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The oral argument of the week is from VELOCITY PATENT LLC v. FCA US LLC, No. 2019-1114 (Fed. Cir. Nov. 13, 2019). This was a very well-argued case that addressed a lot of the court’s means plus function jurisprudence. I think you will enjoy it.

The court issued a Rule 36 Judgment. [Link].

I tuned-in to the LexisNexis-IPWatchdog-USPTO seminar last week about application routing and was interested to learn that in the future there is a presumption that all continuation applications will be routed to the examiner of the parent application.

It will be interesting to see if there will be a continuation bubble prior to the new routing rules going into effect, similar to what we saw with new applications prior to GATT and the AIA taking effect.

The oral argument of the month is from NEVRO CORP. v. BOSTON SCIENTIFIC CORPORATION, No. 2018-2220 (Fed. Cir. Apr. 9, 2020). I liked this oral argument because the judges on the panel took a keen interest in how the language “configured to” should be construed for the patent at issue.

Another interesting issue was how the term “parasthesia-free” should be construed. I particularly found it interesting when there was a discussion of whether “parasthesia-free” should be treated the same as one of the boldest terms in patent law — “synergistically effective amount” — from the case Geneva Pharmaceuticals v. GlaxoSmithKline, 349 F.3d 1373 (Fed. Cir. 2003). In Geneva, the Federal Circuit stated:

By its terms, a “synergistically effective amount” is a functional limitation. As explained in In re Swinehart, 58 C.C.P.A. 1027, 439 F.2d 210, 213 (1971), a functional limitation covers all embodiments performing the recited function. Thus, this claim term should not be limited to the disclosed dosage range of 50 mg to 500 mg but instead should encompass any dosage amount that can achieve therapeutic synergy.

Geneva Pharmaceuticals v. GlaxoSmithKline, 349 F.3d 1373, 1384 (Fed. Cir. 2003)

The oral argument and the court’s opinion does not mention it; but, I was reminded of the Orthokinetics case as I listened to the oral argument. In Orthokinetics, the Federal Circuit stated:

The claims were intended to cover the use of the invention with various types of automobiles. That a particular chair on which the claims read may fit within some automobiles and not others is of no moment. The phrase “so dimensioned” is as accurate as the subject matter permits, automobiles being of various sizes. See Rosemont, Inc. v. Beckman Instruments, Inc., 727 F.2d 1540, 1547, 221 USPQ 1, 7 (Fed.Cir.1984). As long as those of ordinary skill in the art realized that the dimensions could be easily obtained, § 112, 2d ¶ requires nothing more. The patent law does not require that all possible lengths corresponding to the spaces in hundreds of different automobiles be listed in the patent, let alone that they be listed in the claims.

Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986).

With respect to “configured to,” the Appellant argued that “configured to” meant “designed to” and cited In re Gianelli, Aspex Eyewear, and the In re Man Machine Interface Technologies LLC cases. In the Man Machine Interface case, for example, the Federal Circuit stated:

We have noted that the phrase “adapted to” generally means “made to,” “designed to,” or “configured to,” though it can also be used more broadly to mean “capable of” or “suitable for.” In re Giannelli, 739 F.3d 1375, 1379 (Fed.Cir.2014) (quoting Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir.2012) (referencing dictionaries)). Here, “adapted to,” as used in the ‘614 claims and specification, has the narrower meaning, viz., that the claimed remote control device is made or designed to be held in the human hand and the thumb switch is made or designed for activation by a human thumb.

In re Man Machine Interface Technologies LLC, 822 F.3d 1282, 1286 (Fed. Cir. 2016).

