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Today’s Federal Circuit opinion in H-W Technology, L.C. v. Overstock.com, Inc., ___ F. 3d ___ (Fed. Cir. 2014) is of interest for at least two reasons.   For one, the case adds to the court’s growing body of case law that holds a claim invalid when the claim includes both method and apparatus claim elements.  In today’s opinion, Chief Judge Prost notes:

As noted by the district court, this case is very similar to two cases, IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430
F.3d 1377, 1384 (Fed. Cir. 2005), and In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318 (Fed. Cir. 2011). In each of those cases this court held claims indefinite for combining two classes of invention.

The claim at issue in IPXL is reproduced below:

The system of claim 2 [including an input means]
wherein the predicted transaction information
comprises both a transaction type and transaction
parameters associated with that transaction type,
and the user uses the input means to either change
the predicted transaction information or accept
the displayed transaction type and transaction
parameters.

IPXL, 430 F.3d at 1384 (citation omitted).

The IPXL court reasoned as follows:

[I]t is unclear whether infringement of [the claim]
occurs when one creates a system that allows the
user to change the predicted transaction information
or accept the displayed transaction, or
whether infringement occurs when the user actually
uses the input means to change transaction
information or uses the input means to accept a
displayed transaction. Because [the claim] recites
both a system and the method for using that system,
it does not apprise a person of ordinary skill
in the art of its scope, and it is invalid under section
112, paragraph 2.

Id.

Similarly, the court in In re Katz stated:

Like the language used in the claim at issue in
IPXL (”wherein . . . the user uses”), the language
used in Katz’s claims (”wherein . . . callers digitally
enter data” and “wherein . . . callers provide . . .
data”) is directed to user actions, not system capabilities.

In re Katz, 639 F.3d at 1318.

The present case falls squarely within the IPXL and
In re Katz holdings. Here, the disputed language (”wherein
said user completes . . .” and “wherein said user selects
. . .”) is nearly identical to the disputed language in
those cases. And, as in those cases, it is unclear here
when infringement would occur. Claim 17 is thus indefinite.

H-W Technology, slip opinion at pp. 12-13.

Also of note is the attention paid by the court to the use of optional language in the patent specification.  Judge Prost wrote for the court:

Regardless of whether this excerpt clearly contains the missing limitation, “no-contact transactions” appear to be optional premium listing services. See id. col. 22 ll. 14–20 (“The services may be categorized according to baseline directory services 1901, premium listing services 1902, and advertising services 1903. A description of the services that can be offered under each category and how these are supported by converged communications content distribution platform owner 1204 (FIG. 12) are described below.” (emphasis added)). The optional nature of such services negates any argument that such a limitation in the claim is implied as necessary to the invention. See Phillips, 415 F.3d at 1323 (warning against “importing limitations from the specification into the claims”).

H-W Technology, slip opinion at pp. 7-8.

You can read the court’s opinion here: [link].

I stumbled across an article the other day that noted unusual collective nouns for animals.  For example, a group of crows is referred to as a “murder of crows.”   Some other examples are  a “coalition of cheetahs,” a “convocation of eagles, a “mob of kangaroos,”  an “unkindness of ravens,” a “drove of asses,” and an “embarrassment of pandas.”

In the patent community, we don’t really have any collective nouns for patent professionals.  So, I thought it might be good to get the ball rolling.  Here are some possibilities with some left blank for you to exercise your imagination.

A shrewdness of patent prosecutors.  (FYI, “shrewdness” is also used for a “shrewdness of apes.”)

An ambush of patent litigators.  (An “ambush of tigers” is already in use.)

A gauntlett of patent trolls.

A bellowing of patent bloggers.

A cacophony of patent blog commentators.

A wisdom of PTAB judges.  (”Wisdom” is currently used for a “wisdom of wombats.”)

A __________ of Federal Circuit judges.

A __________ of Supreme Court justices espousing on 35 U.S.C. §101.

A ___________of Federal Circuit clerks.

A ___________ of patent law professors.

The Supreme Court’s recent opinion in Alice v. CLS has been covered by other blogs; so, there is no need to summarize it here.  Some random thoughts did occur to me, however.

1)  Most humorous statement from the opinion:  ”In any event, we need not labor to delimit the precise contours of the ‘abstract ideas’ category in this case.” Alice v. CLS, __ U.S. ___ (2014)(slip opinion at page 10).

Of course not — articulating a test for an “abstract idea” might be too helpful to the judiciary, the patent bar, inventors, entrepreneurs, investors, and the economy.

2)  In the Court’s opinion, the Court indicated that method and apparatus claims can be equivalents for §101 purposes.  Yet, under §271, the Federal Circuit has noted that method and apparatus claims can convey different rights.  For example, in NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282 (Fed. Cir. 2005), the Federal Circuit noted that apparatus claims could be infringed with some claim elements located outside of the United States, while corresponding method claims must be performed entirely within the United States.  This is but one example of how method and apparatus claims protect different subject matter and are not simply one and the same.

