Federal Circuit Conflicted over Whether Alice Changed the Law

April 21st, 2018

The Federal Circuit’s decision in Voter Verified, Inc. v. Election Systems Software, LLC __ F.3d __ (Fed.Cir. 2018) seems to be in conflict with the Federal Circuit’s earlier decision in INVENTOR HOLDINGS, LLC v. BED BATH & BEYOND, INC., __ F.3d __ (Fed. Cir. 2017).  In Voter Verified, Inc., the court proposes that Alice “did not alter the governing law under §101.”  In contrast, in Inventor Holdings, LLC, the court states that Alice created a “significant change in the law.”  Moreover, the Voter Verified, Inc. decision fails to even mention the court’s earlier decision in Inventor Holdings, LLC.

Reproduced below are portions of the two opinions:

Second, we find that Alice was a significant change in the law as applied to the facts of this particular case. Prior to Alice, the state of the law for computerimplemented business transaction inventions was less than clear, given this court’s divided en banc opinion in CLS Bank International v. Alice Corp., 717 F.3d 1269, 1273 (Fed. Cir. 2013). As we later explained, post-Alice, in Mortgage Grader, Inc. v. First Choice Loan Services Inc., “a § 101 defense previously lacking in merit may be meritorious after Alice. This scenario is most likely to occur with respect to patent claims that involve implementations of economic arrangements using generic computer technology, as the claims do here.” 811 F.3d 1314, 1322 (Fed. Cir. 2016). Like the claims at issue in Mortgage Grader, the ‘582 patent’s claims are directed to an “economic arrangement” implemented using “generic computer technology.” These issues were significant, if not determinative, of the Court’s holding in Alice.

INVENTOR HOLDINGS, LLC v. BED BATH & BEYOND, INC., __ F.3d __ (Fed. Cir. 2017)(slip op. at page 12)(Judges Wallach, Chen (Author), Stoll).

Turning to the first condition, we conclude that Alice, which was decided after the first litigation ended, did not alter the governing law of § 101. In Alice, the Court applied the same two-step framework it created in Mayo in its § 101 analysis. Alice, 134 S. Ct. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 77–79 (2012)). The Court stated, “[f]irst, we determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. (citing Mayo, 566 U.S. at 77–78). If so, it stated, one must then determine “what else is there in the claims before us?” Id. (quoting Mayo, 566 U.S. at 78). Just as it did in Mayo, the Court characterized the second inquiry “as a search for an inventive concept,” id. at 2355 (internal quotation marks and citation omitted), that is “sufficient to transform the claimed abstract idea into a patent-eligible application,” id. at 2357 (internal quotation marks and citation omit- ted). It is thus evident from the Court’s reliance on Mayo that it was merely applying the same test as it set out in Mayo, and did not materially change it. See id. at 2355, 2357 (citing Mayo for the rule of law). We therefore hold that Alice did not alter the governing law under § 101.

Voter Verified, Inc. v. Election Systems Software, LLC __ F.3d __ (Fed.Cir. 2018)(slip op. at page 7)(Judges Newman, Lourie (Author), Reyna).


Berkheimer Memo

April 19th, 2018

Earlier today, the USPTO issued guidance to examiners with respect to Berkheimer v. HP.  You can see the memo [here].


Update 4/20/18:

The USPTO has requested comments on the Berkheimer Memo via a Federal Register notice that is available here:  [Federal Register : Request for Comments on Determining Whether a Claim Element Is Well-Understood,].

WesternGeco, LLC v. Ion Geophysical Corporation

April 16th, 2018

The Supreme Court heard oral argument today in WesternGeco v. Geophysical.  The transcript of the oral argument is available [here].

The audio of the oral argument is available here:


Oral Argument of the Day: Mobile Telecommunications v. United Parcel Service, Inc.

April 12th, 2018

The oral argument of the day is from Mobile Telecommunications v. United Parcel Service, Inc. 

The oral argument recording is available here:

The CAFC’s Rule 36 Judgment is available [here].

Brenner v. Manson — footnote 6.

April 7th, 2018

In the Supreme Court’s opinion in Brenner v. Manson, there is an interesting footnote, footnote 6, that makes a comment about whether the then-Commissioner of the USPTO was bound by determinations of the Board of Patent Appeals and Interferences.  The footnote reads:

[6] We find no warrant for this curious limitation either in the statutory language or in the legislative history of § 1256. Nor do we find persuasive the circumstance that the Commissioner may not appeal adverse decisions of the Board of Appeals. 35 U. S. C. §§ 141, 142, and 145 (1964 ed.). As a member of the Board and the official responsible for selecting the membership of its panels, 35 U. S. C. § 7 (1964 ed.), the Commissioner may be appropriately considered as bound by Board determinations. No such consideration operates to prevent his seeking review of adverse decisions rendered by the CCPA.

That remark is informed by the oral argument from Brenner v. Manson.  First, Justice Byron White had this exchange with Paul Bender, arguing on behalf of the USPTO:

Byron R. White:  Mr. Bender, is the Board of Appeals in the Patent Office, under the control of the Commissioner or not?

Paul Bender:  I don’t know what control means —

Byron R. White:  Well I mean that —

Paul Bender:  — the statute says the Commissioner is in charge of the whole Patent Office.