Also during the oral argument, Judge Taranto asked about the Core Wireless case. There is no discussion of Core Wireless in the opinion; but, I thought it still might be of interest:

Apple’s argument that its accused devices are always configured to operate in a variety of modes and to receive more than one TAV per multi-frame structure misses the mark. “[I]nfringement is not avoided merely because a non-infringing mode of operation is possible.” z4 Techs., Inc. v. Microsoft Corp., 507 F.3d 1340, 1350 (Fed. Cir. 2007); see also VirnetX, Inc. v. Cisco Sys., Inc., 767 F.3d 1308, 1322 (Fed. Cir. 2014). To take a simple example, a patent that claims an automobile configured to operate in third gear would be infringed by an automobile that is configured to operate in first, second, and third gears. The automobile is at all times configured to operate in any one of its possible gears, including the infringing one, even if the automobile is never driven in the infringing gear. Similarly, claim 14 is satisfied as long as Apple’s devices are configured to operate in a mode that receives a TAV only once per multi-frame structure and uses it for all channels.

Core Wireless Licensing SARL v. Apple Inc., 899 F.3d 1356, 1363 (Fed. Cir. 2018).

At the end of the day, the Nevro panel decided that for the patent at issue, “configured to” meant “programmed to” rather than “designed to.”

There was at least one other claim limitation in the opinion. It was analyzed as a means plus function limitation under 112, ¶6 (2006).

You can listen to the entire oral argument here:

You can review the court’s opinion here: [Link].

(I’ll have to look and see if anyone has ever used “synergistically effective configuration.”)

You probably read the IN RE ANOVA HEARING LABS, INC., No. 2019-1507 (Fed. Cir. Apr. 7, 2020) opinion and saw reference to the appeal concerning a five-reference rejection:

 It is unclear why the Board found a skilled artisan would be motivated to combine the five separate references. It is also unclear precisely what the Board was using the different references for in this five-reference rejection.

IN RE ANOVA HEARING LABS, INC., No. 2019-1507 (Fed. Cir. Apr. 7, 2020)(slip opinion at page 6 ).

There is more to the story. During the oral argument, Judge Moore highlighted that the rejection was a five-reference rejection and the concern that raised about hindsight bias:

So, here’s my problem — I feel like the Board’s opinion, for me, is troubling because it’s five references with wildly differently designed hearing aids. And, I don’t even understand really what it’s picking from some of the references that it says are missing in the primary reference. I don’t understand why it’s motivated to go to some of those references. And, I feel like there is a lot of hand-waving.

And, what I’m worried about is a five-reference rejection is the hindsight bias concern of just picking and choosing elements from lots of different random prior art and saying they work together. But here it’s even worse than that because I’m not sure which elements are being chosen from some of these references. I’m not sure what some of these references even add to the primary reference. That hasn’t been made clear to me. So, I am a little bit veiled in my understanding of the Board’s analysis.

Oral Argument of IN RE ANOVA HEARING LABS, INC., No. 2019-1507, beginning at 24:28.

You can listen to the entire oral argument here:

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

(I have added this sound bite to my previous “Too Many References?” post.)

But the limits of the drafters’ imagination supply no reason to ignore the law’s demands. When the express terms of a statute give us one answer and extratextual considerations suggest another, it’s no contest. Only the written word is the law . . . .

Bostock v. Clayton County, Georgia, __ U.S. _ (2020)(slip opinion at page 2).

Instead, when Congress chooses not to include any exceptions to a broad rule, courts apply the broad rule.

Bostock v. Clayton County, Georgia, __ U.S. _ (2020)(slip opinion at page 19).

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

35 U.S.C. §101 (a.k.a., the broad rule)

It is always interesting to listen to the judges at the Federal Circuit express some reticence to taking judicial notice of something at the appellate level. In the oral argument of PEERLESS INDUSTRIES, INC. v. CRIMSON AV, LLC, No. 2018-2021 (Fed. Cir. June 2, 2020), Judge Moore was making a point to the parties about the court’s inability to entertain certain arguments when the topic of judicial notice with respect to Amazon.com being one of the largest retailers in the country came up:

In an oral argument from a few years ago in HIMPP v. HEAR-WEAR TECHNOLOGIES, LLC, No. 2013-1549 (Fed. Cir. May 27, 2014), Judge Lourie commented about judicial notice, as well:

Compare those comments to the court’s practice in performing a de novo review, under Alice Step 1, of whether a claim recites an abstract idea. You can decide for yourself whether you think the court is performing that pivotal Alice Step 1 analysis with the same safeguards it applies to taking judicial notice.

