].

From Federal Circuit Clerk to Supreme Court Fellow

November 17th, 2017

You might have noticed today two rather succinct opinions issued by the Federal Circuit.  One wonders if that is in response to recent criticism of the Federal Circuit for issuing so many Rule 36 opinions in patent related appeals.

I thought it was interesting that one of the Federal Circuit’s judicial clerks recently moved on to become a Supreme Court Fellow.  Namely, Judge O’Malley’s former clerk, Matthew Sipe, moved on to become a Supreme Court fellow assigned to the administrative office of the United States Courts. [Link].  You can listen to Judge O’Malley nominate Mr. Sipes for admission to the Federal Circuit Bar [here].

I have to admit that I had never heard the term “Supreme Court Fellow” before.  It appears that there are only four appointed each year.  At any rate, to the extent that the administrative office of the United States Courts has any influence on Congress, Mr. Sipes should be well-positioned to make the administrative office aware of the Federal Circuit’s plight and the possible need for Congress to propose legislation to create additional Federal Circuit judgeships to alleviate the Rule 36 problem.

Video of Oral Argument of Texas’ Patent Agent Privilege Case

November 11th, 2017

The Supreme Court of Texas heard oral argument the other day in In re Andrew Silver, the patent agent privilege case. The issue has been characterized as follows:

“The issue in this mandamus to rescind a discovery order is whether Texas evidence rule 503 protects confidential communications between a patent applicant and his non-attorney patent agent authorized to practice law in federal patent proceedings.”

You can watch the video recording of the oral argument [here].

David Hricik wrote about the USPTO’s new patent agent privilege rule [here].

Justice Souter (ret.) on the inestimable moral value of jurors

November 8th, 2017

With Oil States coming up for oral argument in a few weeks, it is interesting that five of the current Justices of the Supreme Court were recently present to hear Justice Souter’s comments about the inestimable moral value of jurors.

A Conversation with Six Justices of the Supreme Court

November 7th, 2017

I stole this from the Scotusblog, where I noticed it today:

Briefs for Oil States v. Greene’s Energy

November 7th, 2017

The Scotusblog is a great resource for seeing all the briefs that have been filed in pending Supreme Court cases.  You can see the briefing in Oil States v. Greene’s Energy at this [link].

Oral Argument from a Supreme Court Tribal Immunity Case

November 6th, 2017

Sovereign immunity for Indian nations is a hot topic these days, at least with respect to patent law.  I posted about tribal immunity back in 2011.  The post was focused on tribal immunity from patent infringement, rather than immunity from USPTO actions.  You can view the post here: [Sovereign Immunity from Patent Infringement for Indian Tribes].

Looking back at that post, I thought people might be interested in listening to the oral argument from the Supreme Court case Kiowa Tribe of Okla. v. Manufacturing Tech., Inc., 523 U.S. 751, 754 (1998). You can listen to that oral argument here: [Listen][Read].

CourtListener’s mapping feature

November 1st, 2017

The CourtListener site has an interesting mapping feature that I stumbled upon today.  I’m not entirely certain what it is showing me; but, some of you might enjoy experimenting with it.  I mapped the line of cases from Aro I — in which the Supreme Court said there was not “gist” or “heart” of an invention — to Alice.  This is the result I got:



Electronic filing at the Supreme Court

October 27th, 2017

If you are filing the reply brief in Oil States or currently appealing a 101 decision to the Federal Circuit, you might want to take note that the Supreme Court will be requiring electronic filing after November 13th.  The Federal Circuit has posted this notice to its website:

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].