Byron R. White:  Yes.

Paul Bender:  The Board of Appeals is part of the Patent Office.

Byron R. White:  He can’t go up from there, can he?

Paul Bender:  No, he is part of the Board of Appeals.

Byron R. White:  Yes.

Paul Bender:  It would be wholly anomalous after they —

Byron R. White:  That’s what I wanted to know.

Paul Bender:  Yes, there’s no question that he cannot go.

The statute provides —

Byron R. White:  But he’s part of the Board.

Paul Bender:  Yes, he’s a member of the Board.

And I take it the reason is that he’s not only a member of the Board but the Board is under his jurisdiction, he is the head of the Patent Office, it wouldn’t make any sense.

The only reason to which they give is indeed what Mr. Justice White just mentioned.

Namely, that the Commissioner is the — cannot go to the Court of Customs and Patent Appeals, and so they say therefore the Commissioner shouldn’t be able to go to the Supreme Court.

Well, the reason the Commissioner can’t go to the Court of Customs and Patent Appeals is what we’ve just said.

It’s his own decision.

He couldn’t challenge the decision he had just rendered, but the Court of Customs and Patent Appeals can as it has here decide against him.

And in view of that, I see no reason why he shouldn’t then be able to invoke the jurisdiction of this Court.

Later in the oral argument, Dean Laurence, arguing on behalf of the patent applicant, responded with these remarks:

Dean Laurence:  A primary examiner.

And at this point, let me very quickly describe, because I think Mr. Justice White asked a question whether the Board of Appeals was under control of the Commissioner.

Let’s look at the Patent Office for a moment.

We have — when an application is filed, a group of people called examiners and there is of course in the hierarchy a primary examiner.

Now, the primary examiner and all of his helpers are arms of the Commissioner.

The Commissioner is charged with examining the patent.

So as far as we are concerned here, a primary examiner is the Commissioner.

Now, if the examiner by the Commissioner says, “I won’t allow that patent for any reason at all because it’s not in compliance with the Section 112 which says you must fully describe how to make and how to use the claimed invention.”

Or any other reason, then the applicant has recourse to a Board of Appeals.

Now the Board of Appeals is not under the control of the Commissioner.

The Board of Appeals is a separate body.

The members of the board are nominated by the President, confirmed with the advice and consent of the Senate, and they sit as a board.

The Commissioner of Patents is a member of the Board of Appeals but he does not control the Board of Appeals and cannot reverse a decision of the Board of Appeals.

Insofar as I’m aware, it’s never been done.

I do not believe it can be done.


Berkheimer’s brief in response to petition for en banc review

April 3rd, 2018

If you were looking for a copy of Berkheimer’s brief in response to HP’s petition for en banc review in the case of Berkheimer v. HP, the brief is available here: [Berkheimerbrief].

Oil States oral argument

April 3rd, 2018

It looks like it will be a little less than two weeks before the Supreme Court issues any new opinions.  So, with Oil States on the verge of being decided, I thought it might be of interest to re-post the Oil States oral argument.  It is available below:


The transcript is available here: [TRANSCRIPT].

Oral Argument of the day: In re Burgos

March 30th, 2018

The oral argument of the day is from In re Burgos.  This oral argument was particularly interesting for its discussion of the Supreme Court’s Funk Bros. decision.  Also, there was some discussion of the USPTO’s subject matter eligibility examples.  This is a good oral argument to listen to closely.  See if you think the argument presented by the Office is based entirely on the findings and reasoning of the PTAB — or are views of the “Office” or “Solicitor’s Office” interjected to supplement the argument.  Shouldn’t the CAFC be basing its review only on the reasoning and facts relied upon by the PTAB.

You can listen to the oral argument here:


You can review the Rule 36 Judgment [here].

The invention sounds interesting.  I downloaded the original application from Public Pair.  It is available [here].

Update March 31, 2018

I am having a bit of “poster’s remorse” after publishing the above post and listening to the oral argument again.  I think the Associate Solicitor actually did a nice job of repeatedly trying to bring the panel back to the reasoning and factual findings of the PTAB.  The Federal Circuit panel on the other hand framed a lot of their questions in terms of “What is the Office’s position . . .” with respect to hypotheticals and the Office’s subject matter eligibility examples.  That’s all well and good; but, at the end of the day review of agency determinations are supposed to be based on the reasoning and factual findings of the agency tribunal, namely the PTAB.



Ora(c)l(e) Argument of Oracle v. Google (Copyright Fair Use)

March 27th, 2018

If you are interested in today’s Federal Circuit decision on copyright fair use in Oracle v. Google, the oral argument is available here:

The Federal Circuit decision is available [here].




March 26th, 2018

Director Andrei Iancu has posted his greetings to the IP world on the USPTO Director’s Blog.  You can see his message [here]. He says in part:

We will continue working with inventors, innovators, and entrepreneurs to ensure that when they disclose their inventions, we properly scope and protect their best ideas by granting strong and predictable IP rights. We will also cement our IP system as balanced, efficient, and industry neutral. Whether we’re working with a small inventor with a big idea, or a big company with a small improvement, or everyone else who comes before us, each customer who comes through our doors can be assured that they will receive the highest quality service.