It would be helpful if the USPTO would publish guidance on how a §101 expert from the USPTO could be called in to assist an examiner during prosecution of a patent application. I was listening to the oral argument of BYTEMARK, INC. v. MASABI LTD., No. 2019-1628 (Fed. Cir. Feb. 10, 2020) yesterday and was interested to hear that the examiner had called in James Trammell as a section 101 expert during prosecution. The consultation between the examiner and Mr. Trammell resulted in allowance of the patent. It appears that the consultation with Mr. Trammell was initiated by the examiner and not the Applicant; but, one could easily imagine applicants requesting such conferences. It would certainly streamline prosecution in many instances.

In the Notice of Allowance, the Examiner noted the conference, stating:

You can read Bytemark’s brief discussing the conference here:

You can review the CAFC’s Rule 36 Judgment [here].

Back in 2011, I noted here that Judge Bryson argued many times at the Supreme Court, before he was appointed to the Federal Circuit. I believe that his first argument in front of the Supreme Court was PC Pfeiffer Co. v. Ford, 444 U.S. 69, 100 S. Ct. 328, 62 L. Ed. 2d 225 (1979). You can listen to his argument here:

One thing that I thought was interesting about the argument was the questioning by the Justices as to whether the “Director”* and the “Board”** were separate entities for appellate review. Here is part of the transcript relating to that exchange with then-attorney Bryson:

William H. Rehnquist:

Mr. Bryson, are those two separate entities or one entity for purposes of appellate review, the Director and the Board? 

William C. Bryson:

For the purpose — well, they are clearly two different entities. The Director is the delegee of the Secretary of Labor who is charged with administering the Act and appears as a party seeking to in this case support the Board’s order. 

Now, perhaps I didn’t understand your question– 

William H. Rehnquist:

Where is the Director authorized to be a party in these proceedings? As I read Section 921 (c), application can be had at the Court of Appeals to set aside an award of the Benefits Review Board and copies are to be served on the Board and other parties. I can certainly see why the Board would be a party. Why is the Director a party? 

William C. Bryson:

Well, the Director is designated to defend the Board’s orders and I do not know — 

William H. Rehnquist:

By whom? 

William C. Bryson:

I believe in the statute, there is a provision which provides — 

William H. Rehnquist:

In the statute? 

William C. Bryson:

In the statute there’s a provision which provides that the Secretary of Labor shall assign attorneys to administer the Act and to — I believe it says to defend the Board’s orders as well. 

Now the — 

William H. Rehnquist:

Why wouldn’t the Board nonetheless be the party, albeit defended by attorneys assigned by the — 

William C. Bryson:

Well, there have been some cases in which the Board has been named as a party.  Some of the cases — it’s come to be the fashion to characterize the Director as the party, but it could well be the Board as in the National Labor Relations Act cases. 

William H. Rehnquist:

And you feel that’s immaterial? 

William C. Bryson:

Here, because what happened here although there is some dispute as to whether the Board has the power — excuse me, the Director has the power — to seek review of a Board order which is contrary to the Director’s position — in this case, it was the Director’s position and the private party’s position that was sustained in the Court of Appeals and sustained in the Board, so that the Director’s standing is — 

William H. Rehnquist:

There was no internal inconsistency? 

William C. Bryson:

That’s right, no, not here. There have been cases in which there is internal inconsistency, but not here. In fact, the Board and the Director from the beginning have taken the same position with respect to the definition of the terms longshoring operation and maritime employment …. 