3)  The determination of patent eligible subject matter has been termed a question of law determined by underlying questions of fact. See Arrhythmia Research Technology v. Corazonix Corp., 958 F.2d 1053 (Fed. Cir. 1992). Judge Lourie recently observed in the oral argument of HIMPP v. HEAR-WEAR TECHNOLOGIES, LLC, No. 2013-1549 (Fed. Cir. May 27, 2014) that the patent examination process is grounded in citation of references and that the role of the judiciary in taking judicial notice of facts is relatively limited.  For example, during the oral argument of HIMPP, Judge Lourie remarked:

We have an examination system based on citation of references.  I may have used the word ’slippery slope’ already.  But, I worry about that — where an examiner who is of some skill and training in a particular art could simply say ‘Aha, I think, I think, and it is my common knowledge . . . .’ And, they start rejecting claims based on what they ‘think.’  Isn’t that a serious departure from our system of citation of references to reject claims?  [Listen]

It doesn’t seem to me to be the function of the appellate court to take judicial notice of the ordinariness of certain decided claim limitations.  We can take judicial notice that ‘today is Wednesday’ and ‘we had snow earlier in the week’ — I’m glad you made it through the snow — but, we don’t make rejections based on judicial notice of . . . finding a claim limitation to be common sense. [Listen]

So, if the PTO takes Judge Lourie’s comments to heart, it seems the battle, during examination at least, will turn on to what extent a patent examiner can rally forth evidence that an abstract idea is shown by cited references.

4)  In the future, you might see certain industries pursuing bifurcated prosecution, e.g., filing applications with apparatus claims initially and then pursuing method claims via continuations — or an analogous prosecution strategy.

The Denver satellite office for the US Patent and Trademark Office will be opening next week.  My understanding is that the Denver office will be the first office outside of Alexandria to have a hearing room for PTAB proceedings.  The Denver office will be located on the fourteenth floor of the Federal Building in downtown Denver.

If your travels find you in Denver, you might be interested in some of the events in honor of the opening.  There is a gala on June 30th at Wings Over the Rockies where 700-800 people are expected to attend.  On July 1st, a CLE will take place that includes Hal Wegner addressing recent Supreme Court decisions, Steve Kunin discussing appeals and pre-appeal brief conferences, and Chief Judge James Smith, PTAB judge Dr. Patrick Boucher, and PTAB judge K Kalan discussing post-grant procedures of the PTAB.  The link for more program details is available here  [Link].

I noticed that the BNA published a copy of the May 23rd speech where Chief Judge Rader announced that he was stepping down as Chief Judge.  You can read his speech [here].

The Prost era at the Federal Circuit began today with Judge Dyk congratulating the new Chief Judge on behalf of the other members of the Federal Circuit: [Listen].

From the Federal Circuit Announcements page:

CIRCUIT JUDGE SHARON PROST ASSUMED THE POSITION OF CHIEF JUDGE OF THE FEDERAL CIRCUIT ON MAY 31, 2014

On Saturday, May 31, 2014, Circuit Judge Sharon Prost succeeded Chief Judge Randall R. Rader as the seventh Chief Judge of the Federal Circuit Court of Appeals. Chief Judge Prost was appointed to the Federal Circuit in 2001 by President George W. Bush.
Chief Judge Prost has 40 years of government service working in all three branches of the federal government. In the Executive Branch, she served as an attorney at the Federal Labor Relations Authority and the Internal Revenue Service, and as both Associate Solicitor and Acting Solicitor at the National Labor Relations Board.
In the Legislative Branch, Judge Prost was Chief Labor Counsel for the Minority of the Senate Committee on Labor and Human Relations, and Minority Chief Counsel, Deputy Chief Counsel and Chief Counsel of the Senate Judiciary Committee. Judge Prost received a B.S. from Cornell University in 1973, an M.B.A. from The George Washington University in 1975, a J.D. from the Washington College of Law, American University in 1979, and an LL.M. from The George Washington University School of Law in 1984.

With Chief Judge Rader stepping down as Chief Judge later this month, it would appear that the line of succession for Chief Judge will be 1) Judge Prost; 2) Judge Moore; and 3) Judge Chen.  This assumes that Judge Prost serves until her 70th birthday and that Judge Moore serves as Chief Judge for a full seven year term.  Incidentally, it appears from Judge Prost’s Wikipedia entry that she had a birthday this past Saturday.  So, she will turn 70 a week shy of a full seven year term.  Chief Judges may serve a seven year term or until they reach the age of 70.

The IPBiz.blogspot.com site noted that David Kappos has an article in today’s Detroit Free Press.  I thought Mr. Kappos’ article might interest readers; so, here is the link: [Link].

President Barack Obama points out several patent models while meeting with the 2013 American Nobel Laureates and their spouses in the Oval Office, Nov. 19, 2013.

Hard to believe that the Whitehouse.gov site celebrated this photo as the “Photo of the Day” back on November 19, 2013. That date was roughly a year after David Kappos announced he would be stepping down from being the Director of the USPTO and no nominee to replace him had been tendered by the Obama administration. Fast forward to today and still no nominee. Perhaps the USPTO should request that the Whitehouse return those patent models.