You can listen to that excerpt here:

*Director of the Office of Workers’ Compensation Programs of the United States Department of Labor (the Director)

**Benefits Review Board of the Department of Labor (the Board)

The recent opinion in Sandbox Logistics, LLC et al. v. Proppant Express Investments LLC et al., 2019-1684 (Fed. Cir. May 18, 2020) is a good reminder about acquiescence during prosecution. Here is a quote from that opinion:

Sandbox did not challenge the Examiner’s understanding; instead, in response, SandBox amended the claims of the ’518 patent to recite a “bottom[,]” J.A. 575, with SandBox explaining that although the claims “were rejected on the basis [that] they lack essential elements[,]” the claims were “being amended to include a bottom, and that the hatch is positioned closely adjacent to the bottom[,]” J.A. 580. The Examiner allowed the ’518 patent, based at least in part on his understanding that the claims of the ’518 patent were amended to include a “bottom wall on which the hatch is mounted.” J.A. 1007; see J.A. 1025 (Notice of Allowability) (the Examiner explaining that the prior art “fails to teach or suggest . . . a bottom[] and a hatch closely adjacent to the bottom”). SandBox’s failure to challenge the Examiner’s understanding amounts to a disclaimer. See Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 1096 (Fed. Cir. 2013) (“If an applicant chooses, she can challenge an examiner’s characterization in order to avoid any chance for disclaimer, but the applicants in this case did not directly challenge the examiner’s characterization.”); TorPharm, Inc. v. Ranbaxy Pharm., Inc., 336 F.3d 1322, 1330 (Fed. Cir. 2003) (“[I]n ascertaining the scope of an issued patent, the public is entitled to equate an inventor’s acquiescence to the examiner’s narrow view of patentable subject matter with abandonment of the rest. Such acquiescence may be found where the patentee narrows his or her claims by amendment[.]” (internal citation omitted)). Thus, the prosecution history confirms that “bottom” refers to a “bottom wall.”

Sandbox Logistics, LLC et al. v. Proppant Express Investments LLC et al., 2019-1684 (Fed. Cir. May 18, 2020)(slip opinion at 11-12).

I think one area where many in-house patent programs could be improved is at the payment of the issue fee phase. Namely, a paper can be submitted, in conjunction with each issue fee payment, that indicates non-acquiescence in (at least) the examiner’s reasons for allowance and instead cites the scope of the claims as a whole as the applicant’s view as to why the claims are allowable. The time/cost to do so is not that significant.

Before you read below the break, ask yourself this question: “How would I go about trapping a bed bug?”

Before listening to today’s oral argument of the day, I really had no clue. In hindsight after listening to the oral argument, it is quite obvious how to catch a bed bug. I suppose that is the problem with hindsight perspectives — as we all know.

I thought this was an interesting sound bite from Judge Moore during the oral argument of ARCTIC CAT INC. v. BOMBARDIER RECREATIONAL PRODUCTS INC., No. 2019-1080 (Fed. Cir. Feb. 19, 2020). During a discussion of statutory interpretation, she described herself as a textualist:

Do you think the Federal Circuit treats “speed” consistently for purposes of §103 and §101? In a §103 rejection, the Federal Circuit seems to discount an inventor’s accomplishment of greater speed via his/her invention. MPEP §2144 (II) relies on the CAFC’s Dystar opinion and states:

II.    THE EXPECTATION OF SOME ADVANTAGE IS THE STRONGEST RATIONALE FOR COMBINING REFERENCES
The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker,702 F.2d 989, 994-95, 217 USPQ 1, 5-6 (Fed. Cir. 1983). See also Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356, 1368, 80 USPQ2d 1641, 1651 (Fed. Cir. 2006) (“Indeed, we have repeatedly held that an implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the ‘improvement’ is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. Because the desire to enhance commercial opportunities by improving a product or process is universal—and even common-sensical—we have held that there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves.”).

In the §101 cases, however, an invention’s “speed” seems to carry more weight:

Two recent cases inform our evaluation of whether the claims are “directed to” an abstract idea. In Enfish, we held claims reciting a self-referential table for a computer database were patent-eligible under Alice step one because the claims were directed to an improvement in the computer’s functionality. Id. at 1336. We explained that “the plain focus of the claims is on an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity.” Id. The specification described the benefits of using a self-referential table — faster searching and more effective data storage — and highlighted the differences between the claimed self-referential table and a conventional database structure. Id. at 1333, 1337. Based on this, we rejected the district court’s characterization of the claims as being “directed to the abstract idea of `storing, organizing, and retrieving memory in a logical table.'” Id. at 1337. We emphasized that the key question is “whether the focus of the claims is on the specific asserted improvement in computer capabilities (i.e., the self-referential table for a computer database) or, instead, on a process that qualifies as an `abstract idea’ for which computers are invoked merely as a tool.” Id. at 1335-36. Moreover, it was appropriate to consider the technological improvement embodied in the claims at step one, we explained, because Alice does not “broadly hold that all improvements in computer-related technology are inherently abstract and, therefore, must be considered at step two.” Id. at 1335.

The complaint alleges that the claimed software uses less memory, results in faster processing speed, and reduces the risk of thrashing which makes the computer process forms more efficiently. J.A. 429 ¶ 39. These allegations suggest that the claimed invention is directed to an improvement in the computer technology itself and not directed to generic components performing conventional activities. We have repeatedly held that inventions which are directed to improvements in the functioning and operation of the computer are patent eligible. See, e.g., Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1258-59 (Fed. Cir. 2017); Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300-02 (Fed. Cir. 2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016); see also DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014). Viewed in favor of Aatrix, as the district court must at the Rule 12(b)(6) stage, the complaint alleges that the claimed combination improves the functioning and operation of the 1128*1128 computer itself. These allegations, if accepted as true, contradict the district court’s conclusion that the claimed combination was conventional or routine. J.A. 26. Therefore, it was an abuse of discretion for the district court to deny leave to amend.

Aatrix Software v. Green Shades Software, 882 F.3d 1121, 1127-28 (Fed. Cir. 2018)(emphasis added).

Declaring that software implemented on a generic computer falls outside of section 101 would provide much-needed clarity and consistency in our approach to patent eligibility. It would end the semantic gymnastics of trying to bootstrap software into the patent system by alleging it offers a “specific method of filtering Internet content,” see BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016), makes the computer faster, see Enfish, LLC v. 1329*1329Microsoft Corp., 822 F.3d 1327, 1337-39 (Fed. Cir. 2016), or the Internet better,see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014),just to snuggle up to a casual bit of dictum in Alice, 134 S.Ct. at 2359. 

Intellectual Ventures I LLc v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016)(Mayer, J., concurring)(emphasis added).

The method claims do not, for example, purport to improve the functioning of the computer itself. See ibid. (“There is no specific or limiting recitation of … improved computer technology …”); Brief for United States as Amicus Curiae 28-30. Nor do they effect an improvement in any other technology or technical field. See, e.g., 2360*2360 Diehr, 450 U.S., at 177-178, 101 S.Ct. 1048. 

Alice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S. Ct. 2347, 2359 (2014).

This post is more of a musing than a completed thought. However, perhaps someone will take the idea and write further about it.

Want extra time to argue your case in front of the PTAB? Maybe try out the USPTO’s new LEAP program: [Link].

Back in December, Chief Judge Prost recognized one of the long-time employees of the Federal Circuit, Mr. Reggie Walker. I’m not sure of his exact title; but, I believe he served as a courtroom officer. He apparently retired from service with the Federal Circuit at the end of last year. You can hear Chief Judge Prost’s comments along with those of Judges Dyk and Moore here:

When Chief Judge Rader (ret’d.) brought the Federal Circuit to sit in Denver a few years ago, I happened to be seated next to Mr. Walker at a dinner reception. I remember enjoying talking to him and how either he or one of the others from the court mentioned that Mr. Walker’s son has won two Emmy’s for producing shows on ESPN.

I was poking around the case law after reading the Galderma v. Amneal decision and was reminded of the Verizon v. Vonage case from 2007. That is today’s oral argument of the day.

What is particularly fun about the oral argument of Verizon v. Vonage is that then-attorney Taranto — now-Judge Taranto — argued the case in front of Chief Judge Michel and Judges Dyk and Gajarsa.

Here is one sound bite of Judge Dyk pressing then-attorney Taranto about a “present invention” statement in his client’s patent:

You can listen to the oral argument here:

You can read the Verizon v. Vonage opinion [here].